DETAILED ACTION
Notice of Pre-AIA or AIA Status
01. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
02. The information disclosure statement (IDS) filed on 05/14/2025 has been considered by the examiner and made of record in the application file.
Priority
03. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Drawings
04. The drawings were received on 05/14/2025. These drawings are accepted.
Title
05. The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections – 35 USC § 112
06. The following is a quotation of the second paragraph 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 the second paragraph of pre-AIA 35 U.S.C. 112:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the application regards as his invention.
07. Claims 1 – 7 are 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 joint inventor, or for pre-AIA applicant, regards as the invention.
Claim 1 recites the limitations of “an estimation unit that”, “a specifying unit that” and “a provision unit that”. These claim limitations invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Dependent claims 2 – 7 inherit the same rejection as in their respective parent claim(s).
08. Claims 3 – 7 are additionally 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 joint inventor, or for pre-AIA applicant, regards as the invention.
Regarding claim 3, the claim recites generating content that is “highly likely” to be related to a user. It is unclear what is meant by content being “highly likely” to satisfy that criteria. This is further evidenced by the fact that the claims do not recite or explain any details about the generating of the content or similarity between different content.
Claim Rejections - 35 USC § 101
09. 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.
10. Claims 1 – 9 are rejected under 35 U.S.C. 101 because the claims are directed to an abstract idea without significantly more. The claims are directed to estimating values, which amounts to an abstract idea, as explained in detail below. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea.
Step 1: Claim 1 recites an apparatus which recites a series of functions. Thus, the claim is directed to a machine, which is one of the statutory categories of invention. Claim 8 recites a method of the same (process) and claim 9 recites a non-transitory computer-readable storage medium (manufacture/machine), which are statutory categories of invention.
Step 2A, prong one: The claim recites the limitation of “estimates values of each user of a user group”. Nothing in the claim elements precludes the step from practically being performed in the human mind. For example, the estimating step in the claim encompasses an observation, evaluation, judgment, or opinion, in that a person can perform estimates for values. There is nothing further to this claim limitation that would make it clear that it is anything beyond some judgment that people make in their heads, by assigning a value to something, which does not have any particular formula or methodology. Applicant’s specification generally defines the claimed “user condition” as being some action a user takes (e.g. makes a purchase). Estimating a value for that action is something people can easily do in their mind.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recites an abstract idea.
Step 2A, prong two: The judicial exception is not integrated into a practical application. In particular, the claim includes the additional limitations of: “a search query” that “provides content”.
The claim recites the additional element of “a search query” that “provides content “. Generating a search query, which is based on various determined parameters, in order to generate results (content), is insignificant extra-solution activity. In fact, the claim does not even specify that the query is actually executed, how the content is retrieved, or how it would be returned or used. Regardless, this represents mere data gathering that is necessary for use of the recited judicial exception and is recited at a high level of generality.
Even when viewed in combination, the additional elements in this claim do no more than provide additional processing for the mental processes that a person performs, using generic computer components as a tool. While this type of content obtaining may change or potentially improve the daily life of humans (by obtaining digital content for people), there is no change to the computers and other technology that are recited in the claim as automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology.
Step 2B: As discussed previously with respect to Step 2A prong two, the claim amount to no more than mere instructions to apply the exception using generic computer components. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea, but are instead limited to appending well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception (abstract idea).
In this instance, the claim includes utilizing values with high affinity based on prior search queries. Most search engines include some type of capability to store previous queries as a way of determining future query processing and/or to allow for values to be assigned to search terms (e.g. Google has done this for a long time). Returning content based on the search query is merely extra-solution activity and does not meaningfully limit the claims. Therefore this claim limitation is understood to be well-understood, routine, and conventional activity, which can be performed by generic computing components.
The same analysis is applied to independent claims 8 and 9, as they recite the same claim limitations, as well as to dependent claims 2 – 7, because the limitations recite additional mental processes and/or mathematical calculations and do not integrate into a practical application. Further, they do not include additional elements that amount to significantly more.
Claim 2 includes the additional element of a user “who has performed a predetermined behavior”. Specifying what type of data is obtained or compared, which in this case is a “behavior” (e.g. making an online purchase), does not render the idea of estimating values any less abstract.
Claim 3 includes the additional element of “generate estimated content which is highly likely to be related to a user”. Specifying what type of data is obtained or compared, which in this case is a “estimated content”, does not render the idea of estimating values any less abstract. However, this is a further recitation of an abstract idea as an evaluation (estimating) of data, which is a mental process. Thus, the claim recites only additional aspects of the abstract idea and do not provide significantly more or integrate the abstract idea into a practical application.
Claim 4 recites the limitation of “calculate a lift value”. However, this is a further recitation of an abstract idea, such as by a mathematical calculation. The claim recites a calculation of a lift value that is based on a ratio of values assigned to users. This is simply a mathematical calculation (abstract idea). Thus, the claim recites only a further abstract idea that do not provide significantly more or integrate the abstract idea into a practical application. Therefore, the claim is not patent eligible as it is directed to an abstract idea without significantly more.
