DETAILED ACTION
The present application, filed on 3/19/2018 is being examined under the pre-AIA first inventor to invent provisions.
The following is a FINAL Office Action in response to Applicant’s amendments filed on 3/23/2026.
a. Claims 1, 19, 20 are amended
Overall, claims 1-20 are pending and have been considered below.
Claim Rejections - 35 USC § 101
35 USC 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 USC 101 because the claimed invention is not directed to patent eligible subject matter. The claimed matter is directed to a judicial exception (i.e. an abstract idea not integrated into a practical application) without significantly more.
Per Step 1 and Step 2A of the multi-step eligibility analysis, independent Claim 1, Claim 19 and Claim 20 and the therefrom dependent claims are directed respectively to computer executable instructions stored on a non-transitory storage medium, to a computer implemented method and to a system. Thus, on its face, each such independent claim and the therefrom dependent claims are directed to a statutory category of invention.
However, claim 19, (which is repeated in Claims 1, 20) is rejected under 35 U.S.C. 101 because the claim is directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application. The claim recites: determining whether to prompt an action by a platform in connection with a mobile device; prompting the action by the platform in connection with the mobile device after the determining, wherein prompting comprises displaying the action on a lock screen of the mobile device. The limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers commercial activity, but for the recitation of generic computer components (“from a network server”).
That is, the drafted process is comparable to an advertising, marketing, sales activities or behaviors process, i.e. a process aimed at providing content (e.g. an advertisement as outlined by the applications specification and by figures 10-19) to a mobile device user. If a claim limitation, under its broadest reasonable interpretation, covers performance of limitations of agreements in form of contracts, legal obligations, advertising, marketing, sales activities or behaviors, business relationships, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity – Commercial or Legal Interactions (e.g. agreements in form of contracts, legal obligations, advertising, marketing, sales activities or behaviors, business relationships)” grouping of abstract ideas.
Accordingly, the claim recites an abstract idea.
Alternatively, the limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers performance of the limitations mentally or manually, but for the recitation of generic computer components. That is, other than reciting “by the one or more processors,” nothing in the claim element precludes the steps from practically being performed mentally or manually by a human. For example, “receiving action criteria”, as drafted, in the context of this claim, encompasses the user manually or mentally receiving a piece of information, without physical aid. Further, “receiving one piece of information”, as drafted, in the context of this claim, encompasses the user manually or mentally receiving a piece of information, without physical aid. Finally, “determining whether to prompt an action by the platform”, as drafted, in the context of this claim, encompasses the user manually or mentally making a decision, without physical aid. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, but for the recitation of generic computer components, then it falls within the “Mental Processes – Concepts Performed in the Human Mind (e.g. observation, evaluation, judgement, opinion)” grouping of abstract ideas. The use of a physical aid would not negate the mental nature of this limitation (see MPEP 2106.04(a)(2) iii B)
Accordingly, the claim recites an abstract idea.
This abstract idea is not integrated into a practical application. In particular, stripped of those claim elements that are directed to an abstract idea, (A) the remaining positively recited elements of the independent claims are directed to receiving action criteria utilizing a platform capable of presenting contextual advertising, receiving information based on user activity and preferences from an application. When considered individually, these additional claim elements represent general receipt and transmission claim elements that serve merely to implement the abstract idea using computer components performing computer functions. The steps only serve to automate the abstract idea. (MPEP 2106.05(f)) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
(C) Finally, the recited computing elements, i.e. a non-transitory computer-readable medium, a system, are recited at a high-level of generality (i.e. as a generic computing device performing generic computer functions of obtaining data, interpreting the obtained data and providing results), such that they amount to no more than mere instructions to apply the exception using generic computer components.
Accordingly, these additional claim elements do not integrate the abstract idea into a practical application, because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05 (a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05 (b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05 (c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05 (a) and the Vanda memo). Therefore, per Step 2A Prong Two, the claim is directed to an abstract idea not integrated into a practical application.
(A) Step 2B of the eligibility analysis concludes that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Stripped of those claim elements that are directed to an abstract idea, not integrated into a practical application, remaining elements of the independent claims are directed to receiving action criteria utilizing a platform capable of advertising, receiving information from an application. When considered individually, these additional claim elements represent general receipt and transmission claim elements that serve merely to implement the abstract idea using computer components performing computer functions. The steps only serve to automate the abstract idea. (MPEP 2106.05(f)) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
(C) Finally, the recited computing elements of the independent claims are: a non-transitory computer-readable medium, a system. When considered individually, these additional claim elements serve merely to implement the abstract idea using computer components performing computer functions. They do not constitute “Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”. (MPEP 2106.05(a)) It is readily apparent that the claim elements are not directed to any specific improvements of any of these areas.
When considered individually, these additional claim elements serve merely to implement the abstract idea using computer components performing computer functions. They do not constitute “Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”. (MPEP 2106.05(e)) It is readily apparent that the claim elements are not directed to any specific improvements of any of these areas.
