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
In response to the Office Action mailed March 25, 2026, applicant submitted an amendment filed on June 25, 2026, in which the applicant traversed and requested reconsideration.
Response to Arguments
The 101 rejection remains for reasons as set forth below. According to Step 1, it includes determining whether the claims fall within a statutory category. The claims include a method, therefore the claims fall within a statutory category. Step 2A Prong one, includes evaluating whether the claims recite a judicial exception. The claims recite a judicial exception, therefore an evaluation is done to determine if the claims fit into one of the categories. As explained below, the claims fit into the mental processing concept. Prong 2B is used to evaluate whether the claims recite additional elements that integrate the exception into a practical application. As explained below the judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements which are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The claims do not include additional elements that are sufficient to amount to
significantly more than the judicial exception. As discussed above with respect to
integration of the abstract idea into a practical application, the additional elements
amount to no more than mere instructions to apply the exception using a generic
computer component. Mere instructions to apply an exception using a generic computer
component cannot provide an inventive concept. The claims are not patent eligible.
Applicant’s argue Step 2A Prong 2 and provides examples of limitations that the courts have found indicative that an additional element may have integrated the exception into a practical application. Applicants also explain that the instant claims provide a solution to problems, thereby integrating the exception into a practical application by providing an improvement to a technical field. However, the steps which lead to the improvement and the improvement itself is not explicitly recited the claims. Although, Applicants point to what the courts have found, what the courts have found is not comparable to the current claim language. Therefore, Applicants arguments have been considered, but are not persuasive. The specification nor the claims reflect the improvements claimed in the arguments. In the instant claims, the abstract idea results in an output of generic “information” that is not utilized in any particular fashion or for any particular purpose. It does not meaningfully apply the gathered information to some useful process in a particular technological environment or employ a particular machine. While the claimed invention may have some use in technical fields, that use or implementation in particular technology or technological environment has not been recited in the claimed invention. Absent these recitations, the only claim elements that remain are generic computer components that do not qualify as significantly more. Therefore, the claims are non-statutory.
It is noted that all of the computing devices discussed, such as a voice-enabled device, television, set-top box, smart devices and media devices, just to list a few, are generic computer components performing a generic function as explained below. Furthermore, Applicants discuss the specification and logistics of operation, such as algorithmically making a determination, identifying the content transition based on metadata occurring in the content of streaming device and linear content, just to list a few, however, none of the information is explicitly recited in the claims. It takes a narrow scope to transform abstract data into patent eligible subject matter.
Applicants argue that the claims meet the requirement under 35 U.S.C. 101, as interpreted by the courts. In particular, Applicants point out Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 134 S. Ct. 2351 (2014) (“Alice"). However, according to the claims they recite extra solution activity and are not significantly more. The claims are not beyond what’s routine and conventional and utilizes general purpose computers.
Similar to McRo. It illustrates the importance of focusing on the specific features that provide an invention’s importance over the prior art in determining whether or not a claim is directed towards an abstract idea. The claims recited software techniques for automatically syncing animated facial expressions to phonemes based on “rule sets” that were “...rendered in a specific way...[and]...the specific structure of the claimed rules would prevent broad preemption of all rules-based means of automating lip synchronization...[by] incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques.” Further, the court clarified that “...[t]he computer here is employed to perform a distinct process to automate a task previously performed by humans...it is the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks.”
It is noted that Applicants reference numerous features in the specification that are not recited. Patentability is determined based on limitations positively recited in the claims. Ex Parte Desjardins is distinguishable from the presently claimed invention. In Desjardins, the claims were found to recite specific technological improvement to a particular machine, namely improvements to model training and performance that addressed a technological problem in computer functionality. In contrast, the present claims do not recite an improvement to the adaptive determination of content termination boundaries based on metadata-identified content transitions. Therefore, the 101 rejection remains.
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 non-statutory subject matter.
The claims 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. The claims are directed to the abstract idea of controlling content, as explained in detail below.
The limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “a computing device” nothing in the claim element precludes the steps from practically being performed by mental processing. For example, the language, receiving during presentation of content, a command associated with enforcement of content controls, wherein the command includes a first end time (can be done by presenting data and a user issuing a command to stop presenting the data); identifying, based on metadata received with the content, a content transition between two scenes of the content occurring during presentation of the content nearest the first end time (can be done by a user identifying transition data); determining, based on an identified content transition between two scenes of the content occurring during presentation of the content nearest the first end time, an end boundary of the content corresponding to a second end time that is different than the first end time (can be done by a user making a determination regarding when to end the content presented); and causing presentation of the content to be terminated at the second end time (can be done by a user stopping the content being presented).
The present claim language under its broadest reasonable interpretation, covers performance of mental processing and recites generic computer components, which all falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements which are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims are not patent eligible.
The other independent and dependent claims recite similar language such as making determinations, powering off devices, presenting various data, etc., which is all mental processing and non-statutory.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAKIEDA R JACKSON whose telephone number is (571)272-7619. The examiner can normally be reached on Mon - Fri 6:30a-2:30p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Washburn can be reached on 571.272.5551. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAKIEDA R JACKSON/Primary Examiner, Art Unit 2657
Prosecution Insights