Claims 5 and 6 recite the additional limitation of providing content based on the number of times the query was input. This further defines the criteria for obtaining content, but does not add anything significantly more. This limitation merely outlines a generic formula for determining how the searching is performed, and does not amount to significantly more than the abstract idea.
Claim 7 recites the additional limitation of providing content to indicate a measure for the user. However, this is merely indicating the technological environment in which the judicial exception is applied to, and does not amount to significantly more than the abstract idea.
Claim Rejections - 35 USC § 102
11. 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 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.
12. The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
13. Claims 1 – 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brave et al. (US PGPub 2009/0037355), hereinafter “Brave”.
Consider claim 1, Brave discloses an information processing apparatus comprising:
an estimation unit that estimates values of each user of a user group satisfying a predetermined user condition (paragraphs [0051], [0068], [0092], [0094], user actions with respect to content are analyzed, which includes using probabilities based on values assigned to the user actions/behaviors. Examiner notes that the claimed predetermined user condition is defined in the specification as being a behavior/interaction, such as searching, purchasing, etc., and this is mapped to the behaviors taught by Brave).
a specifying unit that specifies a search query having high affinity with values satisfying a predetermined values condition among the estimated values among search queries input in the past (paragraphs [0012], [0013], [0057], [0095], [0104], [0139], a user supplies input to generate a search query that is developed to include affinities based on previous query submissions and user interactions);
a provision unit that provides content based on the specified search query (paragraphs [0071], [0114], [0119], [0139], results are returned by the processing of the search query).
Consider claim 2, and as applied to claim 1 above, Brave discloses an apparatus comprising:
the user group satisfying the predetermined user condition is a user group who has performed a predetermined behavior (paragraphs [0051], [0072] – [0075], user behaviors are analyzed in order to determine that those particular users should be used in the evaluation of performing searches and obtaining content).
Consider claim 3, and as applied to claim 1 above, Brave discloses an apparatus comprising:
generate estimated content which is highly likely to be related to a user having preset values, and estimate similarity between content related to the user and the estimated content as a score of the values (paragraphs [0073], [0109], [0139], the content that is generated is based on the particular content that is determined to be likely useful for a user, based on that user and other user’s behaviors/actions);
specify the search query having high affinity with the values whose the score is equal to or greater than a threshold (paragraphs [0066], [0071], [0094], the search query is processed by an affinity engine, which includes thresholds for values to be input to the affinity engine).
Consider claim 4, and as applied to claim 3 above, Brave discloses an apparatus comprising:
calculate a lift value that is a numerical value obtained by dividing a ratio of users having the values whose the score is equal to or greater than a threshold in the user group by a ratio of users having the values in all users, and specify the search query having high affinity based on the lift value (paragraphs [0067], [0068], the percentage or ratio, of users that find particular content to be useful is used as a metric to determine how the query processing is performed at the affinity engine).
Consider claim 5, and as applied to claim 4 above, Brave discloses an apparatus comprising:
provide the content generated based on the search query whose the number of times of input by the user of the user group is less than a threshold among the search queries having high affinity (paragraphs [0067], [0068], [0134], the content that is determined and returned by the affinity engine is determined based on the affinities that are derived from the user behaviors and values)
Consider claim 6, and as applied to claim 4 above, Brave discloses an apparatus comprising:
provide the content generated based on the search query whose the number of times of input by the user of the user group is equal to or greater than a threshold among the search queries having high affinity (paragraphs [0067], [0068], [0134], the content that is determined and returned by the affinity engine is determined based on the affinities that are derived from the user behaviors and values)
Consider claim 7, and as applied to claim 4 above, Brave discloses an apparatus comprising:
provide the content indicating a measure for the user to satisfy the user condition based on the specified search query (paragraphs [0058], [0095], [0109], affinities are used to influence what content is recommended to the user by way of the affinity engine).
Claims 8 and 9 are rejected under the same rationale as that provided with respect to claim 1. Claims 1, 8, and 9 each recite the same claim limitations, except that either an apparatus, method, or medium is claimed. Since the same claim limitations are otherwise present, each claim is rejected under the same analysis.
Relevant Prior Art Directed to State of Art
14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Oztekin (US PGPub 2014/9198445) discloses a method of a user providing a search query that is then filled in with additional information based on prior user query submission. The search system includes adding in information to the query based on user actions that the user has performed, and what the actions are perceived to mean within the context of the searching.
15. Any response to this Office Action should be faxed to (571) 273-8300 or mailed to:
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Hand-delivered responses should be brought to
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16. Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Christopher Raab whose telephone number is (571) 270-1090. The Examiner can normally be reached on Monday-Friday from 9:00am to 5:00pm.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Ajay Bhatia can be reached on (571) 272-3906. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist/customer service whose telephone number is (571) 272-2600.
/CHRISTOPHER J RAAB/Primary Examiner, Art Unit 2156
January 23, 2026