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 .
Response to Amendment
This communication is in response to the amendment filed on 20 May 2026.
Claims 1, 7, 11, 17, and 20 are amended.
Claims 1-20 have been examined.
Response to Arguments
In response to Applicant’s remarks filed on 20 May 2026:
a. Applicant's arguments with respect to the 35 U.S.C. 101 rejections of the pending claims have been fully considered but are not deemed persuasive.
On pages 11-12 of Applicant’s remarks, Applicant argues against the 35 U.S.C. 101 rejections of the pending claims. Applicant argues that the claims recite an improvement to a technical field, as follows “The claimed invention recites an improvement to the technical field of generative language model prompt generation and use by causing a computer system to generate the unstructured prompt context required by the generative language model from structured item taxonomy and interaction data” (remarks, page 12, first paragraph).
The Office respectfully disagrees with the above remarks. “It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements…In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception.” MPEP 2106.05(a), (emphasis added). Applicant asserts that the method for improving the technical field is generating “unstructured prompt context” from “structured item taxonomy and interaction data.” This method for improvement manifests in the “generating a plurality of tags” and “generating a prompt” limitations of claim 1. As detailed below in the claim rejections under 35 U.S.C. 101, when these limitations are interpreted under the broadest reasonable interpretation (BRI), they are mentally performable by a human with the aid of pencil and paper. With the aid of pencil and paper, a human can mentally judge/evaluate a couple of item sources and generate for each one a couple of tags, as claimed. Furthermore, with the aid of pencil and paper, a human can mentally generate a prompt in the manner claimed. Hence, these limitations are an abstract idea under the “Mental Processes” grouping. Also as detailed below, the remaining limitations of claim 1 amount to insignificant extra solution activity in the form of data gathering/outputting; well-understood, routine, and conventional subject matter; and/or generic computer implementation. Hence, these additional elements cannot be deemed a practical application nor an inventive concept. Looking at the additional elements as a whole adds nothing beyond the additional elements considered individually—they still represent insignificant extra-solution activity; well-understood, routine, and conventional subject matter; and/or generic computer implementation. Hence, the claim as a whole, looking at the additional elements individually and in combination, does not amount to a practical application nor significantly more than the abstract idea. These claims are not patent eligible.
Claims 11 and 20 recite limitations similar to those of claim 1 and are ineligible under 35 U.S.C. 101 for the same reasons that claim 1 is ineligible, as set forth above.
Claims 2-10 and 12-19 are ineligible under 35 U.S.C. 101 for the same reasons that claims 1 and 11 are ineligible, as set forth above, and for the additional reasons detailed below in the claim rejections under 35 U.S.C. 101.
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.
As to claims 1, 11, and 20, these claims recite a plurality of item sources. The claims do not specify nor place any limits upon the “plurality of item sources,” other than using the plural form of the word (i.e. “sources”). Under the broadest reasonable interpretation (BRI), this limitation encompasses a simple case of just two item sources. These claims recite “generating a plurality of tags for each of the plurality of item sources, wherein each tag comprises a text string describing a characteristic of a corresponding item source.” With the aid of pencil and paper, a human can mentally judge/evaluate a couple of item sources and generate for each one a couple of tags, as claimed. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind (and/or with a pencil and paper) but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas.
These claims also recite “accessing an item taxonomy for the item source, wherein the item taxonomy is a hierarchical data structure that describes categories of items at a plurality of levels of generality; selecting a set of categories representing the item source based on the item taxonomy and the interaction rate data; and generating the plurality of tags for the item source based on the selected set of categories.” Given that the BRI of the claims encompasses a simple case, as set forth above, a human could, with the aid of pencil and paper, mentally perform the claimed “accessing,” “selecting,” and “generating.” Hence, these limitations are also an abstract idea under the “Mental Processes” grouping.