When the independent claims are considered as a whole, as a combination, the claim elements noted above do not amount to any more than they amount to individually. The operations appear to merely apply the abstract concept to a technical environment in a very general sense – i.e. a computer receives information from another computer, processes that information and then sends a response based on processing results. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified as an abstract idea. Therefore, it is concluded that the elements of the independent claims are directed to one or more abstract ideas and do not amount to significantly more. (MPEP 2106.05)
Further, Step 2B of the analysis takes into consideration all dependent claims as well, both individually and as a whole, as a combination.
Dependent Claim 16 is not directed to any additional abstract ideas, but is directed to additional claim elements such as to determining whether to prompt an action by the platform. A close variation of this limitation has been analyzed in Step 2A Prong One and found to be directed to an abstract idea (see analysis at Step 2A Prong One).
Dependent Claims 2-15, 17-18 are not directed to any abstract ideas and are not directed to any additional non-abstract claim elements. Rather, these non-positively recited claims provide further descriptive limitations of elements, such as describing the nature, structure and/or content of the action criteria, the computer program product, the platform, the application, the mobile device, the device capable of display. However, these elements do not require any steps or functions to be performed and thus do not involve the use of any computing functions. While these descriptive elements may provide further helpful context for the claimed invention, these elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention.
Moreover, the claims in the instant application do not constitute significantly more also because the claims or claim elements only serve to implement the abstract idea using computer components to perform computing functions (Enfish, see MPEP 2106.05(a)). Specifically, the computing system encompasses general purpose hardware and software modules, as disclosed in the application specification in fig1, fig2 and [0026]-[0031], including among others network, client, server, CPU, ROM, RAM, i/o adapter, communication adaptor, user interface adapter, display adapter.
When the dependent claims are considered as a whole, as a combination, the additional elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense – i.e. a computer receives information from another computer, processes that information and then sends a response based on processing results. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified in the independent claims as an abstract idea. The fact that the computing devices are facilitating the abstract concept is not enough to confer statutory subject matter eligibility. In sum, the additional elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention. Therefore, it is concluded that the dependent claims of the instant application do not amount to significantly more either. (see MPEP 2106.05)
In sum, Claims 1-20 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Claim 19 is directed to non-statutory subject matter because the system disclosed is software per se. The applicant is advised to implement a particular hardware component such as a computer in the body of the claim language to the claimed system in order to overcome the rejections.
Claim 19 recite method directed to purely mental steps. In order for a method to be considered a "process" under §101, a claimed process must either: (1) be tied to another statutory class (such as a particular apparatus) or (2) transform underlying subject matter (such as an article or materials). Diamond v. Diehr, 450 U.S. 175, 184 (1981); Parker v. Flook, 437 U.S. 584, 588 n.9 (1978); Gottschalk v. Benson, 409 U.S. 63, 70 (1972); Cochrane v. Deener, 94 U.S. 780, 787-788 (1876). If neither of these requirements is met by the claim, the method is not a patent eligible process under §101 and is non-statutory subject matter. Thus, to qualify as a statutory process, the claim should positively recite the other statutory class (the thing or product) to which it is tied, for example, by identifying the apparatus that accomplishes the method steps, or positively recite the subject matter that is being transformed, for example, by identifying the material that is being changed to a different state. The applicant is advised to implement a particular apparatus such as a computer in the body of the claim language to perform the claimed method in order to overcome the rejections.
Claim Rejections - 35 USC § 103
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the difference between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
i. Determining the scope and contents of the prior art.
ii. Ascertaining the differences between the prior art and the claims at issue.
iii. Resolving the level of ordinary skill in the pertinent art.
iv. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 7-9, 11-16, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Soroca et al (US 2010/0094878), in view of Webb (US 2009/0006628).
