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 .
Response to Amendment
The Amendment filed on 10 November 2025 has been entered. The following is in reply to the Amendments and Arguments.
Claims amended: 1, 9, 17
Claims cancelled: none
Claims added: none
Claims currently pending: 1-20
Response to Arguments
Applicant, in the “Status of the Claims” section, presents opening remarks regarding the disposition of the claims and the amendments to the claims. As no specific argument is raised in this/these section(s) with respect to the instant application, no rebuttal is required.
Applicant, in the “Prior Rejections Under 35 U.S.C. 112” section, argues that amendments made to claim 1 correct the antecedent issue noted by the Examiner in the previous Office action. Applicant states that the claims were amended to overcome these grounds of rejection, but edit markings were absent in the noted section of the claims, but the edit appears to have been made. Examiner recommends Applicant carefully inspect the claim language for other potential changes that were not marked as such. The grounds of rejection are herein withdrawn noting that the subject claim language has been corrected.
Applicant, in the “Rejection for Double Patenting” section, states that a Terminal Disclaimer has been filed with respect to U.S. Patent No. 11,790,359 B2 and that “The ‘055 patent has a Terminal Disclaimer to the ‘359 patent”. Examiner believes this to be a bona fide attempt to respond to the grounds of rejection. However, the Office does not have a record of a filing of a Terminal Disclaimer in this application to either the ‘359 patent or the ‘055 patent. Examiner requests that the Applicant correct this discrepancy. The grounds of rejection with respect to double patenting is herein maintained until such a correction is made, albeit updated to reflect Applicant’s amendments to the claims. Examiner suggests Applicant contact the Examiner should there be any questions related to filing Terminal Disclaimers in the instant application.
Applicant, in the “Rejection Under 35 U.S.C. 101” section, notes that the claims in application 18/487,915 (U.S. Patent 12,243,055) were found to have “met the Alice/Mayo styled requirements of 35 U.S.C. 101” due to the presence of a “hash IP address”, which has now been amended into the claims. As noted in the previously issued Advisory action, Examiner does not find this amended feature to limit the practice of the abstract idea to a practical application. Applicant then further argues that because an IP address was not available in the same time frame (the 1950’s and 1960’s) noted by Examiner as establishing hashing of data, the claims represent an integration of the abstract idea into a practical application. Examiner disagrees to this notion as a well-understood, routine, and conventional technique (i.e., hashing) does not become a practical application merely by the application to a new type of data. In the instant application, the application of a hashing function to a user’s identification, even an IP address, is a well-understood, routine and conventional. This is made evident in at least Marsh as noted below in list of references cited, but not relied upon. Additionally, Applicant’s remarks do not directly insist that the rationale found in allowing application 18/487,915, but appear to suggest that this should be weighed in the analysis performed in the instant application. Examiner notes that no one Examiner’s response in an Office action sets precedent and that analysis under 35 U.S.C. § 101 has been updated continuously as court decisions are made public and incorporated into the MPEP. As such, the Examiner’s statements in the ‘915 application are not precedential and do not bind the Office in the instant application.
Applicant, on page 19, notes that “there are no pending rejections of the prior art rejections of the claims under 35 U.S.C. 102 or 103”. While an absence of prior art may be a factor weighing in favor of a finding of eligible subject matter under 35 U.S.C. § 101, such a factor is certainly not definitive. Examiner does not confuse analysis under 35 U.S.C. § 102&103 with that under 35 U.S.C. § 101. Under 35 U.S.C. § 101, the claims are examined on their face and not on a direct comparison to prior art. Although the Court in Alice indicates examples or illustrations of the abstract idea found there, the Examiner notes that the court bases their decision on analogy to other cases (“It follows from our prior cases, and Bilski in particular, that the claims at issue here are directed to an abstract idea", Alice, page 9) and that the claims are found “[o]n their face” to be directed to the abstract idea. The Alice Court does not appear to conflate 102 or 103 analysis with the 101 analysis they perform, the Court appears to merely use cited references to illustrate the idea, not base their finding on the references - in fact, two of the references cited appear to post-date the patents at question in Alice by some time. As further support for this, the Examiner notes that Ultramercial, Inc. v. Hulu, LLC, 112 USPQ2d 1750, 1754 (Fed. Cir. 2014) indicates that Ultramercial argued that evidentiary support was required as a basis for an abstract idea ("[i]n other words, Ultramercial argues that the Supreme Court directs us to use a type of 103 analysis..."); however, the court agrees with WildTangent that analysis is based on the claims themselves. As such, this argument is unpersuasive.
