DETAILED ACTION
Remarks
This Office Action is in response to the application 19/229592 filed on 5 June 2025.
Claims 1-20 have been examined.
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 .
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 11,960,542 B2 in view of Babenko et al. (U.S. Patent Application Publication No. 20140317031 A1, hereinafter referred to as Babenko). Allowed claims 1 and 2 recite features that are largely analogous to those of examined claim 1, except that allowed claims 1 and 2 are directed to a “write request” whereas examined claim 1 is directed to a “read request.” Babenko teaches all of the features of examined claim 1 that are missing from allowed claims 1 and 2, as detailed below.
Babenko teaches a method comprising:
determining an interest by an entity in a first application (see Babenko para. 0060 and Fig. 2A: new data 210 indicates that User J has installed App X; Note: Babenko’s “User J” corresponds to the claimed entity);
determining an application recommendation read request, the application recommendation read request comprising a first application identifier of the first application (see Babenko para. 0060 and Fig. 2A: new data 210 indicates that User J has installed App X; Note: Babenko’s new data 210 corresponds to the claimed “application recommendation read request”);
sending the application recommendation read request to a read interface of an app recommender database for determining one or more application recommendations (see Babenko para. 0056 and Fig. 2A: collaborative filtering module 202 determines recommendations for applications) from an application correlation table of the app recommender database (see Babenko para. 0056: matrix 206 corresponds to the claimed application correlation table);
receiving, from the read interface, a response comprising the one or more application recommendations (see Babenko para. 0060: the system makes a recommendation 214 to User J suggesting that User J might be interested in App Y 216); and
providing, to the entity, the one or more application recommendations (see Babenko para. 0060: the system makes a recommendation 214 to User J suggesting that User J might be interested in App Y 216).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified allowed claims 1 and 2 to include the teachings of Babenko because it allows providing application recommendations for new and/or unclassified data (Babenko para. 0060).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 12,572,593 B2 in view of Babenko et al. (U.S. Patent Application Publication No. 20140317031 A1, hereinafter referred to as Babenko). Allowed claims 1 and 2 recite features that are largely analogous to those of examined claim 1, except that allowed claims 1 and 2 are directed to a “write request” whereas examined claim 1 is directed to a “read request.” Babenko teaches all of the features of examined claim 1 that are missing from allowed claims 1 and 2, as detailed above. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified allowed claims 1 and 2 to include the teachings of Babenko because it allows providing application recommendations for new and/or unclassified data (Babenko para. 0060).
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, 10, and 16, these claims recite “determining an interest by an entity in a first application.” The claimed determination of an interest amounts to no more than a judgement or evaluation, which can be mentally performed by a human with the aid of pencil and paper. 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 “responsive to determining that a connection request is made, determining the target application as the first application.” The claimed determination amounts to no more than a judgement or evaluation, which can be mentally performed by a human with the aid of pencil and paper. Hence, this limitation is also an abstract idea under the “Mental Processes” grouping.
These claims also recite determining one or more application recommendations from an application correlation table of the app recommender database. The app correlation table is recited in the claim as comprising a “plurality of correlated pairs of applications, each correlated pair of applications having a correlation score of greater than a threshold correlation value, the correlation score being indicative of a frequency of a first and second application of the application pair both being associated with a same organization identifier of a plurality of organization identifiers of a dataset relative to the frequency of the first application and the second application being independently associated with the plurality of organization identifiers of the dataset.” The broadest reasonable interpretation (BRI) of the claimed app correlation table encompasses a simple case of just two correlated pairs of applications. Given that the BRI of the claims encompasses such a simple case, a human could mentally visualize such an app correlation table and a human could write it out on a piece of paper. Furthemore, a human could use this simple app correlation table, either mentally visualized or drawn out on a piece of paper, to determine an application recommendation in the manner claimed. Hence, the claimed determination of an application recommendation from an application correlation table is 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) “monitoring for a connection request by the entity to an application service
provider providing a target application”
b) “determining an application recommendation read request, the application
recommendation read request comprising a first application identifier of the first application;”
c) “sending the application recommendation read request to a read interface of an app recommender database;”
d) “receiving, from the read interface, a response comprising the one or more application recommendations”;
e) “providing, to the entity, the one or more application recommendations;”
f) “A system comprising: one or more processors; and memory comprising computer executable instructions;” and
g) “A non-transitory computer-readable storage medium storing instructions” for execution by a computer.