These claims also recite “generating a prompt for a generative language model, wherein the prompt comprises: the plurality of tags for each item source of the plurality of item sources; the accessed user data; the accessed source data; instructions to identify a subset of item sources of the plurality of item sources to present to the user based on the user data, the source data, and the plurality of tags for each item source of the plurality of item sources; and instructions to generate a description of the subset of item sources based on the user data, the source data, and the plurality of tags for each item source of the plurality of item sources.” Read in light of Applicant’s disclosure, the claimed “prompt” is just text to be input to the “generative language model.” With the aid of pencil and paper, a human can mentally generate a text prompt in the manner claimed. Hence, these limitations are also an abstract idea under the “Mental Processes” grouping. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. Other than the abstract idea, the claims recite the following:
a) “accessing user data describing a user of an online system;”
b) “accessing source data for a plurality of item sources, wherein the source data
comprises interaction rate data describing interactions of users of the online
system with items associated with each of the plurality of item sources during
a time period;”
c) “transmitting the prompt to the generative language model, wherein transmitting the prompt to the generative language model causes the generative language model to apply at least one billion parameters to text data in the prompt model”;
d) “receiving a response from the generative language model, wherein the response comprises the subset of item sources and the description of the subset of item sources”;
e) “transmitting the subset of item sources and the description of the subset of item sources to a client device of the user for display;” and
f) a computer system comprising a processor and computer-readable medium.
Limitations (a), (b), and (d) amount to no more than mere data gathering, which has been deemed by the courts to be insignificant extra-solution activity. See MPEP 2106.05(g). Limitation (c) is recited at a high level of generality and amounts to mere instructions to apply the abstract on a computer, which cannot provide a practical application. See MPEP 2106.05(f). Limitation (e) amounts to no more than merely outputting a result, which has been deemed by the courts to be insignificant extra-solution activity. See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016). See MPEP 2106.05(g). Limitation (f) is recited at a high level of generality, i.e. as generic computer components performing generic computing functions. 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. Looking at the additional elements as a whole adds nothing beyond the additional elements considered individually—they still represent insignificant extra-solution activity and/or generic computer implementation. Hence, the claim as a whole, looking at the additional elements individually and in combination, does not integrate the abstract idea into a practical application. The claim is directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Limitations (a), (b), and (d) amount to no more than mere data gathering, which has been deemed by the courts to be insignificant extra-solution activity. See MPEP 2106.05(g). In addition, the courts have deemed receiving data to be well-understood, routine, and conventional activity, as in the following cases: Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); 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); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015) (storing and retrieving information in memory). See MPEP 2106.05(d)(II). Limitation (c) is recited at a high level of generality and amounts to mere instructions to apply the abstract on a computer, which cannot provide an inventive concept. See MPEP 2106.05(f). Limitation (e) amounts to no more than merely outputting a result, which has been deemed by the courts to be insignificant extra-solution activity. See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016). See MPEP 2106.05(g). Furthermore, Applicant’s specification provides few details about limitations (c) and (e) or their functions (see para. 0082-0083 of Applicant’s published specification). This indicates that these features are well known in the art. Cf Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (explaining that "a patent need not teach, and preferably omits, what is well known in the art"). As a result, the written description adequately supports that additional elements (c) and (e) are conventional and perform well-understood, routine, and conventional activities. See MPEP § 2106.07(a)(III)(A)1. As discussed above with respect to integration of the abstract idea into a practical application, additional element (f) amounts to no more than mere field of use limitations and instructions to apply the exception using generic computer components. Mere instructions to apply an exception using conventional computer components and functions cannot provide an inventive concept. Looking at the additional elements as a whole adds nothing beyond the additional elements considered individually—they still represent insignificant extra-solution activity; well-understood, routine, and conventional subject matter; and/or generic computer implementation. Hence, the claim as a whole, looking at the additional elements individually and in combination, does not amount to significantly more than the abstract idea. These claims are not patent eligible.
As to dependent claims 2-4 and 12-14, these claims features for selecting categories, ranking categories, and identifying categories with interaction rates exceeding a threshold. The claimed “selecting” and “identifying” in these amount to no more than mere judgements/evaluations. For the simple case encompassed by the BRI of the claims, a human could, with the aid of pencil and paper, mentally perform the judgements/evaluations necessary to achieve the claimed “selecting” and “identifying.” As to the claimed “ranking,” this is also mentally performable by a human with pencil and paper for the simple case encompassed by the BRI of the claims. Hence, these limitations are an abstract idea under the “Mental Processes” grouping.