Applicant does not present substantive argument in the “Potentially Allowable Subject Matter” and “Conclusion” sections. As no specific argument is raised in this/these section(s) with respect to the instant application, no rebuttal is required.
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 claim 1 of U.S. Patent No. 12,243,055 B2 in view of Protheroe et al. (Pub. #: US 2008/0275753 A1) in view of Mohan (Pub. #: US 2005/0192863 A1).
A computerized method for combining real-time behavior data regarding the interaction of a customer who is also a consumer with a webpage with previously-modeled data to prioritize media content to be delivered in real-time via the internet to the customer, the method comprising:
receiving financial transaction data and a unique customer identification code data from an export system of a financial institution, wherein the financial transaction data is associated with the unique customer identification code data, and wherein the unique customer identification code data and the financial transaction data do not contain information that is traceable to the identity of a consumer;
and a third party advertisement provider identification code data associated with a consumer user from a content webpage, with which the user is interacting by direct access over the internet, the webpage being generally directly accessible for access and use by consumer users who are members of the public at large;
wherein the unique customer identification code data and the advertisement provider identification code data are anonymous codings, and wherein the advertisement provider identification code data is linked to the unique customer identification code data for the consumer by the one or more processors;
associated, by one or more processors, the advertisement provider identification code data with the unique customer identification code data received from the financial institution and the financial transaction data associed with the unique customer identification code data, wherein the advertisement provider identification code data and unique customer identification code data are associated in an information delivery provider database;
associating, by the one or more processors, the advertisement provider identification code data with a unique identifier associated with a computing device used by the consumer as a result of the computing device logging into the financial institution’s computer system;
receiving one or more target consumer criteria for identifying recipients of a targeted information;
(The above limitations are nearly identical to the limitations of allowed claim 1 of the ‘055 patent)
determining if the unique customer identification code data or the third party advertisement provider identification code data is known by a third party advertisement provider;
(Protheroe discloses displaying advertisements on a web page on the Internet in at least 0022, 0372 with the advertisements selected based upon information within a cookie on the page in at least 0373-0375. See also 0370 and 0371.)
requesting a consumer cache associated with the third party advertisement provider when the unique customer identification code data or the third party advertisement provider identification code data is known by a third party advertisement provider;
(See prose section below)
determining if the unique customer identification code data or the third party advertisement provider identification code data is included in the consumer cache;
(Protheroe: 0370-0375)
determining if the content webpage exists with at least one associated key lifestyle indicator data, the at least one key lifestyle indicator data including information indicative of the at least one characteristic of the user; obtaining a key lifestyle indicator data list associated with the content webpage when the content page exists with at least one key lifestyle indicator data;
(Protheroe: Figure 41, "[0345] Further yet, appended to the advertisement request script 601 may be end user attribute data 608 dynamically generated by the seller's web server. An example of such data may be geographic, demographic, and/or behavioral information available to the seller by way of user registration, a seller controlled cookie on the user's system, or other methods utilized by web site operators for collecting end user information.", "[0347] More specifically, referring briefly to FIG. 40, the attribute data 608 may be an provided as an extension to the URL that includes identification of an attribute subset 612 representing those attributes 80 (selected from the attribute library 70) of the end user. For example, referring briefly to FIG. 6 in conjunction with FIG. 40, the end user may be a male, 18 to 30, income 30K to 60K, in New England, US-as such, attribute index numbers 1, 10, 100, 103 and 208 may represent the attribute data 608.")