Regarding Claims 1, 19, 20 – Soroca: A computer program product embodied on a non-transitory computer readable medium, comprising:
code for receiving action criteria utilizing a platform capable of presenting contextual advertising; {see at least [1446] In an example of financial consideration and sharing with a wireless operator, an ad server 3804 may request behavioral data for mobile users who routinely use their mobile communication device to access the wireless operator 108 network during weekday morning commuting hours; as further disclosed at fig2, rc214, [0167] retrieving initial results (reads on receiving action criteria), rc222, rc224, [0167] the results may trigger the posting of additional sponsor messages and advertisements}
code for receiving, by the platform from a network server, information based on user activity or user preferences from a master application; {see at least [0135] collecting user preference data and user activity data from the mobile subscriber data base}
code for determining whether to prompt an action by the platform in connection with a mobile device, based on the action criteria and the information. {see at least fig38A, rc3804, [1439]-[1440]; fig38B, [1453] In an example of using user behavioral profile data in ad targeting, an ad server 3804 may request a monetization platform server 3802 to provide behavioral information associated with users whose behavioral profile contains information that can be matched to criteria, such as users who have recently searched the internet using their mobile communication facility for a new wireless service plan. In the example, the monetization platform may analyze user behavioral profiles to determine that certain users meet these criteria. The monetization platform may select a portion of the information contained in the behavioral profiles of matching users and deliver the selected information to the ad server 3804 (determining whether to prompt an action, e.g. advertising)}
code for prompting the action by the platform in connection with the mobile device after the determining. {see at least fig38A. rc3810, [1451] publishers may provide ad spots (reads on prompting the action); [0111]-[0129] action commands … “purchase action command” … “result in actions such as purchases, registration, login, contact, service, repair, and the like.” … “action command associated with a result” …}
wherein prompting comprises displaying the action on a lock screen of the mobile device. {see at least fig11, [0367] sponsored and displayed on the mobile device (reads on displaying the action); [0118]-[0119] action command is presented on a display … scrolling the display}
Soroca does not disclose, however, Webb discloses:
when it is determined that a user of the mobile device is available to receive delivered content; and {see at least [0021]-[0022] status information indicates that the mobile device is available to receive advertising content (based on the broadest reservation requirement (see MPEP 2111) examiner interprets that “content” can be advertising content as well, as disclosed by the application specification and figures 10-19)}
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify Soroca to include the elements of Webb. One would have been motivated to do so, in order to provide the advertisement at the right time, i.e. when the user is available to see it. In the instant case, Soroca evidently discloses prompting an action on an advertising platform. Webb is merely relied upon to illustrate the functionality of determining if a user is available in the same or similar context. Since both prompting an action on an advertising platform, as well as determining if a user is available are implemented through well-known computer technologies in the same or similar context, combining their features as outlined above using such well-known computer technologies (i.e., conventional software/hardware configurations), would be reasonable, according to one of ordinary skill in the art. Moreover, since the elements disclosed by Soroca, as well as Webb would function in the same manner in combination as they do in their separate embodiments, it is concluded that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Soroca / Webb.
Regarding Claim 2 – Soroca, Webb discloses the limitations of Claim 1. Soroca further discloses:
wherein the action criteria involve at least one of aggregated data collected from a plurality of users, machine-related data, location data, payment data, social data, application usage data, event data, or search data. {see at least fig1, rc110, [0073] In embodiments, the wireless communication facility 104 may be linked to a locator facility 110 that generates information about the location of the user (including geographic location, proximity to other locations, network location, or other location information). The locator facility 110 may enable linkage of other information, such as information about a user query, with information about the user's geographic location at the time the query was initiated.}
Regarding Claim 3 – Soroca, Webb discloses the limitations of Claim 1. Soroca further discloses:
wherein the action includes at least one of an advertisement, a suggestion, or an output. {see at least fig38A, rc3804, rc3810, [1450] Other sources of financial consideration may include publishers 3810. An ad server 3804 may be associated with a publisher or communicate with a publisher 3810, such as content publishers 3810, who may wish to target their publications to users. All financial considerations as described herein may apply to publishers 3810. In an example, a publisher 3810, such as a game developer, may desire to target a newly developed game to an audience of mobile users who have played similar games.}
Regarding Claim 4 – Soroca, Webb discloses the limitations of Claim 1. Soroca further discloses:
wherein the computer program product is operable such that the action criteria is received from an advertiser and the action includes displaying an advisement. {see at least fig38A, rc3804, rc3810, [1450] Other sources of financial consideration may include publishers 3810. An ad server 3804 may be associated with a publisher or communicate with a publisher 3810, such as content publishers 3810, who may wish to target their publications to users. All financial considerations as described herein may apply to publishers 3810. In an example, a publisher 3810, such as a game developer, may desire to target a newly developed game to an audience of mobile users who have played similar games.}
Regarding Claim 7 – Soroca, Webb discloses the limitations of Claim 4. Soroca further discloses:
wherein the computer program product is operable such that the advertisement is displayed based on a location associated with the mobile device. {see at least fig1, rc110, [0073] In embodiments, the wireless communication facility 104 may be linked to a locator facility 110 that generates information about the location of the user (including geographic location, proximity to other locations, network location, or other location information). The locator facility 110 may enable linkage of other information, such as information about a user query, with information about the user's geographic location at the time the query was initiated.}
Regarding Claim 8 – Soroca, Webb discloses the limitations of Claim 4. Soroca further discloses:
wherein the computer program product is operable such that the advertisement is selected based on information provided by one or more feeder applications associated with the mobile device. {see at least [0106] Information stored locally that may facilitate a local search may originate from the user or an external source. The external source may be a network as herein described. The information from the network may include mobile content that has been provided to the mobile communication facility 102 as a response to a search query, as sponsored content associated with a web page, as an RSS feed, or other reasons. The information stored locally may be the content provided to the mobile communication facility 102 or it may be header data, metadata, or search query results such a list of websites; [0284], [0486]}
Regarding Claim 9 – Soroca, Webb discloses the limitations of Claim 4. Soroca further discloses:
wherein the computer program product is operable such that the information provided by the one or more feeder applications associated with the mobile device includes at least one of user personal information, purchase information, social network information, online retailer information, or mobile payment information. {see at least [0486] In embodiments, third-party pay-per-call inventory may be supplied to in the form of XML feeds, each of which returns specific results data on a per-query basis about the keyword match, the advertiser and ad information, bid price, and geographic filter settings. This information may then be parsed and packaged in a result set stacked on top of "natural" yellow page listings.}
Regarding Claim 11 – Soroca, Webb discloses the limitations of Claim 1. Soroca further discloses:
wherein the platform includes at least one of a social network platform or an operating system platform. {see at least [0950] In embodiments, a method and system may be provided for accessing, analyzing, and applying the usage of a mobile device to create and enhance the relationships within a social network. The system may access user specific usage patterns on the mobile communication facility, including, but not limited to, inbound calls, outbound calls, phonebook, or other information, to establish new connections and to augment the strength of existing connections in a social networking application. The information may be accessed, stored, and shared based on rules defined by a mobile communication facility user and/or mobile operator; [1018]}
Regarding Claim 12 – Soroca, Webb discloses the limitations of Claim 1. Soroca further discloses:
wherein the application is available via the platform. {see at least [0950] In embodiments, a method and system may be provided for accessing, analyzing, and applying the usage of a mobile device to create and enhance the relationships within a social network. The system may access user specific usage patterns on the mobile communication facility, including, but not limited to, inbound calls, outbound calls, phonebook, or other information, to establish new connections and to augment the strength of existing connections in a social networking application. The information may be accessed, stored, and shared based on rules defined by a mobile communication facility user and/or mobile operator; [1018]}
Regarding Claim 13 – Soroca, Webb discloses the limitations of Claim 1. Soroca further discloses:
wherein the application is available in connection with a machine. {see at least [0950] In embodiments, a method and system may be provided for accessing, analyzing, and applying the usage of a mobile device to create and enhance the relationships within a social network. The system may access user specific usage patterns on the mobile communication facility, including, but not limited to, inbound calls, outbound calls, phonebook, or other information, to establish new connections and to augment the strength of existing connections in a social networking application. The information may be accessed, stored, and shared based on rules defined by a mobile communication facility user and/or mobile operator; [1018] (system reads on machine, because no specific definition for “machine” has been provided by the application specification)}
Regarding Claim 14 – Soroca, Webb discloses the limitations of Claim 1. Soroca further discloses:
wherein the platform includes at least one of a social network platform or an operating system platform. {see at least [0950] In embodiments, a method and system may be provided for accessing, analyzing, and applying the usage of a mobile device to create and enhance the relationships within a social network. The system may access user specific usage patterns on the mobile communication facility, including, but not limited to, inbound calls, outbound calls, phonebook, or other information, to establish new connections and to augment the strength of existing connections in a social networking application. The information may be accessed, stored, and shared based on rules defined by a mobile communication facility user and/or mobile operator; [1018]}
Regarding Claim 15 – Soroca, Webb discloses the limitations of Claim 1. Soroca further discloses:
wherein the mobile device includes at least one of a cellular phone or a tablet. {see at least fig7A-fig7C, [0328] FIGS. 7A-7C illustrate various form factors of mobile communication facilities that may be used with the systems described herein. FIG. 7A illustrates a candy bar or open faced fixed cell phone. FIG. 7B illustrates a flip phone and FIG. 7C illustrates a slide phone.}
Regarding Claim 16 – Soroca, Webb discloses the limitations of Claim 1. Soroca further discloses: further comprising computer code for
determining whether to prompt an action by the platform in connection with device capable of display, based on a location associated with the mobile device. {see at least fig38A, rc3804, [1439]-[1440]; fig38B, [1453] In an example of using user behavioral profile data in ad targeting, an ad server 3804 may request a monetization platform server 3802 to provide behavioral information associated with users whose behavioral profile contains information that can be matched to criteria, such as users who have recently searched the internet using their mobile communication facility for a new wireless service plan. In the example, the monetization platform may analyze user behavioral profiles to determine that certain users meet these criteria. The monetization platform may select a portion of the information contained in the behavioral profiles of matching users and deliver the selected information to the ad server 3804 (determining whether to prompt an action, e.g. advertising); fig1, rc110, [0073] In embodiments, the wireless communication facility 104 may be linked to a locator facility 110 that generates information about the location of the user (including geographic location, proximity to other locations, network location, or other location information). The locator facility 110 may enable linkage of other information, such as information about a user query, with information about the user's geographic location at the time the query was initiated.}
Claims 5-6 are rejected under 35 U.S.C. 103(a) as being unpatentable over Soroca et al (US 2010/0094878), in view of Webb (US 2009/0006628), in further view of Petersen et al (US 2012/0023226).
