DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This communication is responsive to the application filed on May 5, 2025. Claims 21-40 are pending at the time of examination.
Specification
Content of Specification
(b) CROSS-REFERENCES TO RELATED APPLICATIONS: See 37 CFR 1.78 and MPEP § 211 et seq.
The specification fails to include the section “CROSS-REFERENCES TO RELATED APPLICATIONS”, which the instant application has claimed the priority date.
Claim Objections
Claim 25 is objected to because of the following informalities:
The claim recites in lines 2-3 “one or more non-transitory, tangible computer-readable media”.
The dependent claim 25 depends on an independent method claim 1. Thus, claim element “one or more non-transitory, tangible computer-readable media” would fall into a computer program product claim. In further, this claim element does not part of the claimed invention steps.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 27 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 27 recites the limitation “the user interface” in line 1. There is insufficient antecedent basis for this limitation in the claim.
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 21-24, 26-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claim 1 recites “constructing a preference model to produce a ranking of one or more items in accordance with a set of user preferences, the method comprising: enabling a user to express the user preferences; applying one or more semantic processing techniques to derive a knowledge representation as an abstraction of the user preferences, wherein applying one or more semantic processing techniques includes: computing weights associated with at least one first-order user preference and at least one second-order user preference; and representing weights as preference data in the knowledge representation; enabling the user to modify the user preferences; and adapting the preference model based on user interactions with existing user preferences.”
The claim 31 recites “constructing a preference model to produce a ranking of one or more items in accordance with a set of user preferences, the system comprising: a user interface configured for enabling a user to express the user preferences; a preference engine configured for applying one or more semantic processing techniques to derive a knowledge representation as an abstraction of the user preferences, wherein applying one or more semantic processing techniques includes: computing weights associated with at least one first-order user preference and at least one second-order user preference; and representing weights as preference data in the knowledge representation; an interactive preference management component configured for enabling the user to modify the user preferences; and a feedback component configured for adapting the preference model based on user interactions with existing preferences.”
The limitation of claims 1 and 31, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “by a processor,” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “enabling”, “applying one or more semantic processing techniques” language, in the context of this claim encompasses the user manually perform the process. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or manually performed, but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites one additional element – using a processor to perform “enabling”, applying”. The processor in performing the steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of the steps) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claims 22-24, 26-29, 31-40 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims are not patent eligible.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 21-40 of the instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,092,516. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 21-40 are directed to
Instant application Patent (‘516)
21. (New) A method of constructing a preference model to produce a ranking of one or more items in accordance with a set of user preferences, the method comprising:
enabling a user to express the user preferences;
applying one or more semantic processing techniques to derive a knowledge representation as an abstraction of the user preferences, wherein applying one or more semantic processing techniques includes:
computing weights associated with at least one first-order user preference and at least one second-order user preference; and
representing weights as preference data in the knowledge representation;
enabling the user to modify the user preferences; and
adapting the preference model based on user interactions with existing user preferences.
A computer-implemented method for calculating a ranking of at least one item in a plurality of items, the method comprising:
receiving user preferences comprising a plurality of first-order user preferences indicative of a user's preferences for items in the plurality of items, and at least one second-order user preference indicative of the user's preferences among first-order user preferences in the plurality of first-order user preferences;
wherein the at least one second-order user preference is indicative of the user's preference among attributes of at least one item in the plurality of items;
calculating, with at least one processor, a ranking of the at least one item in the plurality of items based, at least in part on, at least one data structure encoding a preference graph that represents the received user preferences; and
identifying and outputting at least a subset of the plurality of items to a user, in accordance with the ranking.
31. (New) A computer system for constructing a preference model to produce a ranking of one or more items in accordance with a set of user preferences, the system comprising:
a user interface configured for enabling a user to express the user preferences;
a preference engine configured for applying one or more semantic processing techniques to derive a knowledge representation as an abstraction of the user preferences, wherein applying one or more semantic processing techniques includes:
computing weights associated with at least one first-order user preference and at least one second-order user preference; and
representing weights as preference data in the knowledge representation;
an interactive preference management component configured for enabling the user to modify the user preferences; and
a feedback component configured for adapting the preference model based on user interactions with existing preferences.
