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 action is in response to the preliminary amendment filed June 23, 2026. Claims 16-35 are pending and examined.
Specification
Applicant is required to update the status (pending, allowed, etc.) of all parent priority applications in the first line of the specification. The status of all citations of US filed applications in the specification should also be updated where appropriate.
Information Disclosure Statement
An initialed and dated copy of Applicant’s IDS form 1449 filed 04/15/2026, is attached to the instant Office action.
Claim Rejections - 35 USC § 101 Utility
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 16–35 are rejected under 35 U.S.C. § 101 because 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.
In sum, claims 16–35 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception to patentability (i.e., a law of nature, a natural phenomenon, or an abstract idea) and do not include an inventive concept that is something “significantly more” than the judicial exception under the January 2019 patentable subject matter eligibility guidance (2019 PEG) analysis which follows.
Under the 2019 PEG step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying step 1 of the analysis for patentable subject matter to the claims, it is determined that the claims are directed to the statutory category of a process (claims 16–23), a machine (claims 24–31) and a manufacture (claims 32–35), where the machine and manufacture are substantially directed to the subject matter of the process. (See, e.g., MPEP §2106.03). Therefore, we proceed to step 2A, Prong 1.
Under the 2019 PEG step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability. Here, the claims recite the abstract idea of determining a suitable time interval for obtaining user consent to complete an action:
determining, by a processor, a first time interval during which a first probability of a user providing consent to complete the action is greater than the user not providing the consent to complete the action, using a first method comprising:
determining the first time interval using an outcome of one or more decisions of a decision tree, each outcome of a decision corresponding to a value of an attribute of the user, wherein the attribute is selected based on historical data related to an availability of different users, during certain time intervals, to provide the consent to complete the action, and wherein the one or more decisions of the decision tree and an order in which the decisions are arranged within the decision tree are selected based on the historical data;
upon determining that the user did not provide the consent during the first time interval, determining, by the processor, a second time interval during which a second probability of the user providing the consent to complete the action is greater than the user not providing the consent to complete the action, wherein the second time interval is selected from a plurality of time intervals ranked based on probabilities determined using the decision tree or a decision tree trained using machine learning based on the historical data; and
upon the user providing the consent during either the first time interval or the second time interval, completing, by the processor, the action in a corresponding time interval in which the consent is available.
Here, the recited abstract idea falls within one or more of the three enumerated 2019 PEG categories of patent ineligible subject matter, to wit: the category of certain methods of organizing human activity, which includes commercial or legal interactions (e.g., such as in the case marketing picking the optimal time to ask to complete an action is a form of marketing).
Under the 2019 PEG step 2A, Prong 2 analysis, the identified abstract idea to which the claim is directed does not include limitations that integrate the abstract idea into a practical application, since the recited features of the abstract idea are being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. (See, e.g., MPEP §2106.05(f)). Therefore, the claim is directed to an abstract idea.
Under the 2019 PEG step 2B analysis, the additional elements are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea. (i.e., an innovative concept). Here, the additional elements, such as: a “processor” do not amount to an innovative concept since, as stated above in the step 2A, Prong 2 analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer or computing device and/or via software programming. (See, e.g., MPEP §2106.05(f)). The additional elements are specified at a high level of generality to simply implement the abstract idea and are not themselves being technologically improved. (See, e.g., MPEP §2106.05 I.A.); (see also, paragraph [0003] of the specification). Independent claim 16 is nearly identical to independent claims 24 and 32 and so the analysis for claim 16 also applies to claims 24 and 32.
Dependent claims 17-23, 25–31, and 33–35 have all been considered and do not integrate the abstract idea into a practical application. Dependent claims 17, 25, and 33 are substantially similarly and recite limitations that further define the abstract idea noted in claim 16 as they describe wherein the first probability is higher than the second probability.. Dependent claims 18, and 26 are substantially similarly and recite limitations that further define the abstract idea noted in claim 16 as they describe determining a value of one or more personal attributes of the user, and determining the first time interval or the second time interval based on the value of the one or more personal attributes of the user. Dependent claims 19 and 27 are substantially similarly and both recite limitations that further define the abstract idea noted in claim 16 as they describe wherein the one or more personal attributes comprise one or more of: an age of the user, a gender of the user, a marital status of the user, an education level of the user, or a work occupancy of the user. Dependent claims 20 and 31 are substantially similarly and both recite limitations that further define the abstract idea noted in claim 16 as they describe determining a value of one or more attributes of the user, wherein the one or more attributes includes an indicator of a preferred payment instrument of the user. Dependent claims 21, 29, and 34 are substantially similarly and both recite limitations that further define the abstract idea noted in claim 16 as they describe determining, using the decision tree, whether a portable communications device associated with the user is likely to be located at a permitted location during the selected time interval and, based on the determination, requesting, by the processor, the consent from the user to complete the action. Dependent claims 22, 30, and 35 are substantially similarly and both recite limitations that further define the abstract idea noted in claim 16 as they describe determining, using historical device-status data, a likelihood that the portable communications device will be switched on in the permitted location during the first time interval or the second time interval based on the time interval during which the consent is available to complete the action.
The additional elements of the dependent claims merely refine and further limit the abstract idea of the independent claims and do not add any feature that is an “inventive concept” which cures the deficiencies of their respective parent claim under the 2019 PEG analysis. None of the dependent claims considered individually, including their respective limitations, include an “inventive concept” of some additional element or combination of elements sufficient to ensure that the claims in practice amount to something “significantly more” than patent-ineligible subject matter to which the claims are directed.
The elements of the instant process steps when taken in combination do not offer substantially more than the sum of the functions of the elements when each is taken alone. The claims as a whole, do not amount to significantly more than the abstract idea itself because the claims do not effect an improvement to another technology or technical field (e.g., the field of computer coding technology is not being improved); the claims do not amount to an improvement to the functioning of an electronic device itself which implements the abstract idea (e.g., the general purpose computer and/or the computer system which implements the process are not made more efficient or technologically improved); the claims do not perform a transformation or reduction of a particular article to a different state or thing (i.e., the claims do not use the abstract idea in the claimed process to bring about a physical change. See, e.g., Diamond v. Diehr, 450 U.S. 175 (1981), where a physical change, and thus patentability, was imparted by the claimed process; contrast, Parker v. Flook, 437 U.S. 584 (1978), where a physical change, and thus patentability, was not imparted by the claimed process); and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment (e.g., simply claiming the use of a computer and/or computer system to implement the abstract idea).
Conclusion
Any inquiry concerning this communication from the examiner should be directed to Scott S. Trotter, whose telephone number is 571-272-7366. The examiner can normally be reached on 8:30 AM – 5:00 PM, M-F.
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, Matthew Gart, can be reached on 571-272-3955.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
The fax phone number for the organization where this application or proceeding is assigned are as follows:
(571) 273-8300 (Official Communications; including After Final Communications labeled “BOX AF”)
(571) 273-7366 (Draft Communications)
/SCOTT S TROTTER/Primary Examiner, Art Unit 3696
Prosecution Insights