Regarding Claim 5 – Soroca, Webb discloses the limitations of Claim 4. Soroca, Webb does not disclose, however, Petersen discloses:
wherein the computer program product is operable such that the advertisement is displayed utilizing a lock screen of the mobile device. {see at least [0004] This doesn't mean, however, that the mobile device is inactive during user inactivity: the device may be actively downloading new content such as advertisements, polling for email, and receiving push notifications for activities on the Internet, thus utilizing occupying network bandwidth and consuming device power even when the user is not interacting with the mobile device or otherwise expecting data; [0048] 3. Upon the transition from screen-lock to unlock, the server recognizes that based on the push activity, the user is likely to get access to these two applications. The device sends a state change notification to the server, and in response, the server sends an activity session indicator to the device. The server pre-caches information relevant to the session, and creates a persistent connection with the device to support the activity session; [0049] 4. User accesses the services, and is pleased that the relevant data seems to be already on his device; }
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify Soroca, Webb to include the elements of Petersen. One would have been motivated to do so, in order to extend the possibilities to provide advertisements to the lock screes as well. In the instant case, Soroca, Webb evidently discloses determining whether to prompt an action by the platform (e.g. advertising platform). Petersen is merely relied upon to illustrate the functionality of displaying an advertisement on a lock screen in the same or similar context. Since both determining whether to prompt an action by the platform (e.g. advertising platform), as well as displaying an advertisement on a lock screen are implemented through well-known computer technologies in the same or similar context, combining their features as outlined above using such well-known computer technologies (i.e., conventional software/hardware configurations), would be reasonable, according to one of ordinary skill in the art. Moreover, since the elements disclosed by Soroca, Webb as well as Petersen would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Soroca, Webb / Petersen.
Regarding Claim 6 – Soroca, Webb discloses the limitations of Claim 4. Soroca, Webb does not disclose, however, Petersen discloses:
wherein the computer program product is operable such that the advertisement is displayed during an unlocking of a lock screen of the mobile device. {see at least [0004] This doesn't mean, however, that the mobile device is inactive during user inactivity: the device may be actively downloading new content such as advertisements, polling for email, and receiving push notifications for activities on the Internet, thus utilizing occupying network bandwidth and consuming device power even when the user is not interacting with the mobile device or otherwise expecting data; [0048] 3. Upon the transition from screen-lock to unlock, the server recognizes that based on the push activity, the user is likely to get access to these two applications. The device sends a state change notification to the server, and in response, the server sends an activity session indicator to the device. The server pre-caches information relevant to the session, and creates a persistent connection with the device to support the activity session; [0049] 4. User accesses the services, and is pleased that the relevant data seems to be already on his device}
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify Soroca, Webbto include the elements of Petersen. One would have been motivated to do so, in order to create a situation in which the user receives the advertisement immediately. In the instant case, Soroca, Webbevidently discloses determining whether to prompt an action by the platform (e.g. advertising platform). Petersen is merely relied upon to illustrate the functionality of displaying the advertisement while the screen is unlocked in the same or similar context. Since both determining whether to prompt an action by the platform (e.g. advertising platform), as well as displaying the advertisement while the screen is unlocked are implemented through well-known computer technologies in the same or similar context, combining their features as outlined above using such well-known computer technologies (i.e., conventional software/hardware configurations), would be reasonable, according to one of ordinary skill in the art. Moreover, since the elements disclosed by Soroca, Webb, as well as Petersen would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Soroca, Webb / Petersen.
Claim 10 is rejected under 35 U.S.C. 103(a) as being unpatentable over Soroca et al (US 2010/0094878), in view of Webb (US 2009/0006628), in further view of Anderson (US 2008/0263629).
Regarding Claim 10 – Soroca, Webb discloses the limitations of Claim 4. Soroca, Webb does not disclose, however, Anderson discloses:
wherein the computer program product is operable such that the advertisement is conditionally displayed based on a facial recognition in connection with a user of the mobile device. {see at least [0007] In some embodiments, one or more of the authentication credentials are selected from a group consisting of a user id-password pair, a smart card certificate, a smart card personal identification number (PIN), a Kerberos authentication credential, a biometric authentication mechanism and data protection mechanisms such as Data Protection Application Programming Interface (DPAPI). In further embodiments, the biometric authentication mechanism may be selected from a group consisting of fingerprint identification, iris identification, face recognition, retinal scan, voice recognition, facial thermograph, handwriting recognition, keystroke recognition, DNA identification and a combination of one or more of these mechanisms. [0071]}
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify Soroca, Webb to include the elements of Anderson. One would have been motivated to do so, in order to more securely identify the mobile device user. In the instant case, Soroca, Webb evidently discloses determining whether to prompt an action by the platform (e.g. advertising platform). Anderson is merely relied upon to illustrate the functionality of using facial recognition to identify the user in the same or similar context. Since both determining whether to prompt an action by the platform (e.g. advertising platform), as well as using facial recognition to identify the user are implemented through well-known computer technologies in the same or similar context, combining their features as outlined above using such well-known computer technologies (i.e., conventional software/hardware configurations), would be reasonable, according to one of ordinary skill in the art. Moreover, since the elements disclosed by Soroca, Webb, as well as Anderson would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Soroca, Webb / Anderson.
Claims 17-18 are rejected under 35 U.S.C. 103(a) as being unpatentable over Soroca et al (US 2010/0094878), in view of Webb (US 2009/0006628), in further view of Mehta et al (US 2011/0078724).