As to dependent claims 5 and 15, these claims recite normalizing interaction rate data. For the simple case encompassed by the BRI of the claims, a human could, with the aid of pencil and paper, mentally perform the claimed normalization of interaction rate data. Hence, this limitation is an abstract idea under the “Mental Processes” grouping. Alternatively, this limitation may be deemed an abstract idea under the “Mathematical Concepts” grouping, since normalization is a known mathematical concept. One normalizes a series of data by multiplying by a factor (e.g. a weight) that makes the norm or some associated quantity such as an integral equal to a desired value. This mathematical definition of normalization is consistent with Applicant’s specification (see, for example, para. 0050 of the published specification). As provided in MPEP 2106.04(a)(2)(I) a mathematical relationship or calculation can be expressed in words.
As to dependent claims 6 and 16, these claims recite generating the plurality of tags based on text descriptions accessed from the online system. For the simple case encompassed by the BRI of the claims, a human could, with the aid of pencil and paper, mentally generate tags in the manner claimed. Hence, the claimed “generating” is an abstract idea under the “Mental Processes” grouping. As to the claimed “accessing” of text descriptions from the online system, this limitation amounts to no more than mere data gathering, which is insignificant extra solution activity as set forth above in the parent claims. Also as set forth above in the parent claims, the courts have ruled in numerous cases that mere data gathering is well-understood, routine, and conventional activity in the computing arts. Looking at the additional elements as a whole adds nothing beyond the additional elements considered individually—they still represent insignificant extra-solution activity; well-understood, routine, and conventional subject matter; and/or generic computer implementation. Hence, the claims as a whole, looking at the additional elements individually and in combination, do not amount to a practical application nor an inventive concept. These claims are not patent eligible.
As to dependent claims 7 and 17, these claims recite “wherein generating the plurality of tags comprises: prompting a generative language model to generate the plurality of tags based on item data for items in the set of categories.” This limitation is recited at a high level of generality and amounts to mere instructions to apply the abstract idea on a computer, which provide a practical application nor an inventive concept. Looking at the additional elements as a whole adds nothing beyond the additional elements considered individually—they still represent insignificant extra-solution activity; well-understood, routine, and conventional subject matter; and/or generic computer implementation. Hence, the claims as a whole, looking at the additional elements individually and in combination, do not amount to a practical application nor an inventive concept. These claims are not patent eligible.
As to dependent claims 8 and 18, these claims recite reciting generating a score for each of the plurality of item sources. For the simple case encompassed by the BRI of the claims, a human could, with the aid of pencil and paper, mentally perform the claimed generating of scores as claimed. Hence, this limitation is an abstract idea under the “Mental Processes” grouping. Alternatively, this limitation may be deemed an abstract idea under the “Mathematical Concepts” grouping, since the claimed generating of scores amounts to no more than mathematical calculation(s).
As to dependent claims 9 and 19, these claims recite identifying item sources that do not have overlapping tags. The claimed “identifying” amounts to no more than a series of judgements/evaluations. For the simple case encompassed by the BRI of the claims, a human could, with the aid of pencil and paper, mentally perform the judgements/evaluations necessary to achieve the claimed identifying of item sources. Hence, this limitation is an abstract idea under the “Mental Processes” grouping.
As to dependent claim 10, this claim recites generating a title for the subset of item sources. For the simple case encompassed by the BRI of the claims, a human could, with the aid of pencil and paper, mentally perform the claimed generating of a title. Hence, this limitation is an abstract idea under the “Mental Processes” grouping.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UMAR MIAN whose telephone number is (571)270-3970. The examiner can normally be reached Monday to Friday, 10 am to 6:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tony Mahmoudi can be reached on (571) 272-4078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Umar Mian/
Primary Examiner, Art Unit 2163
1 MPEP § 2106.07(a)(III)(A) explains that a specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional ( or an equivalent term) or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a).
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