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 .
Remarks
Claims 26-45 are pending.
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.
Claim 44 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because the claims lack the necessary physical articles or objects to constitute a machine or a manufacture within the meaning of 35 USC 101. They are clearly not a series of steps or acts to be a process nor are they a combination of chemical compounds to be a composition of matter. As such, they fail to fall within a statutory category. They are, at best, functional descriptive material per se.
Descriptive material can be characterized as either “functional descriptive material” or “nonfunctional descriptive material.” Both types of “descriptive material” are nonstatutory when claimed as descriptive material per se, 33 F.3d at 1360, 31 USPQ2d at 1759. When functional descriptive material is recorded on some computer-readable medium, it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized. Compare In re Lawry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994).
Merely claiming nonfunctional descriptive material, i.e., abstract ideas, stored on a computer-readable medium, in a computer, or on an electromagnetic carrier signal, does not make is statutory. See Diehr, 450 U.S. at 185-186, 209 USPQ at 8 (noting that the claims for an algorithm in Benson were unpatentable as abstract ideas because “[t]he sole practical application of the algorithm was in connection with the programming of a general purpose computer.”).
Allowable Subject Matter
Claims 26-43 and 45 are allowed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The closest prior art of record Shoup et al. (‘Shoup’ hereinafter) (Publication Number 20160063110), teaches:
[0041] In some embodiments, the user interface module 202 may populate the list 301 with recommended or suggested search query terms for the user building the query. For example, before the user has selected any search query term icons from the list 301, the user interface module 202 may populate the list 301 with a set of search query term icons (e.g., the most frequently used search query term icons, as described above). Once the user has selected a search query term icon from the list 301, the user interface module 202 may identify frequently paired or frequently co-occurring terms with respect to the user selected term. For example, if the user selects term icon A (e.g., “MIT” or “School=‘MIT’”), the user interface module 202 may access historical log data of previous search queries in order to determine that user-selection of term icon A is usually followed by user-selection of term icons B1, B2, or B3 (e.g., “JAVA” or “Skill=‘Java’”). In other words, term icon A and term icons B1, B2, or B3 are frequently paired or frequently co-occurring terms. Thus, the user interface module 202 may populate the list 301 with all frequently paired or frequently co-occurring term icons B1, B2, or B3 for the term icon A that was selected by the user. Similarly, after the user selects term icon B1, the user interface module 202 may access historical log data of previous search queries in order to determine that user-selection of term icon B1 (or alternatively user-selection of term icon A followed by user-selection of term icon B1), is usually followed by user-selection of terms C1, C2, and C3, and the user interface module 202 may populate the list 301 with all frequently paired or frequently co-occurring term icons C1, C2, and C3. Thus, the system 200 suggests icons for frequently paired or frequently co-occurring terms as the user is building a visual search query.
(see Shoup, paragraph [0041])
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY A MORRISON whose telephone number is (571)272-7112. The examiner can normally be reached on Monday - Friday, 8:00 am - 4:00 pm ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Trujillo K James, can be reached at telephone number (571)272-3677. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAY A MORRISON/Primary Examiner, Art Unit 2151
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