appending the key lifestyle indicator data list with the key lifestyle indicator data of the content webpage; and presenting media content on the content webpage based on the appended key lifestyle indicator data list to the consumer user to induce the consumer user to purchase products or services that are the subject of the media content;
(Protheroe discloses selecting advertisements in response to an advertisement request generated from a user viewing a webpage wherein the request associates "context" such as "context classification" (i.e., key lifestyle indicator data) of the web page with the request in at least 0358-0371. See also Figure 41, 0036-0039, 0371-0375. Protheroe discloses that the content sent to the user could be an advertisement in at least 0358 which constitutes "to induce the consumer user to purchase products or services that are the subject of the media content". Examiner notes that the language of "to induce the consumer user to purchase products or services that are the subject of the media content" represents intended use or effects of the structure of the invention and is afforded limited patentable weight.)
wherein the advertisement provider identification code is a hashed IP address of the computing device; and wherein the IP address is not retained in the information delivery provider database and cannot be written to a disk or stored in a database operated by the advertisement delivery provider.
(See Claims 1 and 20 of the ‘055 patent. Hashing is a well-understood, routine, and conventional technique found within the computing arts and it’s properties of anonymization are well understood.)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the matching of ADIC and UCIC of the ‘055 patent with the features of key lifestyle indicators of Protheroe. Motivation to combine the ‘055 patent with Protheroe comes from desire to provide user’s with the most pertinent advertisements based on as much data regarding the user as can be gathered from their usage of network connected systems (Protheroe: 0014-0021).
As for, "requesting a consumer cache associated with the third party advertisement provider when the unique customer identification code data or the third party advertisement provider identification code data is known by a third party advertisement provider;": Protheroe teaches the use of cookies in at least 0345 and a universal cookie in at least 0370 controlled by the "order fulfillment system" (i.e. a third party). Protheroe teaches the user information stored in the cookie itself in at least 0370-0375. ‘055 in view of Protheroe not appear to retrieving the store consumer cache from a server upon determining the 3rd party id exists. However, Mohan teaches receiving a user identifier from a cookie and querying a database if the user identification is found and retrieving user information in at least Figure 2, 0058.
Since each element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself-that is in the substitution of the cookie containing a user ID as taught by Mohan for the unspecified cookie-based identification of Protheroe in the combination of ‘055 in view of Protheroe. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
Claim 2:
transmitting the updated key lifestyle indicator data list to the consumer cache, the consumer cache including the media displayed on the content webpage.
(Protheroe: Figure 41, "[0345] Further yet, appended to the advertisement request script 601 may be end user attribute data 608 dynamically generated by the seller's web server. An example of such data may be geographic, demographic, and/or behavioral information available to the seller by way of user registration, a seller controlled cookie on the user's system, or other methods utilized by web site operators for collecting end user information.", "[0347] More specifically, referring briefly to FIG. 40, the attribute data 608 may be an provided as an extension to the URL that includes identification of an attribute subset 612 representing those attributes 80 (selected from the attribute library 70) of the end user. For example, referring briefly to FIG. 6 in conjunction with FIG. 40, the end user may be a male, 18 to 30, income 30K to 60K, in New England, US-as such, attribute index numbers 1, 10, 100, 103 and 208 may represent the attribute data 608.")
Claim 3:
generating an anonymous third party advertisement provider identification code when the unique customer identification code data or the third party advertisement provider identification code data is unknown by a third party advertisement provider.
Protheroe discloses a 3rd party advertisement provider identification codes with the teaching of cookies in at least 0345 and a universal cookie in at least 0370 controlled by the "order fulfillment system". Protheroe does not appear to specify generating anonymous identification codes. However, Mohan teaches determining a user identifier if one is not found in at least Figure 3 and 0062 and that the user identifiers can be anonymous in at least Figure 9, 0022, 0045, and 0069 and storing the identifier in the user database (i.e. consumer cache) in at least item 316 of Figure 3 and 0064 and 0065.
Since each element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself-that is in the substitution of the cookie containing an anonymous user ID as taught by Mohan for the unspecified cookie-based identification of Protheroe. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
Claim 4:
transmitting the anonymous third party advertisement provider identification code data to the consumer cache.
