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 07/28/2026.
Claims 5, 13, 20 have been cancelled. Claims 21 – 23 are newly added. Claims 1 – 4, 6 – 12, 14 – 19, 21 – 23 are currently pending.
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.
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Claims 1 – 4, 6 – 12, 14 – 19, 21 – 23 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 by a computing system applying a scoring rule to generate an attribute score that decreases as a number of unselected media content items having the one or more particular attributes increases;
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 by adjusting a likelihood of including media content items having the one or more particular attributes in subsequent recommendations.
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 5: 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.
causing a computing device to present within a user interface a subset of the set of
recommended media content items, the user interface including a user-invocable control element for causing the device to present another subset of the set of recommended media content items.
Claim 6 – 7: enabling the user to preview
the set of recommended media content items;
receiving an input from the user via a control element to play back or preview media content not selected by the user for playlist
inclusion.
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 - 4, 6 – 12, 14 – 19, 21 – 23 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 – 4, 6 – 12, 14 – 19, 21 – 23 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.
“based on the tracking, establishing a score for the one or more particular attributes by a computing system applying a scoring rule to generate an attribute score that decreases as a number of unselected media content items having the one or more particular attributes increases”, as drafted, recites a mentally process as an evaluation or judgement. The acts of “applying a scoring rule to generate an attribute score that decreases as a number of unselected media content items” which are considered as mathematical manipulation of numbers such as, using a computer component (a processor, memory), to generate a score using the obtained data (number of times). The act of lowering (decreases) the value or relevance score of a category if a user repeatedly skips or ignores items within that category is a basic data-filtering and cognitive categorization concept. It represents data manipulation that a human could theoretically perform using a pen, paper, and basic arithmetic.
“using the established score as a basis to control what media content items to
present as a set of recommended media content items by adjusting a likelihood of including media content items having the one or more particular attributes in subsequent recommendations” 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). The core of the phrase is filtering or ranking data (media items) using a metric (the score) to alter a statistical outcome (the likelihood of inclusion), which is an abstract concept. 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. See court case Broadband iTV, Inc. v. Amazon.com, Inc., manipulating and organizing video content for delivery was treated as an unpatentable abstract concept.
Step 2A, Prong Two:
The claim recites the following additional elements:
“causing a computing device to present within a user interface a subset of the set of recommended media content items, the user interface including a user-invocable control element for causing the device to present another subset of the set of recommended media content items”, is insignificant extra-solution activity. Merely choosing a way to display data (a "subset of a set of items") on a generic screen is considered an abstract concept. The inclusion of a "user-invocable control element" (such as a generic "Next" button, a "More info" link, or a swipe gesture) to show "another subset" is an everyday concept.
The steps are performed by a generic "computing system" and "computing device" using standard capabilities (tracking, scoring, controlling presentation). Applying an abstract logic rule using basic computer functionality does not provide "significantly more".
The final step adds a user interface with a "user-invocable control element for causing the device to present another subset." The Acts of adding generic UI features (like buttons to refresh or view more content) to an abstract data-filtering method does not make the claim patent-eligible. It doesn't disclose a new type of interface; it uses an existing interface to show the results of the abstract calculation.
The claim describes what the system accomplishes (adjusting recommendations so unselected attributes appear less frequently) rather than an innovative how (such as a unique algorithm that specifically improves the underlying operating architecture of the device).
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 “causing a computing device to present within a user interface a subset of the set of recommended media content items, the user interface including a user-invocable control element for causing the device to present another subset of the set of recommended media content items” 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 – 12, 14- 19, 21 – 23, 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 6, 14, 21, 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, 22, 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, 23 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.
Response to Arguments
Applicant's arguments filed 07/28/2026 regarding 35 USC 101 have been fully considered but they are not persuasive.
Applicant argues “For instance, with the claimed invention, if a user has often declined to accept presented recommendations for adding to a playlist various media content items that have one or more particular attributes, a computing system carrying out the claimed method could detect that fact and could therefore avoid future user-interface presentation to the user of recommendation ns for adding content items that have the same particular attributes, even without the user having ever heard of those recommended content items in the first place - a technological process that would be nearly impossible or highly impractical to carry out in a human mind, especially given the nearly limitless access to media content. Given this technological advance in the realm of providing media recommendations faced with nearly limitless access to media content, Applicant respectfully submits that the claimed invention is patent eligible”. The Examiner respectfully disagrees.
Arguing a process is "nearly impossible or highly impractical to carry out in a human mind" due to scale or speed does not make an abstract idea patent-eligible. See Courts case (such as in SiRF Technology v. ITC or BanCorp Services) that simply automating a well-known concept at a scale or speed humans cannot match does not transform an abstract idea into a patent-eligible invention. The Act of “filtering recommendations based on past user behavior" is a process of data manipulation or method of organizing human activity, which is the abstract idea. The argument states that humans cannot efficiently track attributes of unselected/unplayed items. However, the core logic “If a user skips songs with Country attributes, stop recommending Country songs” is a mental process that a human could track with a pen and paper. Automating this on a generic computer does not make it patent-eligible.
Applicant argues “Applicant has now amended the claims as noted above to add a recitation of "causing a computing device to present within a user interface a subset of the set of recommended media content items, the user interface including a user-invocable control element for causing the device to present another subset of the set of recommended media content items." Applicant submits that this feature adds to the non-abstract, technical nature and practical application of the claimed invention. At a minimum, it would not be possible for a human mind to cause a computing device to present subsets of a set of recommended content items. The Examiner respectfully disagrees.
Presenting subsets of information (like a list of recommended media) and allowing a user to click a button to view more items falls under "methods of organizing human activity," data collection, or mental processes like browsing a physical catalog or looking at a curated list. Further automation of a manual process or performing an abstract concept on a generic computer does not make it eligible under §101. A user-invocable control element is treated as standard, generic computer hardware and software functionality. Without a claim reciting a specific, unconventional improvement to how the computer or user interface operates technically (such as solving a specific screen-rendering bottleneck or unique data-fetching architecture), it remains conventional.
Applicant argues “Specifically, the claims recite how the scoring and recommendation control are performed-namely, "by a computing system applying a scoring rule to generate an attribute score that decreases as a number of unselected media content items having the one or more particular attributes increases" and "by adjusting a likelihood of including media content items having the one or more particular attributes in subsequent recommendations". By defining exactly how the system updates its scores and filters future recommendations, the claims provide a concrete technological improvement, rather than covering a high-level abstract result”. The Examiner respectfully disagrees.
The “scoring rule” dictates what data to calculate (decreasing a score based on unselected items) to improve user recommendations. Courts (such as in Electric Power Group) classify content filtering, recommendation logic, and data scoring as abstract ideas centered on "collecting, analyzing, and displaying information."
In McRO, the specific rules allowed a computer to automatically generate 3D facial animations that previously required manual, subjective human artistry, thereby improving a specific technological process (digital animation). In this case, the computer is merely being used as a tool to execute a new mathematical formula or logic rule for media curation.
Providing a specific formula or a declining score based on unselected items makes the claim narrower, but case law (such as Electric Power Group v. Alstom) holds that collecting, analyzing, and displaying data according to a specific rule is still an abstract idea. Further, Applicant just applies a new algorithm on generic hardware is not "significantly more" than the abstract idea itself.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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