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 .
DETAILED ACTION
This is a reply to the application filed on 5/12/2025, in which, claims 2-21 are pending. Claims 2, 14, and 21 are independent.
When making claim amendments, the applicant is encouraged to consider the references in their entireties, including those portions that have not been cited by the examiner and their equivalents as they may most broadly and appropriately apply to any particular anticipated claim amendments.
Information Disclosure Statement
The information disclosure statement (IDS) submitted is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings filed on 5/12/2025 are accepted.
Specification
The disclosure filed on 5/12/2025 is accepted.
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.
The claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claim(s) 2, 12, and 21 is/are directed to a method and system (apparatus). The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more. Based upon consideration of all of the relevant factors with respect to the claims as a whole, claims are held to claim an unpatentable abstract idea, and are therefore rejected as ineligible subject matter under 35 U.S.C. § 101.
Inventions for a “new and useful process, machine, manufacture, or composition of matter” generally constitute patent-eligible subject matter. 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ - i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217-18 (alteration in original).
The USPTO published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the USPTO's examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. 1
The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. See 2019 Revised Guidance, 84 Fed. Reg. at 54; MPEP §§ 2106.04(II)(A)(l), 2106.04(a). If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application of that exception, i.e., whether the additional elements recited in the claim beyond the judicial exception, apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. See 2019 Revised Guidance, 84 Fed. Reg. at 54-55; MPEP §§ 2106.04(II)(A)(2), 2106.04(d). Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 54-55; MPEP § 2106.04(II)(A)(2).
If the claim is determined to be directed to a judicial exception under Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements amounts to significantly more than the judicial exception itself; only then, is the claim patent eligible. See 2019 Revised Guidance, 84 Fed. Reg. at 56; MPEP § 2106.05.
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
2019 Revised Guidance, Step 2A, Prong 1
The abstract idea to which claims 2, 14, and 21 are directed to is mental process such as concepts performed in the human mind (including an observation, evaluation, judgement, opinion) with the help of pen/paper. In particular, the claims recite the following abstract concepts:
(a) “presenting, by a client device of a user, a resource of a publisher that uses a given consent management platform to manage user consent settings of multiple users that visit resources of the publisher” (i.e., abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group))
(b) “presenting an interactive interface of the given user consent management platform that enables the user to update user consent settings that define how data of the user is collected and used by a plurality of entities” (i.e., abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group))
(c) “receiving, based on user interaction with the interactive interface, updated user consent settings for the user” (i.e., abstract idea of collecting information, analyzing it (Electric Power Group))
(d) “identifying a communication to be sent to a particular entity” (i.e., abstract idea of mental process of identifying an option as found abstract by the Courts in TLI Comms, Digitech, SmartGene, Bancorp Servs, Electric Power Group, Classen, FariWarning, Cybersource)
(e) “selecting, from among a set of user data for the user, data that satisfies the updated user consent settings; and” (i.e., abstract idea of mental process of selecting/collecting data as found abstract by the Courts in Electric Power Group, CyberSource, Classen, FariWarning, TLI Comms)
(f) “sending, to the particular entity, the data that satisfies the updated one or more user consent settings” (i.e., routine, well-understand computer functions as found by the Courts: 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); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); 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))
The Supreme Court and Federal Circuit have identified abstract ideas in patent claims by making comparisons to concepts found in past decisions to be judicial exceptions to eligibility. The 2019 IEG summarizes concepts the courts have considered to be abstract ideas by associating eligibility decisions with judicial descriptors (e.g., “an idea of itself,” “certain methods of organizing human activities”, “mathematical relationships and formulas”) based on common characteristics. These associations define the judicial descriptors in a manner that stays within the confines of the judicial precedent, with the understanding that these associations are not mutually exclusive, i.e., some concepts may be associated with more than one judicial descriptor.
The abstract functions of the claims in the case are claim(s) is/are directed to system and method of data processing to identify an option of sending data (i.e., abstract idea mental process) as defined by the claimed steps above.