Protheroe discloses a 3rd party advertisement provider identification codes with the teaching of cookies in at least 0345 and a universal cookie in at least 0370 controlled by the "order fulfillment system". Protheroe does not appear to specify generating anonymous identification codes. However, Mohan teaches determining a user identifier if one is not found in at least Figure 3 and 0062 and that the user identifiers can be anonymous in at least Figure 9, 0022, 0045, and 0069 and storing the identifier in the user database (i.e. consumer cache) in at least item 316 of Figure 3 and 0064 and 0065.
Since each element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself-that is in the substitution of the cookie containing an anonymous user ID as taught by Mohan for the unspecified cookie-based identification of Protheroe. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
Claim 5:
transmitting at least one of the unique customer identification code data and the anonymous third party advertisement provider identification code data to the consumer cache when the unique customer identification code data or the anonymous third party advertisement provider identification code data is not included in the consumer cache.
Protheroe teaches a 3rd party advertisement provider identification codes with the teaching of cookies in at least 0345 and a universal cookie in at least 0370 controlled by the "order fulfillment system". Protheroe does not appear to specify generating anonymous identification codes. However, Mohan teaches determining a user identifier if one is not found in at least Figure 3 and 0062 and that the user identifiers can be anonymous in at least Figure 9, 0022, 0045, and 0069 and storing the identifier in the user database (i.e. consumer cache) in at least item 316 of Figure 3 and 0064 and 0065.
Since each element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself-that is in the substitution of the cookie containing an anonymous user ID as taught by Mohan for the unspecified cookie-based identification of Protheroe. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
Claim 6:
logging that the content webpage does not include at least one associated key lifestyle indicator data when the content webpage does not include the at least one associated key lifestyle indicator data.
(Protheroe: [0345]-[0350])
Claim 7:
transmitting the updated key lifestyle indicator data list to the consumer cache.
(Protheroe: Figure 41, "[0345] Further yet, appended to the advertisement request script 601 may be end user attribute data 608 dynamically generated by the seller's web server. An example of such data may be geographic, demographic, and/or behavioral information available to the seller by way of user registration, a seller controlled cookie on the user's system, or other methods utilized by web site operators for collecting end user information.", "[0347] More specifically, referring briefly to FIG. 40, the attribute data 608 may be an provided as an extension to the URL that includes identification of an attribute subset 612 representing those attributes 80 (selected from the attribute library 70) of the end user. For example, referring briefly to FIG. 6 in conjunction with FIG. 40, the end user may be a male, 18 to 30, income 30K to 60K, in New England, US-as such, attribute index numbers 1, 10, 100, 103 and 208 may represent the attribute data 608.")
Claim 8:
wherein the key lifestyle indicator data list is appended automatically in real time.
(Protheroe: Figure 41, "[0345] Further yet, appended to the advertisement request script 601 may be end user attribute data 608 dynamically generated by the seller's web server. An example of such data may be geographic, demographic, and/or behavioral information available to the seller by way of user registration, a seller controlled cookie on the user's system, or other methods utilized by web site operators for collecting end user information.", "[0347] More specifically, referring briefly to FIG. 40, the attribute data 608 may be an provided as an extension to the URL that includes identification of an attribute subset 612 representing those attributes 80 (selected from the attribute library 70) of the end user. For example, referring briefly to FIG. 6 in conjunction with FIG. 40, the end user may be a male, 18 to 30, income 30K to 60K, in New England, US-as such, attribute index numbers 1, 10, 100, 103 and 208 may represent the attribute data 608.")
Claims 9-20:
These claims represent system embodiments of claims 1-8 with substantially similar language.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,790,359 B2 in view of Protheroe et al. (Pub. #: US 2008/0275753 A1) in view of Mohan (Pub. #: US 2005/0192863 A1). The content of the ‘359 patent is substantially similar to that of the ‘055 patent above. The ‘055 patent has a Terminal Disclaimer to the ‘359 patent.
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 a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 1-8 are directed towards a method. Claims 9-16 and 17-20 are directed towards systems. Thus, these claims, on their face, are directed to one of the statutory categories of 35 U.S.C. § 101.
