DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 23 January 2026 has been entered.
Continuation
This application is a continuation application of U.S. Application No. 13/584,154 filed on 13 August 2012, now U.S. Patent 10,929,856, which is in turn a continuation of U.S. Application No. 12/465,907 filed on 14 May 2009, now U.S. Patent 8,265,990 (“Parent Application(s)”). See MPEP §201.07. In accordance with MPEP §609.02(II)(A)(2) and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application.
Status
This First Action Final Office Action is in response to the communication filed on 23 January 2026. Claims 1-20, 22, 29, and 36 have been canceled currently or previously, claims 21, 28, and 35 have been amended, and no new claims have been added. Therefore, claims 21, 23-28, 30-35, and 37-41 are pending and presented for examination.
The Examiner notes the Patent Trial and Appeal Board (“PTAB”) decision dated 17 June 2025 (“PTAB decision”), affirming the 101 rejection on the appealed claims.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
A summary of the Examiner’s Response to Applicant’s amendment:
Applicant’s amendment does not overcome the rejection(s) under 35 USC § 101; therefore, the Examiner maintains the rejection(s) while updating phrasing in keeping with current examination guidelines.
Applicant’s claims are indicated as allowable over the prior art.
Applicant’s arguments are found to be not persuasive; please see the Response to Arguments below.
Claim Interpretation
The Examiner notes that there is no special definition or indication of a mobile telephone network or what would constitute a mobile telephone network; therefore, since the plain meaning of a mobile telephone network would appear to encompass any network over which a mobile telephone may/can communicate, any indication of communication with or by a mobile telephone would also indicate communication or transmission over a mobile telephone network.
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 21, 23-28, 30-35, and 37-41 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Please see the following Subject Matter Eligibility (“SME”) analysis:
For analysis under SME Step 1, the claims herein are directed to a method (claims 21 and 23-27), server/system (claims 28 and 30-34), and non-transitory computer-readable medium (claims 35 and 37-41), which would be classified under one of the listed statutory classifications (SME Step 1=Yes).
For analysis under revised SME Step 2A, Prong 1, independent claim 21 recites a method comprising: storing a plurality of keywords associated with a web page configured for presentation at a user computer device, wherein, prior to storing, the keywords are identified, using a server computer device serving the user computer device, and wherein the identifying is based at least in part on pre-defined tags inserted into source code of the web page; storing a plurality of associated values for each stored keyword; receiving, by the server computer device from the user computer device, contextual data associated with a context of using the user computer device to interact with the web page, wherein the contextual data indicates a location of the user computer device, a local time at the user computer device, and content being viewed at the user computing device; selecting, by the server computer device, a value from among the plurality of stored associated values for the plurality of keywords that corresponds to one or more of the location of the user computer device, the local time at the user computer device, and the content being viewed at the user computer device, and wherein the selected value meets at least one criterion associated with the received contextual data; responsive to determining that the selected value meets the at least one criterion, selecting, by the server computer device, at least one keyword from the stored plurality of keywords associated with the selected value; wherein the at least one keyword is used in configuring a link accessible at the user computer device that, when actuated, initiates a media presentation event at the user computer device, wherein the media presentation event includes content transmitted to the user computer device and presented in a video player layer initiated via embedded program code executing at the user computer device, wherein the at least one keyword is included in keyword identifying information configured to cause the embedded program code executing at the user computer device to (1) encode the at least one keyword to demarcate the at least one keyword and (2) hyperlink the at least one keyword to the content.
Independent claims 28 and 35 are parallel to claim 21 above, except directed to a server computer comprising at least one processor and non-transitory computer-readable media having instructions stored thereon that are configured to, in response to execution by the server computer, cause the server computer to perform the same, or similar, operations as at method claim 21 above (for claim 28), and a non-transitory computer-readable medium having instructions stored thereon that are configured to, in response to execution by one or more first computing devices, cause the one or more first computing devices to perform the same, or similar, operations as at method claim 21 above (for claim 35).
The dependent claims (claims 23-27, 30-34, and 37-41) appear to be encompassed by the abstract idea of the independent claims since they merely indicate using one or more mobile telephones for the user computer device and/or a mobile telephone network for delivering/receiving the contextual data (claims 23, 25-26, 30, 32-33, 37, and 39-40), using cookies to store contextual data (claims 24, 31, and 38), and/or determining location based on IP address (claims 27, 34, and 41). Therefore, the dependent claims merely designate the form of computing device (i.e., mobile phone(s)), the type of network used (i.e., a mobile phone network), and using cookies to store data and an IP address for location.
