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 .
This Office Action is responsive to communication filed on 03/26/2025.
Claims 1 – 20 are currently pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/23/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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- 20 of U.S. Patent No. 12,277,178 B2, unpatentable over claims 1- 24 of U.S. Patent No.11,698,932 B2, unpatentable over claims 1- 16 of U.S. Patent No. 11,086,936 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because subject matters claimed in instant application can also found in patent ‘178, ‘932, ‘936.
In claim 1 of instant application, Applicant claims a “method comprising: tracking how many times media content items having one or more particular attributes have been recommended for playlist inclusion and have not been selected for playlist inclusion; based on the tracking, establishing a score for the one or more particular attributes; and using the established score as a basis to control what media content items to present as a set of recommended media content items”.
Similar limitations also found in claim 1 of ‘178. Certain limitations found in claim 1 of ‘178 but not in claim 1 of instant application such as “generating a user interface on a computing device, the user interface including a playlist section that presents a playlist”.
The concept in Claims 1 of patent '936 and '932 are also similar to instant application (update/modify the playlist based on comparison frequency/infrequency of attributes in playlist). Certain limitations found in claim 1 of '936 and '932 but not in claim 1 of ‘178 and instant application such as "identifying preliminary candidate playlist title of the playlist, comparing tile calculate similarity score, select candidate based on similarity score determining frequency”.
It would have been obvious to one with ordinary skill in the art before the effective filling date of the claim invention to broaden the claims at no additional cost in development.
The following is the table comparison between instant application and ‘178.
Claim 1 of instant application 19/090,827 Claim 1 of ‘178
A method comprising:
A method comprising:
generating a user interface on a computing device, the user interface including a playlist
section that presents a playlist;
tracking how many times media content items having one or more particular attributes have been recommended for playlist inclusion and have not been selected for playlist inclusion;
tracking how many times media content items having one or more particular attributes have
been recommended to a user for playlist inclusion and, responsive to being recommended to the user for playlist inclusion, have not been selected by the user for playlist inclusion;
based on the tracking, establishing a score for the one or more particular attributes; and
based on the tracking, establishing a score for the one or more particular attributes; and
using the established score as a basis to control what media content items to
present as a set of recommended media content items.
using the established score as a basis to control what media content items to present in the user interface as a set of recommended media content items for addition to the playlist.
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.
Step 1:
Claims 1 - 20 are directed to “a method, a system, non-transitory computer readable storage media”, and therefore, directed to a statutory category.
Step 2A, Prong One:
The independent claims 1, 9, 17 include the following limitations that directed to an abstract
idea:
“tracking how many times media content items having one or more particular
attributes have been recommended for playlist inclusion and have not been selected for playlist inclusion”, as drafted, recites a mentally process as an evaluation or judgement. Nothing in the claim element precludes the step from practically being performed in the mind. This is also consistent as in Para. 0161 of the Disclosure, where one can mentally perform tracking/monitoring how many media content items of a particular artist have been presented to the user in different lists of recommended media content items and how many times the user has ignored such media content items of the particular artist.
“using the established score as a basis to control what media content items to
present as a set of recommended media content items” as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally evaluate or judge that media content items should (or not) be recommended if the user repeatedly ignored and the total times is more/less than a certain threshold (score). This is also consistent with the specification paragraph 0161 where the user repeatedly ignores media content items of a particular artist, and it reduces the likelihood that media content items of the artist are included in the lists or batches of recommended media content items.
Step 2A, Prong Two:
The claim recites the following additional elements:
“based on the tracking, establishing a score for the one or more particular attributes” which are insignificant extra solution activities as retrieval/receiving of data (i.e. mere data gathering) such as, using a computer component (a processor, memory), to generate a score using the obtained data (number of times). The establishing step is recited at a high level of generality (i.e., as a general means of gathering data and generate a score for use in the control step), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. Each of the additional limitations is no more than mere instructions to apply the exception using a generic computer component. This does not provide integration into a practical application.
The system includes a storage device, processors, instruction to perform the method, and a non-transitory computer readable storage media, which is a high-level recitation of a
generic computer components and represents mere instructions to apply on a computer as
in MPEP 2106.05(f), which does not provide integration into a practical application.
The additional limitations, individually or in combination, do not integrated the abstract idea into a practical application, even viewing the claims as a whole, because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
In this case, the “establishing a score for the one or more particular attributes” is identified as insignificant extra-solution activity above when re-evaluated these elements are well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II), "i. 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); "computer-implemented" and performed by "one or more processors", a system includes memory storing instruction coupled to a processor, a "non-transitory computer readable medium processors are considered insignificant extra- solution activity, and do not take the claim limitations out of the mental processes grouping. See MPEP - 2106.05(g) ("whether the limitation is significant").
Accordingly, the additional limitations are not providing significantly more than the
judicial exception. Looking at the claim as a whole does not change this conclusion and
therefore, the claim is ineligible.
Claims 9 - 20, Applicant claims the abstract idea on a non-transitory computer
readable medium with instructions and processor to carry-out the method as in claim 1,
without adding further limitations that amount to more than generally linking the use of
the exception to a particular technological environment. Generic computer components
recited as performing generic computer functions that are well-understood, routine and
conventional activities amount to no more than implementing the abstract idea with a
computerized system. The use of generic computer components to "establishing a score for the one or more particular attributes" do not impose any meaningful limit on the computer implementation of the abstract idea.
