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 .
This Office Action is responsive to communication filed on 08/21/2025.
Claims 1 – 20 are currently pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/04/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 1 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 20 of U.S. Patent No. 12,038,892 B1 and unpatentable over claims 1 - 20 of U.S. Patent No. 12,430,305 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because subject matters claimed in instant application can also find in patent ‘892 and ‘305.
In claim 1 of instant application, Applicant claims “An apparatus for determining a hierarchical listing of information gaps, the apparatus comprising: a processor; and a memory connected to the processor, the memory containing instructions configuring the processor to: receive a first identification datum from a user device at a first time; receive a target status datum from a database connected to the processor; classify, using a machine learning model, the first identification datum to an outlier cluster; identify a first gap datum between the target status datum and the first identification datum; receive an updated identification datum from the user device at a second time; identify a second gap datum between the target status datum and the updated identification datum; generate an updated hierarchical listing based at least on the second gap datum and the outlier cluster; generate an interface query data structure including an input field, wherein the interface query data structure configures a remote display device to: receive the updated identification datum using the input field; and display the updated hierarchical listing.”
Similar limitations also found in ‘892 and ‘305. Certain limitation found in claim 1 of ‘892 and ‘305 but not in instant application such as “wherein the first identification datum describes a first output type from the user device at a first time… wherein the second identification datum describes a second output type from the user device at a second time…wherein the target status datum describes an optimal output type between a minimal output type and a maximum output type;… receive a user-input datum into the input field, wherein the user-input datum describes data for updating the second identification datum; and display a hierarchical listing of information gaps including hierarchically ranking the first gap datum and the second gap datum based on the user-input datum”.
It would have been obvious to one with ordinary skill in the art before the effective filling date of the claim invention to broaden the claims at no additional cost in development.
Table comparison of claim 1
Instant application Patent ‘892 Patent ‘305
An apparatus for determining a hierarchical listing of information gaps, the apparatus comprising: a processor;
An apparatus for determining a hierarchical listing of information gaps, the apparatus comprising: a processor;
An apparatus for determining a hierarchical listing of information gaps, the apparatus comprising: a processor;
a memory connected to the processor, the memory containing instructions configuring the
processor to:
a memory connected to the processor, the memory containing instructions configuring the
processor to:
a memory connected to the processor, the memory containing instructions configuring the
processor to:
receive a first identification datum from a user device at a first time;
receive a first identification datum from a user device, wherein the first identification datum describes a first output type from the user device at a first time;
receive a first identification datum from a user device, wherein the first identification datum describes a first output type from the user;
Receive an updated identification datum from the user device at a second time;
receive a second identification datum from the user device, wherein the second identification datum describes a second output type from the user device at a
second time;
receive a target status datum from a database connected to the processor;
receive a target status datum from a database connected to the processor, wherein the
target status datum describes an optimal output type between a minimal output
type and a maximum output type;
receive a target status datum from a database connected to the processor, wherein the
target status datum describes an optimal output type between a minimal output
type and a maximum output type;
classify, using a machine learning model, the first identification datum to an outlier cluster;
classify, using a machine learning model, the first identification datum, the second identification datum, and the target status datum to a category of a plurality of
categories representing identification data;
classify, using a machine learning model, the first identification datum to an outlier cluster;
identify a first gap datum between the target status datum and the first identification datum;
identify a first gap datum between the first identification datum and the second
identification datum;
identify a first gap datum between the target status datum and the first identification datum;
identify a second gap datum between the target status datum and the updated
identification datum;
identify a second gap datum between the target status datum and the second
identification datum;
Generate a hierarchical listing between the target status datum and the first identification datum;
generate an interface data structure including an input field, wherein the interface
query data structure configures a remote display device to:
generate an interface data structure including an input field, wherein the interface
query data structure configures a remote display device to: display an input field;
generate an interface data structure including an input field, wherein the interface
data structure configures a remote display device to:
display an input field;
Receive the updated identification datum using the input field
receive a user-input datum into the input field, wherein the user-input datum
describes data for updating the second identification datum; and
receive a user-input datum into the input field, wherein the user-input datum
describes data for updating the first identification datum; and
display the updated hierarchical listing
display a hierarchical listing of information gaps including hierarchically
ranking the first gap datum and the second gap datum based on the
user-input datum.
Display a user activity level summary based on the user input datum.
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.
Step 1:
Claims 1 - 20 are directed to a "method and an apparatus", and therefore, directed to a statutory category.
Step 2A, Prong One:
The independent claims 1, 11, includes the following limitations that directed to an abstract idea:
“classify, using a machine learning model, the first identification datum to an outlier cluster” as drafted, recites a mentally process as an evaluation or judgement. One can mentally determine which is the best cluster to organize the obtained data. This is also consistent with the Disclosure, Para. 0020, 0022 wherein the user can identify the output type of datum and map/classify against various groups stored in database.
“identify a first gap datum between the target status datum and the first identification datum” as drafted, recites a mentally process as an evaluation or judgement. One can mentally determine a first gap by comparing the target status datum and the first identification datum. This is also consistent with the Disclosure, Para. 0033 where “identifying the first gap comprises subtracting first identification datum 108 from second identification datum 112”, which falls under “mental process”.
“identify a second gap datum between the target status datum and the updated identification datum” as drafted, recites a mentally process as an evaluation or judgement. One can mentally determine second gap by comparing the target status datum and the updated identification datum. This is also consistent with the Disclosure, Para. 0033 where “Identifying the second gap includes subtracting second identification datum 112 from target status datum 118”, which falls under “mental process”.