The present claims, as a whole, and individual limitations, are reciting abstract concept of data collection, selection to identify an option to determine whether data can be shared with an entity. As such the claims are analogous to FairWarning, 839 F.3d at 1093-94 (concluding claims directed to "collecting and analyzing information to detect misuse and notifying a user when misuse is detected" to be mental processes within the abstract-idea category); Electric Power Group; and TLI Comms. Note that merely using well-known and commonly used data processing algorithm of receiving/collecting, storing, and sending data in a generic and superficial manner does not convert a known abstract idea (i.e., identifying an option) into an eligible subject matter. See, Bancorp Servs., L.L. C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1277-78 (Fed. Cir. 2012). Looking at the steps of the claims, for each of the claims, data is simply being collected, analyzed, converted using mathematical algorithm to predict a risk assessment which was ruled abstract in:
a. Collecting and comparing known information (Classen);
b. Comparing information regarding a sample or test subject to a control or target data (Ambry/Myriad CAFC);
c. Collecting and analyzing information to detect misuse and notifying a user when misuse is detected (FairWarning);
d. Data recognition and storage (Content Extraction);
e. Obtaining and comparing intangible data (Cybersource);
f. Collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group);
g. Organizing and manipulating information through mathematical correlations (Digitech);
h. Virus Screening (Int. Ventures v. Symantec ‘610 patent);
i. A mathematical formula for calculating parameters indicating an abnormal condition (Grams);
j. Collecting, selecting, categorizing, analysis, and display results of the analysis (Electric Power Group);
Furthermore, the invention is nothing more than data collecting to identify an option to share the data can be performed mentally (or with a pen and piece of paper). The steps are similar to concepts and ideas that have been identified as abstract by the courts. For example, collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group); a mathematical formula for calculating parameters indicating an abnormal condition (Grams); collecting and analyzing information to detect misuse and notifying a user when misuse is detected (FairWarning); and obtaining and comparing intangible data (Cybersource). While the specific facts of the case differ from these cases, the claims are still directed to collecting data to identify an option to share the data. Further, each and every step can be performed mentally and with pen and paper. A computer is not necessary to generate, receive and share data. For example, user consent information can be readily obtained on a printed form paper, stored in a file system and then subsequently used to decide how to share a user’s private information. Even further still, any steps that deal with generating, receiving, analyzing are insignificant, extra solution activity because receiving, analyzing and transmitting data, analyzing and processing collected data to derive risk assessments, and announcing the risk assessments are all well-known in the computer network security arts.
2019 Revised Guidance, Step 2A, Prong 2
The 2019 Revised Guidance sets forth a non-exhaustive listing of considerations indicative that an additional element or combination of elements may have integrated a recited judicial exception into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.04(d). In particular, the Guidance describes that an additional element may have integrated the judicial exception into a practical application if, inter alia, the additional element reflects an improvement in the functioning of a computer or an improvement to other technology or a technical field. Id. At the same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id.
The abstract functions of the claims in the case are claim(s) is/are directed to system and method of than data collection to identify an option to share the data as defined by the claimed steps. The claims do not require an arguably inventive set of components, methods, or algorithms. The abstract idea is implemented using generic computing elements (“computers, programs, media”) that do not integrate a practical application of the abstract idea in the claims (step 2A, prong 2). Accordingly, even in combination, these additional generic computing elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims recite a mental process, i.e., an abstract idea, and that the additional elements recited in the claim beyond the abstract idea are no more than generic computer components used as tools to perform the recited abstract idea and insignificant extra-solution activity. As such, they do not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223-24 ("[W]holly generic computer implementation is not generally the sort of ‘additional featur[ e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)); 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying “an additional element adds insignificant extra-solution activity to the judicial exception” and “an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use” as examples in which a judicial exception has not been integrated into a practical application).
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
The relevant question under Step 2B is whether claim includes an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. Here, the additional elements of claim beyond the abstract idea, namely, a “client device”, “processors”, “computer readable media” is a conventional computing equipment and algorithm used in a well-understood, routine, and conventional manner. These additional elements do not provide an inventive concept; rather, they simply append well-understood, routine, conventional activities previously known to the industry to the judicial exception.
Applying the test to the claims in the application, the structural elements of the claims, which include a computer when taken in combination with the functional elements claim(s) is/are directed to system and method to than data collecting to identify an option to share the data, together do not offer “significantly more” than the abstract idea itself because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of any computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment (a general purpose computer and/or environment of the user). When considered as an ordered combination, the Examiner does not find any combination of the additional elements that amounts to more than the sum of the parts. The Examiner finds that the individual elements of the claims are performing their intended roles and functions. In most cases, the additional elements are applied merely to carry out data processing, as discussed above, fall under well-understood, routine, and conventional functions of generic computers – in our common day-to-day interactions. Therefore, the claimed interactions of the various generically recited methods / devices lacks an unconventional step that confines the claim to a particular useful application in the sense that the result is equivalent to purely mental activity.
Dependent claims 3-13 and 15-20 do not add any inventive concept or use an unconventional computing element or improve the underlying computer technology and are therefore rejected based on the rationale discussed in the rejection of the independent claims.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6959420 B1 (hereinafter ‘Mitchell’) in view of US 20160070758 A1 (hereinafter ‘Thomson’).
As regards claim 2, Mitchell (US 6959420 B1) teaches: A computer-implement method comprising: presenting, by a client device of a user, a resource of a publisher that uses a given consent management platform to manage user consent settings of multiple users that visit resources of the publisher; (Mitchell: Fig. 5, 9:65 to 10:40, i.e., the UI interface for setting up user’s consent settings)
presenting an interactive interface of the given user consent management platform that enables the user to update user consent settings that define how data of the user is collected and used by a plurality of entities; (Mitchell: Fig. 5, 9:65 to 10:40, i.e., the UI interface)
receiving, based on user interaction with the interactive interface, updated user consent settings for the user; (Mitchell: Fig. 5, 9:65 to 10:40, i.e., user provides consent settings via the UI)
identifying a communication to be sent to a particular entity; (Mitchell: Fig. 5, 9:65 to 10:40, i.e., consent settings for different sites)
selecting, from among a set of user data for the user, data that satisfies the updated user consent settings; and (Mitchell: Figs. 2-4, 16:37-65, Fig. 5, 9:65 to 10:40, i.e., updating/changing the consent settings)
Mitchell in combination with Thomson further teaches: sending, to the particular entity, the data that satisfies the updated one or more user consent settings. (Thomson: Figs. 3A-4, ¶19, ¶25, ¶31-¶35, i.e., sending data, including digitally signed consent agreements, in response to requests)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Mitchell to include sending data and digitally signed consent agreement as taught by Thomson with the motivation to provide privacy-based data sharing among entities (Thomson: Abstract)
Claims 14 and 21 recite substantially the same features recited in claim 2 above and are rejected based on the rationale discussed in the rejection.