Thus, taken alone, the additional elements do not amount to significantly more than the
above-identified judicial exception (the abstract idea).
The dependent claim 2, 10 include “tracking how many times media content items having the one or more particular attributes have been presented in different lists of recommended media content and have not been selected for playlist inclusion”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally tracking/monitoring how many media content items of a particular artist have been presented to the user in different lists of recommended media content items and how many times the user has ignored such media content items of the particular artist. Under its broadest reasonable interpretation when read in light of the specification, this limitation is recited at a high level of generality, can be performed by human mind, which is a form of metal activity. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 3 – 4, 11 - 12 include “wherein the one or more particular attributes includes an artist attribute”, “wherein the artist attribute is obtained from an artist name associated with an artist”, are identified as insignificant extra-solution activity above when re-evaluated these elements are well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II).
The dependent claims 5, 13 include “using the established score as a basis to adjust a likelihood of including, in the set of recommended media content items, media content items that have the one or more particular attributes”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally evaluate the ignore score or frequently access score for a particular attribute and adjust the recommendation for that attribute accordingly. Under its broadest reasonable interpretation when read in light of the specification, this limitation is recited at a high level of generality, can be performed by human mind, which is a form of metal activity. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 6, 14, include “enabling user preview of the set of recommended media content items” as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally preview the set of recommendation media content item, which is a form of metal activity. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 7, 15, include “receiving input via a control element to play back or preview media content not selected for playlist inclusion”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally preview the set of recommendation media content item, which is a form of metal activity. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 8, 16 include “automatically updating the set of recommended media content items to include media content items having one or more given attributes when a playback frequency associated with the one or more given attributes is above a threshold value” as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally update the set of recommendation media content item, which is a form of metal activity. See MPEP 2106.04(a)(2), subsection III.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 - 20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hijikata et al (U.S. 2015/0143394 A1).
♦As per claims 1, 9, 17,
Hijikata discloses a method, system (processor, storage: Para. 0182, 0185, claim 16) comprising:
“tracking how many times media content items having one or more particular attributes have been recommended for playlist inclusion and have not been selected for playlist inclusion” See Para. 0044, 0153 of Hijikata wherein the system counting the number of times the selected content has been included in the playlist and has not been viewed by the user, (“the playlist generating step may include a step of counting the number of times the selected content has been included in the playlist and has not been viewed by the user”).
“based on the tracking, establishing a score for the one or more particular attributes” See Para. 0044, 0141,0153 of Hijikata wherein the counted number of times reaches a “predetermined number of times” or a “threshold value”, (“the playlist generating section 207 may count the number of times the recommendation of a content is ignored so as to register the content on the stop video list when the number of times the recommendation is ignored reaches a predetermined number of times”).
“using the established score as a basis to control what media content items to present as a set of recommended media content items” See Para. 0044, 0153 of Hijikata wherein the system will not include the content on the playlist using the counted number, (“the playlist generating section 207 does not list the content on the playlist if the content is registered on the stop video list”).
♦As per claims 2, 10, 18,
“tracking how many times media content items having the one or more particular attributes have been presented in different lists of recommended media content and have
not been selected for playlist inclusion” See Para. 0044, 0153 of Hijikata wherein the system counting the number of times the selected content has been included in the playlist and has not been viewed by the user, (“the playlist generating step may include a step of counting the number of times the selected content has been included in the playlist and has not been viewed by the user”).
♦As per claims 3- 4, 11 – 12, 19,
“wherein the one or more particular attributes includes an artist attribute”, “wherein the artist attribute is obtained from an artist name associated with an artist” See Para. 0089 of Hijikata, (includes many proper nouns, such as names of actors to appear, place names of destinations for travel programs, and song names for music programs).
♦As per claims 5, 13, 20,
“using the established score as a basis to adjust a likelihood of including, in the set of recommended media content items, media content items that have the one or more particular attributes” See Para. 0044, 0089, 0153 of Hijikata wherein the system will not include the content on the playlist using the counted number, (“the playlist generating section 207 does not list the content on the playlist if the content is registered on the stop video list”).
♦As per claims 6, 14,
“enabling user preview of the set of recommended media content items” See Para. 0121 of Hijikata wherein contents are displayed to the user for viewing, (“…all contents that have been displayed on the output section 208 and viewed by the user”).
♦As per claims 7, 15,
“receiving input via a control element to play back or preview media content not selected for playlist inclusion” See Para. 0044, 0153 of Hijikata wherein the system provide the user more than one time to review the content item and counting the items that has not been viewed by the user, (“the playlist generating step may include a step of counting the number of times the selected content has been included in the playlist and has not been viewed by the user”).
♦As per claims 8, 16,
“automatically updating the set of recommended media content items to include media content items having one or more given attributes when a playback frequency associated with the one or more given attributes is above a threshold value” See Para. 0044, 0089, 0141,0153 of Hijikata wherein the counted number of times reaches a “predetermined number of times” or a “threshold value”, the system will not include the content on the playlist using the counted number that satisfy a “predetermined value”, (“the playlist generating section 207 may count the number of times the recommendation of a content is ignored so as to register the content on the stop video list when the number”, “the playlist generating section 207 does not list the content on the playlist if the content is registered on the stop video list”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAM LINH T NGUYEN whose telephone number is (571)272-4024. The examiner can normally be reached M-F: 7:00 - 3:00 pm.
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/CAM LINH T NGUYEN/Primary Examiner, Art Unit 2161
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