Step 2A - Prong One: As per MPEP 2106.04, Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon. In Prong One examiners evaluate whether the claim(s) recites a judicial exception; that is, whether the claim(s) set forth or describe a law of nature, natural phenomenon, or abstract idea.
Claim 1 is presented here as a representative claim for specific analysis (The underlined claim terms here are interpreted as additional elements beyond the abstract idea and are further analyzed under Step 2A - Prong Two):
A computerized method for combining real-time behavior data regarding the interaction of a customer who is also a consumer with a webpage with previously-modeled data to prioritize media content to be delivered in real-time via the internet to the customer, the method comprising:
receiving financial transaction data and a unique customer identification code data from an export system of a financial institution, wherein the financial transaction data is associated with the unique customer identification code data, and wherein the unique customer identification code data and the financial transaction data do not contain information that is traceable to the identity of a consumer;
and a third party advertisement provider identification code data associated with a consumer user from a content webpage, with which the user is interacting by direct access over the internet, the webpage being generally directly accessible for access and use by consumer users who are members of the public at large;
wherein the unique customer identification code data and the advertisement provider identification code data are anonymous codings, and wherein the advertisement provider identification code data is linked to the unique customer identification code data for the consumer by the one or more processors;
associated, by one or more processors, the advertisement provider identification code data with the unique customer identification code data received from the financial institution and the financial transaction data associated with the unique customer identification code data, wherein the advertisement provider identification code data and unique customer identification code data are associated in an information delivery provider database;
associating, by the one or more processors, the advertisement provider identification code data with a unique identifier associated with a computing device used by the consumer as a result of the computing device logging into the financial institution’s computer system;
receiving one or more target consumer criteria for identifying recipients of a targeted information;
determining if the unique customer identification code data or the third party advertisement provider identification code data is known by a third party advertisement provider;
requesting a consumer cache associated with the third party advertisement provider when the unique customer identification code data or the third party advertisement provider identification code data is known by a third party advertisement provider;
determining if the unique customer identification code data or the third party advertisement provider identification code data is included in the consumer cache;
determining if the content webpage exists with at least one associated key lifestyle indicator data, the at least one key lifestyle indicator data including information indicative of the at least one characteristic of the user; obtaining a key lifestyle indicator data list associated with the content webpage when the content page exists with at least one key lifestyle indicator data;
appending the key lifestyle indicator data list with the key lifestyle indicator data of the content webpage; and presenting media content on the content webpage based on the appended key lifestyle indicator data list to the consumer user to induce the consumer user to purchase products or services that are the subject of the media content;
wherein the advertisement provider identification code is a hashed IP address of the computing device;
and wherein the IP address is not retained in the information delivery provider database and cannot be written to a disk or stored in a database operated by the advertisement delivery provider
The claims here are based on the recitation of an abstract idea (i.e. recitation other than the additional elements delineated here with underlining and further addressed per Step 2B - Prong Two). The claims recite the abstract idea of presenting advertisements to a user according to characteristics assigned to content the user is viewing which is found within falls within certain methods of organizing human activity.
The phrase "certain methods of organizing human activity" applies to fundamental economic principles or practices including hedging insurance, mitigating risk; commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors business relations; managing personal behavior or relationships or interactions between people including social activities teaching, and following rules or instructions. Refer to MPEP 2106.04(a)(2) II. A-C.
The Remaining Claims: The analysis of claim 1 is applicable to the additional independent claims 9 and 17 as these additional claims comprise alternate embodiments that implement the same steps of the method of the claim analyzed above. The additional independent claims recite the same additional elements as the claim analyzed above and/or fail to recite any additional elements except claims 9 and 17 add "at least one database", and "at least one processor". The dependent claims recite the same additional elements as the parent claim(s) and/or fail to recite any additional elements.
The dependent claims further reiterate the same abstract idea with further embellishments: claims 2, 7, 10 and 15 cache the updated KLI list; claims 3, 11 and 18 generate a new identifier if the system does not currently identify the user; claims 4, 5, 12, and 13 cache the identifier; claims 6, 14 and 19 mark the webpage as not having KLI's if they are not found; claims 8, 16 and 20 update the KLI list in real-time.