The underlined portions of the claims are an indication of elements additional to the abstract idea (to be considered below).
The claim elements may be summarized as the idea of targeting or presenting content (e.g., marketing and/or advertising) based on a value and the location, local time, and/or content being viewed; however, the Examiner notes that although this summary of the claims is provided, the analysis regarding subject matter eligibility considers the entirety of the claim elements, both individually and as a whole (or ordered combination). This idea is within the certain methods of organizing human activity (e.g. … commercial or legal interactions such as … advertising, marketing or sales activities/behaviors, or business relations; …) grouping of subject matter. This appears analogous to determining a value for local advertising on local television or radio broadcasts (such as the evening news) or a local newspaper or magazine since the publication is based on current content, location, and local time.
Therefore, the claims are found to be directed to an abstract idea.
For analysis under revised SME Step 2A, Prong 2, the above judicial exception is not integrated into a practical application because the additional elements do not impose a meaningful limit on the judicial exception when evaluated individually and as a combination. The additional elements are the storing and use or activity being associated with a web page, using a user computer device, a server computer device, pre-defined tags inserted into source code of the web page; configuring a link that may be actuated, and the presentation event includes content transmitted to the user computer device and presented in a video player layer initiated via embedded program code executing at the user computer device, using the embedded program code executing at the user computer device to (1) encode and (2) hyperlink the keyword(s) (at claim 21), and independent claims 28 and 35 being further directed to a server computer comprising at least one processor and non-transitory computer-readable media having instructions stored thereon that are configured to, in response to execution by the server computer, and a non-transitory computer-readable medium having instructions stored thereon that are configured to, in response to execution by one or more first computing devices, cause the one or more first computing devices to perform the operations. These additional elements do not reflect an improvement in the functioning of a computer or an improvement to other technology or technical field, effect a particular treatment or prophylaxis for a disease or medical condition (there is no medical disease or condition, much less a treatment or prophylaxis for one), implement the judicial exception with, or by using in conjunction with, a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing (there is no transformation/reduction of a physical article), and/or apply or use the judicial exception in some other meaningful way beyond generically linking use of the judicial exception to a particular technological environment.
The storing of keywords associated with a web page, storing the associated values, and selecting a stored value is considered insignificant as analogous to storing and selecting or retrieving information using hardcopy, or other such examples as files, directories (telephone or others), library card catalogs, etc.
That the keywords are associated with a web page is merely applying the abstract idea in a computer-based environment, and (in reality) merely a field of use (such as a web page that is merely an image or digital version of a hardcopy publication such as a magazine or newspaper).
How the keywords have been, or were, identified (i.e., by tags inserted into source code) does not change that those keywords and/or their associated values are merely stored – this merely implies that a computer may be used when the keywords were identified, but they still are just being stored, and apparently, per the claims could be stored in hardcopy.
The receiving of contextual data may be indicated as performed by a computer, but is really no different than an analog of receiving by mail or voice – this is literally merely applying the activity via computer.
The selection being according to a value criterion is also analogous to merely reading a list of values and selecting those above some threshold or designated value, and/or selecting the highest value or highest group values (as examples). As such, this also is considered insignificant since, at best, merely applying the abstract idea via computer.
The configuring a link that can be actuated, and that the link is to content that would execute on the user computer does not change or improve any technology – it is merely a high level recitation indicating use of known technology.
The amendment submitted 23 January 2026 indicates the keywords (as stored and selected earlier in the claim) as included in keyword identifying information configured to cause the embedded program code executing at the user computer device to (1) encode the at least one keyword to demarcate the at least one keyword and (2) hyperlink the at least one keyword to the content. Per Applicant ¶ 0055, the encoding a keyword to demarcate it is merely highlighting (or similar) as a marking (i.e., a markup) so that it is seen as a hyperlink, and the actual hyperlinking is merely the actual (usual, common) function of configuring a/the linked keyword so that when it is or would be/can be actuated, it performs the usual function of acting as a hyperlink. This activity was indicated at the earlier rejection, and is also indicated by the PTAB Decision as included in the marketing aspect of the abstract idea (see the PTAB Decision at the last half of p. 8).
As such, the claims appear to merely apply the judicial exception, include instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform the abstract idea. The additional elements appear to merely add insignificant extra-solution activity to the judicial exception and/or generally link the use of the judicial exception to a particular technological environment or field of use.
The additional elements indicated above are merely “[a]dding the words ‘apply it’ (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp.” that MPEP § 2106.05(I)(A) indicates to be insignificant activity.