Regarding Claim 17 – Soroca, Webb discloses the limitations of Claim 16. Soroca, Webb does not disclose, however, Mehta discloses:
wherein the device capable of display includes at least one of a television, a display associated with a payment system, a vehicular display, or a billboard. {see at least fig1, rc150, [0017] FIG. 1 is a diagram of an exemplary network 100 in which systems and/or methods described herein may be implemented. As illustrated, network 100 may include a backend server 110, a database 120, a third-party server 130, video clients 140-1 and 140-2 (herein referred to collectively as "video clients 140" and generically as "video client 140"), video display devices 150-1 and 150-2 (herein referred to collectively as "video display devices 150" and generically as "video display device 150"), a local gateway 160, and an access network 170. Video clients 140, video display devices 150 and gateway 160 may be located on a customer's premises and may be connected via access network 170 to backend server 110 at, for example, a subscription television service provider's premises. Components of network 100 may interconnect via wired and/or wireless connections. For simplicity, a single backend server 110, database 120, third-party server 130, local gateway 160, and access network 170, and two video clients 140 and two video display devices 150 have been illustrated in FIG. 1. In practice, there may be more networks, servers, databases, local gateways, video clients, and/or video display devices.}
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify Soroca, Webb to include the elements of Mehta. One would have been motivated to do so, in order to create more opportunities for the advertisement to be seen. In the instant case, Soroca, Webb evidently discloses determining whether to prompt an action by the platform (e.g. advertising platform). Mehta is merely relied upon to illustrate the functionality of utilizing different types of displays in the same or similar context. Since both determining whether to prompt an action by the platform (e.g. advertising platform), as well as utilizing different types of displays are implemented through well-known computer technologies in the same or similar context, combining their features as outlined above using such well-known computer technologies (i.e., conventional software/hardware configurations), would be reasonable, according to one of ordinary skill in the art. Moreover, since the elements disclosed by Soroca, Webb as well as Mehta would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Soroca, Webb / Mehta.
Regarding Claim 18 – Soroca, Webb discloses the limitations of Claim 16. Soroca, Webb does not disclose, however, Mehta discloses:
wherein the device capable of display includes a third party device. {see at least fig1, rc150, [0017] FIG. 1 is a diagram of an exemplary network 100 in which systems and/or methods described herein may be implemented. As illustrated, network 100 may include a backend server 110, a database 120, a third-party server 130, video clients 140-1 and 140-2 (herein referred to collectively as "video clients 140" and generically as "video client 140"), video display devices 150-1 and 150-2 (herein referred to collectively as "video display devices 150" and generically as "video display device 150"), a local gateway 160, and an access network 170. Video clients 140, video display devices 150 and gateway 160 may be located on a customer's premises and may be connected via access network 170 to backend server 110 at, for example, a subscription television service provider's premises. Components of network 100 may interconnect via wired and/or wireless connections. For simplicity, a single backend server 110, database 120, third-party server 130, local gateway 160, and access network 170, and two video clients 140 and two video display devices 150 have been illustrated in FIG. 1. In practice, there may be more networks, servers, databases, local gateways, video clients, and/or video display devices.}
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify Soroca, Webb to include the elements of Mehta. One would have been motivated to do so, in order to ensure the advertisement is provided to more than one device. In the instant case, Soroca, Webb evidently discloses determining whether to prompt an action by the platform (e.g. advertising platform). Mehta is merely relied upon to illustrate the functionality of a third party device in the same or similar context. Since both determining whether to prompt an action by the platform (e.g. advertising platform), as well as third party device are implemented through well-known computer technologies in the same or similar context, combining their features as outlined above using such well-known computer technologies (i.e., conventional software/hardware configurations), would be reasonable, according to one of ordinary skill in the art. Moreover, since the elements disclosed by Soroca, Webb, as well as Mehta would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Soroca, Webb / Mehta.
The prior art made of record and not relied upon which, however, is considered pertinent to applicant's disclosure:
US 20150120458 A1 2015-04-30 26 Lee; Young Ho et al. Advertising system and method using in-app advertisement module - The present invention relates to an advertising system and method using an in-App advertisement module, which is capable of displaying an advertisement on a lock screen through an advertisement module which is inserted in one or more application and is installed in parallel to the applications and distributing saved rewards to the applications according to a user input through the lock screen on which the advertisement is displayed, thereby allowing the saved rewards to be used as points.
US 20150310493 A1 2015-10-29 23 Chitnis; Siddharth Lock-Screen-Based Advertisement Delivery Systems and Methods - An exemplary method includes an advertisement delivery system providing an advertisement for display together with a lock screen on a mobile device, detecting a sequence of user inputs associated with the lock screen and the advertisement, determining that the sequence of user inputs satisfies a predefined user input sequence requirement, and identifying, based on the determining that the sequence of user inputs satisfies the predefined user input sequence requirement, one or more billable impressions associated with the detected sequence of user inputs and the advertisement. Corresponding systems and methods are also described.