Limitations (a) through (d) amount to no more than mere data gathering/transmitting, which has been deemed by the courts to be insignificant extra-solution activity. See MPEP 2106.05(g). 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). Alternatively, limitations (a) through (e) may be deemed mere instructions to apply the abstract idea on a computer, which also cannot be deemed a practical application. See MPEP 2106.05(f). Limitations (f) and (g) are 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) through (d) amount to no more than mere data gathering/transmitting, 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/transmitting 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). Alternatively, limitations (a) through (d) may be deemed mere instructions to apply the abstract idea on a computer, which also cannot be deemed 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 the claimed “providing” or its functions (see para. 0276 of Applicant’s published specification). This indicates that this feature is 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 element (e) is conventional and performs well-understood, routine, and conventional activities. See MPEP § 2106.07(a)(III)(A)1. Alternatively, additional element (e) may be deemed mere instructions to apply the abstract idea on a computer, which also cannot provide an inventive concept. See MPEP 2106.05(f). As discussed above with respect to integration of the abstract idea into a practical application, additional elements (f) and (g) amount 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 claim 2, this claim recites features for a graph data structure comprising vertices connected by edges. The BRI of these claims encompasses a simple graph data structure having just a few vertices and edges. A human can mentally visualize such a simple graph data structure and a human could draw it out on a piece of paper. Hence, these claims are directed to an abstract idea under the “Mental Processes” grouping.
As to dependent claims 3, 11, and 17, these claims recite features for monitoring search requests made by a user within an accounting platform provided by a server and determining the target application accordingly. The limitations of these claims amount to no more than a description of a field of use and/or technological environment, which cannot be deemed a practical application nor an inventive concept. See MPEP 2106.05(h).
As to dependent claims 4, 12, and 18, these claims recite features for monitoring for a connection request by the entity to an application service provider providing a target application and determining the target application accordingly. The limitations of these claims amount to no more than a description of a field of use and/or technological environment, which cannot be deemed a practical application nor an inventive concept. See MPEP 2106.05(h).
As to dependent claims 5, 13, and 19, these claims recite “determining an association read request, the association read request comprising an entity identifier for the entity” and “determining one of the one or more applications as the first application.” These “determining” limitations amount to mere evaluations/judgements, which a human can mentally perform for the simple case encompassed by the BRI of the claims. Hence, these “determining” limitations are abstract ideas under the “Mental Processes” grouping. These claims also recite sending the association request and receiving a response. These sending and receiving limitations are mere data gathering/transmitting, which is insignificant extra solution activity and well-understood, routine, and conventional subject matter for the same reasons set forth above in the parent claims. 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 significantly more than the abstract idea. These claims are not patent eligible.
As to dependent claim 6, this claim recites features for generating the application correlation table. 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 generating of the application correlation table. Hence, these limitations are an abstract idea under the “Mental Processes” grouping. The claimed “providing” limitation at the end of these claims is mere data ouputting, which is insignificant extra solution activity and well-understood, routine, and conventional subject matter for the same reasons set forth above in the parent claims. 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 significantly more than the abstract idea. These claims are not patent eligible.
As to dependent claims 7, 9, 14, 15, and 20, these claims recite determining an entry as stale based on a time stamp. 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 limitations of these claims. Hence, these claims are directed to an abstract idea under the “Mental Processes” grouping.
As to dependent claim 8, this claim recites features for determining a usage relationship and determining a usage write request for each entity identifier and application identifier pair. 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 limitations of these claims. Hence, these claims are directed to an abstract idea under the “Mental Processes” grouping. The claimed “providing” limitation at the end of these claims is mere data ouputting, which is insignificant extra solution activity and well-understood, routine, and conventional subject matter for the same reasons set forth above in the parent claims. 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 significantly more than the abstract idea. These claims are not patent eligible.
Additional Art Considered
The prior art made of record and not relied upon is considered pertinent to the Applicants’ disclosure.
The following patents and papers are cited to further show the state of the art at the time of Applicants’ invention with respect to building and using a data structure for application recommendations.
a. Goshen et al.; “SMART SOFTWARE RECOMMENDATION USING AN APPLICATION NETWORK”; U.S. PGPub. No. 20210304281 A1.
Teaches recommending applications based off an application graph that has nodes representing applications and edges representing relationships between applications (see abstract and Fig. 2).
b. Gupta et al.; “Methods And Systems For Recommending Applications”; U.S. PGPub. No. 20160188671 A1.
Teaches recommending applications (see para. 0001-0007) based on an entity relationship graph (see para. 0043 and 0046-0048).
c. Assom et al.; “MULTI-PARTITE GRAPH DATABASE”; U.S. PGPub. No. 20150169758 A1.
Teaches a graph database (see para. 0140-0157 and Figs. 1-5) that enables application recommendations (see para. 0010).
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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/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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