Therefore, the identified claims fall within the subject matter groupings of abstract ideas enumerated in MPEP 2106.04(a)(2). Thus, the analysis proceeds to Prong Two to evaluate whether the claim integrates the abstract idea into a practical application.
Step 2A - Prong Two: As per MPEP 2106.04.II.A.2, Prong Two determines if the claim(s) recite additional elements that integrate the judicial exception into a practical application.
The claims offer the additional elements of: computerized, webpage, the internet, a computing device, at least one database, a disk, IP address, and at least one processor. It would have been readily apparent to one having ordinary skill in the art (PHOSITA) at the time the invention was filed that the additional elements represent generic computing devices. The additional element(s) are simply utilized as generic computing tools to implement the abstract idea, functioning as mere instructions to apply the exception as noted in MPEP 2106.05(f). Paragraph 00159 of the specification indicates that "the system 800 can include other components that are well-known" including "processors" which clearly indicates that the computing elements are generic computing devices. The specification, in paragraph 00141, indicates that the database is a generic database used for storing "information". Tying the implementation of the abstract idea to "the internet" and using a "webpage" amounts to generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)). Furthermore, the claims appear to be a solution to a commercial/business problem of presenting the most pertinent advertisements to a user based upon the content the user is consuming.
The claims offer the additional elements of: receiving financial transaction data and a unique customer identification code data from an export system of a financial institution. The gathering of data represents insignificant extra-solution activity that comprises mere data gathering. The gathering of data represents insignificant extra-solution activity that comprises mere data gathering. The additional element(s) represent insignificant extra-solution activity incidental to the primary process or product that are merely a nominal or tangential addition to the claim as noted in MPEP 2106.05(g).
The ordered combination offers nothing more than employing a generic configuration of computer devices and computer functions. Therefore, the claims do not amount to a practical application, similar to how limiting the abstract idea in Flook to petrochemical and oil-refining industries was insufficient.
Step 2B: As per MPEP 2106.05, the additional elements are analyzed, both individually and in combination, to determine whether an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim, as a whole, amounts to significantly more than the judicial exception itself.
As stated above, the claims contain the additional elements: receiving financial transaction data and a unique customer identification code data from an export system of a financial institution. The gathering of data represents insignificant extra-solution activity that comprises mere data gathering. The gathering of data represents insignificant extra-solution activity that comprises mere data gathering. The additional element(s) represent insignificant extra-solution activity incidental to the primary process or product that are merely a nominal or tangential addition to the claim as noted in MPEP 2106.05(g). The receiving of “financial transaction data and a unique customer identification code” represents elements similar to 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).
References of Record but not Applied in the Current Grounds of Rejection
The prior art listed below is made of record as considered pertinent to applicant's disclosure and is not relied upon in the grounds of rejection presented in this Office action. Those starred with '*' were added to this list in this Office action. Those without "*" were added in a previous Office action and are not repeated on a PTO-892 Notice of References Cited form, but are maintained herein for informational purposes only.
* Marsh, Christopher (Pub. #: US 2007/0033531 A1) discloses a system for tracking users in an online context via the use of a hash of a user’s identifying information that includes the user’s IP address (see 0120).
Rudin et al. (Pub. #: US 2004/0230593 A1) discloses a system for maintaining anonymity between several advertising parties while allowing for personalized advertisement selection.
Dilling et al. (GB 2468414 A) discloses a system for advertising using a third party or "universal" advertising identifier that may also be associated with a platform-specific ad tag or cookie.
The Wikipedia article "Magic Cookie" describes use of a "token or short packet of data" for use in identifying users to remote systems.
Potentially Allowable Subject Matter
Claim(s) 1-20, as currently written, have overcome the prior art. However, the grounds of rejection under 35 U.S.C. § 101 and double patenting are currently pending and represent a barrier to allowability.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT SNIDER whose telephone number is (571)272-9604. The examiner can normally be reached M-W: 9:00-4:30 Mountain (11:00-6:30 Eastern).
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/SCOTT SNIDER/Examiner, Art Unit 3621