US 20150133199 A1 2015-05-14 20 Lee; Moon Sang MOBILE COMPUTING TERMINAL WITH MORE THAN ONE LOCK SCREEN AND METHOD OF USING THE TERMINAL - A method and a system for displaying information and content in a lock screen system having a plurality of screens so as to provide a screen lock for preventing an unintended input of a user terminal device, and a computer-readable recording medium. The method includes setting information and content on a plurality of lock screen, displaying the plurality of lock screens, providing a screen movement between the plurality of lock screens, executing an existing external application so as to provide detailed information for the information and content displayed on the plurality of lock screens, unlocking the plurality of lock screens, and posting an advertisement on a part of the plurality of lock screens. Users can easily confirm simple information and content and use the as a new medium and means for expressing themselves by setting the lock screen windows according to the personalities of the users.
US 20140019253 A1 2014-01-16 18 Ricasata; Richard SYSTEMS AND METHODS FOR SELECTING AND DISPLAYING INTERACTIVE ADVERTISING CONTENT WITH A LOCK SCREEN - Systems and methods are provided for selecting and displaying interactive advertising content on a lock screen or splash screen of a touch-sensitive portable electronic device. A lock screen is provided with at least one interactive advertisement where a user can select one or more options relating to the advertisement, scroll through numerous different advertisements, or unlock the portable electronic device. The splash screen is provided with at least one interactive advertisement for display when the portable electronic device is loading an application or transitioning from one device setting to another. The interactive advertising content may be selected by a remote advertisement selection server based on user data collected from the portable electronic device, such as the location of the user, content from social media applications, search queries and other information about the user that is available on the portable electronic device.
US 20100287587 A1 2010-11-11 20 Patten; Michael J. et al. VIRTUAL MEDIA CHANNELS - Methods for displaying a user's personal media content via an EPG that also displays third-party broadcast television channels. Personal media content associated with a user is retrieved from one or more networks, and aggregated by type of media. The personal content media is further sorted into groups of media content sharing a common attribute. A virtual media channel is created for each group of media, and is added to the EPG. Each virtual media channel is populated with the user's personal media content affiliated with the group.
US 20240080534 A1 2024-03-07 17 Verma; Mayank METHODS, SYSTEMS, AND APPARATUSES TO RESPOND TO VOICE REQUESTS TO PLAY DESIRED VIDEO CLIPS IN STREAMED MEDIA BASED ON MATCHED CLOSE CAPTION AND SUB-TITLE TEXT - Methods, systems, and apparatuses are described to implement voice search in media content for requesting media content of a video clip of a scene contained in the media content streamed to the client device; for capturing the voice request for the media content of the video clip to display at the client device wherein the streamed media content is a selected video streamed from a video source; for applying a NLP solution to convert the voice request to text for matching to a set of one or more words contained in at least close caption text of the selected video; for associating matched words to close caption text with a start index and an end index of the video clip contained in the selected video; and for streaming the video clip to the client device based on the start index and the end index associated with matched closed caption text.
US 20170064400 A1 2017-03-02 18 RIEGEL; BRIAN M. et al. SCHEDULING VIDEO CONTENT FROM MULTIPLE SOURCES FOR PRESENTATION VIA A STREAMING VIDEO CHANNEL - A method includes receiving at least one search term at a computing device coupled to a first content source storing first video content, the at least one search term associated with a streaming video channel. The method also includes receiving information based on the at least one search term, the information associated with second video content available from a second content source. The method further includes generating a streaming schedule for the streaming video channel. The streaming schedule indicates that during a first time period, the streaming video channel is to present the first video content from the first content source. The streaming schedule also indicates that, during a second time period, the streaming video channel is to present the second video content available from the second content source.
US 11758225 B1 2023-09-12 20 Victor; Robert James et al. Enhanced cross-media channel deterministic and modeled presentation frequency limits - Devices, systems, and methods are provided for managing advertisement exposure. The method may include receiving, by a first device, from a second device, an audio fingerprint based on presentation of first media content using a first media channel at a first time; determining, using automatic content recognition, that the audio fingerprint represents a portion of a first advertisement; determining that the first advertisement was presented at a second time using a second media channel and the second device; determining that a first number of times that the first advertisement has been presented to the user exceeds a first threshold number and that a second number of times that the first advertisement has been presented to the user does not exceed a second threshold number; refraining from selecting the first advertisement at a third time; and selecting the first advertisement for presentation at a fourth time.
Response to Amendments/Arguments
Applicant’s submitted remarks and arguments have been fully considered.
Applicant disagrees with the Office Action conclusions and asserts that the presented claims fully comply with the requirements of 35 U.S.C. § 101 regrading judicial exceptions. Further, Applicant is of the opinion that the prior art fails to teach Applicant’s invention.
Examiner respectfully disagrees in both regards.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 101.
Applicant submits:
a. The pending claims are not directed to an abstract idea.
b. The identified abstract idea is integrated into a practical application.
c. The pending claims amount to significantly more.
Furthermore, Applicant asserts that the Office has failed to meet its burden to identify the abstract idea and to establish that the identified abstract idea is not integrated into a practical application and that the pending claims do not amount to significantly more.
Examiner responds – The arguments have been considered in light of Applicants’ amendments to the claims. The arguments ARE NOT PERSUASIVE. Therefore, the rejection is maintained.