As regards claim 3, Mitchell et al combination teaches the method of claim 2, comprising storing the updated one or more user consent settings at the client device. (Mitchell: Fig. 5, 9:65 to 10:40)
Claim 15 recites substantially the same features recited in claim 3 above and is rejected based on the rationale discussed in the rejection.
As regards claim 4, Mitchell et al combination teaches the method of claim 2, comprising installing a consent management module of the user consent management platform on the client device, wherein the consent management module is configured to manage the user consent settings of the user at the client device and to present interactive interfaces for managing user consent settings at the client device, wherein the interactive interfaces comprise the interactive interface of the given consent management platform. (Mitchell: Fig. 5, 9:65 to 10:40. See also, Thomson: Figs. 2A-2B, ¶42-¶54)
Claim 16 recites substantially the same features recited in claim 4 above and is rejected based on the rationale discussed in the rejection.
As regards claim 5, Mitchell et al combination teaches the method of claim 4, wherein the consent management module is installed on the client device based on a selection of the given consent management platform. (Mitchell: Fig. 5, 9:65 to 10:40, i.e., the UI is on the user device)
Claim 17 recites substantially the same features recited in claim 5 above and is rejected based on the rationale discussed in the rejection.
As regards claim 6, Mitchell et al combination teaches the method of claim 4, wherein selecting the data that satisfies the updated user consent settings comprises interacting with a consent management module to obtain the data that satisfies the updated one or more user consent settings. (Mitchell: Fig. 5, 9:65 to 10:40)
Claim 18 recites substantially the same features recited in claim 6 above and is rejected based on the rationale discussed in the rejection.
As regards claim 7, Mitchell et al combination teaches the method of claim 4, comprising querying, by the consent management module, the consent management platform for updates to the user consent settings for the user. (Mitchell: Fig. 5, 9:65 to 10:40)
Claim 19 recites substantially the same features recited in claim 7 above and is rejected based on the rationale discussed in the rejection.
As regards claim 8, Mitchell et al combination teaches the method of claim 2, comprising presenting, in the interactive interface, one or more recommended user consent settings based at least on (i) a current location of the client device, (ii) user activity on the client device, or both. (Mitchell: Fig. 5, 9:65 to 10:40, 11:60 to 12:40)
Claim 20 recites substantially the same features recited in claim 8 above and is rejected based on the rationale discussed in the rejection.
As regards claim 9, Mitchell et al combination teaches the method of claim 2, wherein the interactive interface depicts, for each domain name of a set of domain domains, multiple buttons that define types of data that can be sent to a domain corresponding to the domain name, wherein user interaction with a button depicting a domain name initiates an update to a corresponding user consent setting for the type of data and the domain corresponding to the domain name. (Mitchell: Fig. 5, 9:65 to 10:40. See also, Thomson: Figs. 2A-2B, ¶42-¶54, i.e., requested data is generated based on the permissions/rules setup by the data owner)
As regards claim 10, Mitchell et al combination teaches the method of claim 2, wherein at least one user consent setting defines how data can be used by a given entity. (Mitchell: Fig. 5, 9:65 to 10:40)
As regards claim 11, Mitchell et al combination teaches the method of claim 2, wherein at least one user consent setting defines how long user data of the user can be stored by a given entity. (Mitchell: Fig. 5, 7, 9:65 to 10:40, i.e., the expiration time)
As regards claim 12, Mitchell et al combination teaches the method of claim 2, wherein the user consent settings comprise standard settings based on at least one of laws, regulations, or best practices. (Mitchell: Fig. 5, 7, 9:65 to 10:4, claim 1)
As regards claim 13, Mitchell et al combination teaches the method of claim 2, comprising: determining, for each individual entity of multiple entities, a level of contribution of the individual entity to the presentation of digital components to the user of the client device; and (Mitchell: Fig. 5, 9:65 to 10:40. See also, Thomson: Figs. 2A-2B, 4-7, ¶42-¶54) recommending user consent settings for each individual entity based on the level of contribution for the individual entity. (Mitchell: Fig. 5, 9:65 to 10:40. See also, Thomson: Figs. 2A-2B, 4-7, ¶42-¶54)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SYED A ZAIDI whose telephone number is (571)270-5995. The examiner can normally be reached Monday-Thursday: 5:30AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Nickerson can be reached at (469) 295-9235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SYED A ZAIDI/Primary Examiner, Art Unit 2432
1 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020).
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