10. A system comprising: at least one memory configured to store a plurality of tuples, each tuple in the plurality of tuples corresponding to an item in a plurality of items, and at least one data structure encoding a preference graph to represent user preferences, wherein the user preferences comprise a plurality of first-order user preferences indicative of a user's preferences among items in the plurality of items, and at least one second-order user preference indicative of the user's preferences among first-order user preferences in the plurality of first-order user preferences;
wherein the at least one second-order user preference is indicative of the user's preference among attributes of at least one item in the plurality of items; and
at least one processor coupled to the at least one memory, the at least one processor configured to: calculate a ranking of at least one item in the plurality of items based, at least in part on, the at least one data structure encoding the preference graph that represents the user preferences; and
identify and output at least a subset of the plurality of items to a user, in accordance with the ranking.
After analyzing the language claim of the claims, it is clear that claims 21-40 of the instant application are merely an obvious variation of claims 1-14 of U.S. Patent No. 9,092,516. While claims 21-40 of the instant application is slightly broader than claims 1-14 of U.S. Patent No. 9,092,516, this difference is not enough to distinguish the two instant application claims and the patent claims. With respect to the language and the disclosure of the instant application not only fail to distinguish it from the Patent No. 9,092,516, but indicate that it is merely a subset of the Patent No. 9,092,5162. These differences are not sufficient to render the claims patentably distinct, and therefore, claims 21-40 of the instant application are valid.
A later patent/application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
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 pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 21-24, 26-40 are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by Desbarats (US Patent No. 8,326,890).
As per claim 21, Desbarats discloses a method of constructing a preference model to produce a ranking of one or more items in accordance with a set of user preferences, the method comprising:
enabling a user to express the user preferences (Fig. 1, col. 4, lines 56-57, as a user interface for enabling a user to input preferences of features of a product);
applying one or more semantic processing techniques to derive a knowledge representation as an abstraction of the user preferences (col. 6, lines an information query and retrieval system is running the user’s input preferences to retrieve product(s), product attributes from a product attribute database (Fig. 4, #301), wherein applying one or more semantic processing techniques includes:
computing weights associated with at least one first-order user preference and at least one second-order user preference (col. 6, lines 65-67, col.7, lines 1-9, as potential attribute values are be automatically generated; col. 8, lines 34-36, as each of a product’s attributes may be assigned product attribute weights); and
representing weights as preference data in the knowledge representation (col. 7, lines 4-15, as values be presented to the user ordered from what is generally considered to be the most desirable numbers for that feature, followed by the values);
enabling the user to modify the user preferences (col. 7, lines 22-14, as the user may be able to alter the maximum and or minimum values for the purpose, inter alia) ; and
adapting the preference model based on user interactions with existing user preferences (Col. 8, lines 32-50, as this calculation results in an adjusted user preferences value…the adjusted user preference value is associated with the product attribute as its corresponding product attribute weight).
As per claim 22, Desbarats further teaches wherein the one or more items are objects of information expressing at least one of: media; content; products; data; and
Metadata (Fig. 4, # 301).
As per claim 23, Desbarats further teaches wherein the user preferences are inferred from user context information (Fig. 4, # 303).
As per claim 24, Desbarats further teaches wherein the user preferences are mediated by at least one of: a user interface; a user profile; a user model; a data consumer; a website; multimedia; and a data consumer model (col. 8, liens 42-50).
As per claim 26, Desbarats further teaches wherein the user preferences are expressed as at least one of: initial user preferences; and modifications to the existing user preferences (Fig. 4, # 303, col. 8, lines 17-23).
As per claim 27, Desbarats further teaches wherein the user interface is at least one of: a computer; a printer; a display screen; a speaker; a keyboard; a microphone; a pointing device; a touch pad; and a digitizing table (Fig. 7).
As per claim 28, Desbarats further teaches wherein modifications to the user preferences are expressed through changes in the rankings (col. 9, lines 49-57).
As per claim 29, Desbarats further teaches including obtaining the user preferences by receiving from the user the user preferences via at least one prompt (Fig. 1-3).
As per claim 30, Desbarats further teaches wherein the at least one first-order preference and the at least one second-order preference are obtained passively or implicitly without interacting with the user (col. 6, lines 19-23).
Allowable Subject Matter
Claim 25 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art of record fails to teach the knowledge representation includes a directed graph comprising vertices representing concepts, and edges representing semantic relations between the concepts, wherein the concepts represent user preferences.
Conclusion
The prior art made of record, listed on form PTO-892, and not relied upon, if any, is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBBIE M LE whose telephone number is (571)272-4111. The examiner can normally be reached 9:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Rones can be reached at 571-272-4085. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DEBBIE M LE/Primary Examiner, Art Unit 2168 April 9, 2026
Prosecution Insights