“generate an updated hierarchical listing based at least on the second gap datum and the outlier cluster” as drafted, recites a mentally process as an evaluation or judgement. The act of “generate an updated hierarchical listing” based on the obtained data is categorized as mental process, such as merging data or manipulation data which can be performed in human mind of with a pen and paper. This is also consistent with Para. 0037 of the Disclosure wherein “determining the hierarchical listing of information gaps includes classifying an instance of first identification datum 108 to target status datum 118… determining the hierarchical listing of information gaps includes classifying first identification datum to a category selected from categories…”.
“generate an interface query data structure including an input field, wherein the interface query data structure configures a remote display device to” as drafted, recites a mentally process as an evaluation or judgement. The act of “generate an interface query data structure” based on obtained data is categorized as mental process. One can mentally create/generate a structure using pen and paper. This is also consistent with the Disclosure, Para. 0011 wherein the interface query data structure may be generated based on received "user data," defined as including historical data of the user.
Step 2A, Prong Two:
The claim recites additional elements such as:
The Apparatus comprising a processor, a memory with instruction, and the method is processed by "a processor", which is a high-level recitation of a generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
“receive a first identification datum from a user device at a first time; receive a target status datum from a database connected to the processor; receive an updated identification datum from the user device at a second time; receive the updated identification datum using the input field; and display the updated hierarchical listing” are considered insignificant extra-solution activity as retrieval/receiving of data (i.e. mere data gathering) such as 'obtaining information' and does not provide integration into a practical application. Receiving updated datums by an input field and displaying a list are human activities that can be performed entirely in the human mind or with a pen and paper.
Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
In this case, the "receiving… displaying… “by a computer system” are identified as insignificant extra-solution activity above when re-evaluated these elements are well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II),' "i. 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); "computer-implemented", and performed by "one or more processors", a system includes memory storing instruction coupled to a processor, are considered insignificant extra- solution activity, and do not take the claim limitations out of the mental processes grouping. See MPEP - 2106.05(g) ("whether the limitation is significant").
Accordingly, the additional limitations are not providing significantly more than the
judicial exception. Looking at the claim as a whole does not change this conclusion and
therefore, the claim is ineligible.
The dependent claims 2, 12 includes “wherein receiving the target status datum further comprises: scoring, using the machine learning model, the hierarchical listing of information gaps by applying an algorithmic model built from a historical dataset, wherein: algorithmic model is applied to a new dataset and is configured to track trends associated with at least the updated identification datum; and the hierarchical listing is configured to be scored between a minimum value and a maximum value”, as drafted this recites a mentally performable process as an evaluation or judgement. Scoring a listing of information gaps and applying an algorithmic model to calculate values is a mathematical process. Merely stating that this algorithmic scoring and tracking is performed "using a machine learning model" or on a "new dataset" is generally considered to be routine, conventional computer activity.
The dependent claim 3 – 4, 13 – 14, includes “wherein the interface query data structure further configures the remote display device to display an information gap assessment area, wherein the information gap assessment area comprises a human-interactive portion comprising a query for a human to provide feedback on a form of input”, as drafted this recites a mentally performable process as an evaluation or judgement. Presenting a query to a human and asking for feedback, assessing an information gap, and taking user input fall under “mental process”. Merely configuring a generic user interface, display, or data structure to perform the abstract idea of "asking for human feedback" does not transform the abstract idea into a patent-eligible invention.
The dependent claims 5, 15 includes “wherein the first identification datum is received from one or more web trackers configured to track activity of a user on the internet”, as drafted this recites a mentally performable process. According to the Supreme Court's Alice framework, tracking user activity and collecting data are considered unpatentable "mental processes".
The dependent claims 6 – 7, 16 – 17, includes “wherein the first identification datum is received from one or more data scrapers; wherein the one or more data scrapers are configured to gather data from one or more of a user's social media profiles”, as drafted this recites a mentally performable process. The act of collecting information, analyzing data, and categorizing it corresponds to tasks that a human could perform in their mind or with a pen and paper. Merely instructing a computer or a "data scraper" to perform this data-gathering function using generic, conventional technology does not transform the abstract idea into a patent-eligible invention.
The dependent claims 8, 18, includes “wherein generating the interface query data structure further comprises: retrieving data describing attributes of a user from a database communicatively connected to the processor; and generating the interface query data structure based on the data describing attributes of the user, wherein generating the interface query data structure further comprises: determining a norm from the first gap datum to the second gap datum; and configuring the remote display device to display a representation of the norm”, as drafted, recites a mentally process as an evaluation or judgement. "Determining a norm from the first gap datum to the second gap datum" is purely mathematical or logical data manipulation, which can be performed by human using pen and paper. Calculating is implemented as a mathematical, mental, or computerized process, making it a mathematical concept.
"Configuring the remote display device to display a representation of the norm" is treated as the generic presentation of data, which courts (such as in Electric Power Group) have ruled is abstract.
Dependent claims 9 – 10, 19 - 20 include “wherein the remote display device comprises a smartphone; wherein the first identification datum comprises a type indicator value”, as drafted, recites a mentally process as an evaluation or judgement. Using a smartphone for displaying and the type indicator is just a concept being categorized in the mind.
Claims 1 - 10, Applicant claims the abstract idea on an apparatus with processor and memory with instructions executed by processors to carry-out the method as in claim 11, without adding further limitations that amount to more than generally linking the use of the exception to a particular technological environment. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components to "receiving…classify…identify…generate" do not impose any meaningful limit on the computer implementation of the abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea).
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. The claims are not patent eligible.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAM LINH T NGUYEN whose telephone number is (571)272-4024. The examiner can normally be reached M-F: 7:00 - 3:00 pm.
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/CAM LINH T NGUYEN/Primary Examiner, Art Unit 2161
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