The pending claims, as a whole, are directed to an abstract idea not integrated into a practical application. This is because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05 (a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05 (b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05 (c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05 (e) and the Vanda memo).
In addition, the pending claims do not amount to significantly more than the abstract idea itself.
As such, the pending claims, when considered as a whole, are directed to an abstract idea not integrated into a practical application and not amounting to significantly more.
More specific:
Applicant submits “In the Office Action dated 10/22/2025, the Examiner rejected Claims 1- 20 under 35 U.S.C. 101 because the claimed invention is not directed to patent eligible subject matter. The claimed matter is directed to a judicial exception (i.e. an abstract idea not integrated into a practical application) without significantly more. Applicant respectfully asserts that such rejection is overcome in view of applicant's claim amendments herein.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
“… displaying the action on a lock screen of the mobile device …” is an additional step that amounts to nothing more than receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is concluded that these claim elements do not integrate the identified abstract idea into a practical application (see MPEP 2106.05(f)(2)).
Thus, the rejection is proper and has been maintained.
It follows from the above that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself. Therefore, the rejection under 35 U.S.C. § 101 is maintained.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 103.
Applicant submits that the prior art of record does not disclose “code for prompting the action by the platform in connection with the mobile device after the determining”, as well as “wherein prompting comprises displaying the action on a lock screen of the mobile device.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
Soroca discloses
code for prompting the action by the platform in connection with the mobile device after the determining. {see at least fig38A. rc3810, [1451] publishers may provide ad spots (reads on prompting the action); [0111]-[0129] action commands … “purchase action command” … “result in actions such as purchases, registration, login, contact, service, repair, and the like.” … “action command associated with a result” …}
wherein prompting comprises displaying the action on a lock screen of the mobile device. {see at least fig11, [0367] sponsored and displayed on the mobile device (reads on displaying the action); [0118]-[0119] action command is presented on a display … scrolling the display}
Therefor Soroca discloses the emended claim limitation. Thus, the rejection is proper and has been maintained.
Applicant submits “The teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art and not based on applicant's disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed.Cir.1991). Applicant respectfully asserts that at least the third element of the prima facie case of obviousness has not been met, since the prior art excerpts, as relied upon by the Examiner, fail to teach or suggest all of the claim limitations, as noted above.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
KSR does not require there is a recitation of the rational for combining in the prior art (see MPEP 2143 – “The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.”) “In keeping with the flexible nature of the obviousness inquiry, the requisite motivation can come from any number of sources and need not necessarily be explicit in the art, Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1357, 87 USPQ2d at 1455 (Fed. Cir. 2008)
Applicants may also argue that the combination of two or more references is "hindsight" because "express" motivation to combine the references is lacking. However, there is no requirement that an "express, written motivation to combine must appear in prior art references before a finding of obviousness." See Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004).
In many situations there is neither a motivation nor evident lack of motivation to make a modification articulated in cited references. Numerous scenarios typically find the prior art reference disclosing aspects of claimed subject matter, but fail to specifically point the way toward the combination to arrive at Applicant’s invention. A judgment must be made whether a person of ordinary skill in the art would have had sufficient motivation to combine individual elements forming the claimed invention, as in this particular situation. In re Clinton, 527 F.2d 1226, 1228, 188 USPQ 365, 367 (CCPA 1976).
A suggestion, teaching, or motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art, as the teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references. The test for an implicit showing is what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art. In re Leonard R. Kahn (CAFC, 04-1616, 3/22/2006).
KSR forecloses the argument that a specific teaching is required for a finding of obviousness (citing KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396). See Board decision Ex parte Smith, --USPQ2d--, slip op. at 20, (Bd. Pat. App. & Interf. June 25, 2007).
"It must be presumed that the artisan knows something about the art apart from what the references disclose. In re Jacoby, 309 F.2d 513, 135 USPQ 317 (CCPA 1962). The problem cannot be approached on the basis that artisans would only know what they read in references; such artisans must be presumed to know something about the art apart from what the references disclose. In re Jacoby. Also, the conclusion of obviousness may be made from common knowledge and common sense of a person of ordinary skill in the art without any specific hint of suggestion a particular reference. In re Bozek, 416 F.2d 1385, USPQ 545 (CCPA 1969). And, every reference relies to some extent on knowledge or persons skilled in the art to complement that which is disclosed therein. In re Bode, 550 F.2d 656, USPQ 12 (CCPA 1977)."
Thus, the rejection is proper and has been maintained.
The other arguments presented by Applicant continually point back to the above arguments as being the basis for the arguments against the other 103 rejections, as the other arguments are presented only because those claims depend from the independent claims, and the main argument above is presented against the independent claims. Therefore, it is believed that all arguments put forth have been addressed by the points above.
Examiner has reviewed and considered all of Applicant’s remarks. The changes of the grounds for rejection, if any, have been necessitated by Applicant’s extensive amendments to the claims. Therefore, the rejection is maintained, necessitated by the extensive amendments and by the fact that the rejection of the claims under 35 USC § 101 has not been overcome.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Radu Andrei/
Primary Examiner, AU 3697