For analysis under SME Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, as indicated above, are merely “[a]dding the words ‘apply it’ (or an equivalent) with the judicial exception” that is indicated to be insignificant activity.
There is no indication the Examiner can find in the record regarding any specialized computer hardware or other “inventive” components, but rather, the claims merely indicate computer components which appear to be generic components and therefore do not satisfy an inventive concept that would constitute “significantly more” with respect to eligibility.
The individual elements therefore do not appear to offer any significance beyond the application of the abstract idea itself, and there does not appear to be any additional benefit or significance indicated by the ordered combination, i.e., there does not appear to be any synergy or special import to the claim as a whole other than the application of the idea itself.
The dependent claims, as indicated above, appear encompassed by the abstract idea since they merely limit the idea itself; therefore, the dependent claims do not add significantly more than the idea.
Therefore, SME Step 2B=No, any additional elements, whether taken individually or as an ordered whole in combination, do not amount to significantly more than the abstract idea, including analysis of the dependent claims.
Please see the Subject Matter Eligibility (SME) guidance and instruction materials at https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility, which includes the latest guidance, memoranda, and update(s) for further information.
Allowable Subject Matter
Claims 21, 23-28, 30-35, and 37-41 are indicated as allowable over the prior art.
The following is a statement of reasons for the indication of allowable subject matter:
The closest art of record appears to be Henkin et al. (U.S. Patent Application Publication No. 2010/0138452, hereinafter Henkin) disclosing web page keywords as identified through source code tags, the keywords being assessed for value (“EMV”) and context so as to select webpage keywords to highlight or markup as hyperlinks that may be executed or selected to present secondary content. Where Henkin does not disclose the use of local time in selecting the secondary content to be hyperlinked, Agarwal et al. (U.S. Patent Application Publication No. 2005/0076014, hereinafter Agarwal) teaches content selection based on relevance, including via local time. The 17 June 2025 PTAB decision, however, very briefly indicates that the claims were not clearly mapped to Henkin – understood to be due to Henkin having too many indications of the keyword identification analysis; therefore, it does not appear reasonable at this time to indicate the combination of references as disclosing the claimed invention.
Response to Arguments
Applicant's arguments filed 23 January 2026 have been fully considered but they are not persuasive.
Applicant first argues the 101 rejections (Remarks at 9-10), arguing that the claim amendment indication of encoding a keyword to demarcate it and then hyperlinking the keyword somehow constitute integrating into a practical application (Id. at 9). However, marking keywords by color to hyperlink them so as to point to a page or other content is the basic activity broadly and generally performed in order to link content, such as for marketing. There appears to be no apparent further requirement than what was at the previous claim phrasing of selecting “at least one keyword … used in configuring a link accessible at the user computer device”. Further, this is apparently the same activity indicated by the PTAB Decision as included in the marketing aspect of the abstract idea (see the PTAB Decision at the last half of p. 8). Applicant’s argument merely indicates “This amended language integrates any alleged abstract ideas in the independent claims into a practical application” (Remarks at 9), but the only explanation regarding why this may be is the argument that this is since it is done by “program code executing at the user computer device” (Id.). That, however, is merely an indication of an additional element that is applying the abstract idea by a computer.
Applicant then argues (again) that “As another example, each of the independent claims specifies that the identifying of the keywords is based at least in part on pre-defined tags inserted into source code of the web page” (Remarks at 10). However, the claims recite “storing keywords”, and that “prior to storing” the keywords are identified; therefore, how they were identified prior to the storing appears to have little if any impact on the storing itself. Further, though, even if the identifying were given more than little if any patentable weight, identifying them based on tags inserted in the source code of the web page is really just reading the source code tags (which is what tagging items in or on a web page is intended to be for) – it really just designates where the keywords came from, and does not appear to impact or improve the storing of the keywords.
Therefore, the Examiner is not persuaded by Applicant’s arguments.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Raggett et al., Hypertext Links in HTML, W3C, dated 28 March 1997, downloaded from https://www.w3.org/TR/WD-htmllink-970328 on 26 January 2022, indicates a proposed draft revision for including hypertext links in HTML.
Baker, Loren, Measuring Link Value with Text Link Ads, Search Engine Journal, 23 May 2006, downloaded from the Wayback Machine on 26 January 2022 from https://web.archive.org/web/20071014010347/https://www.searchenginejournal.com/measuring-link-value-with-text-link-ads/3457/, discussing a tool for measuring dollar value of links on web sites.
Northrup, Laura, This Farm In Kansas Is The Default Address For All American Internet Users, the Consumerist.com, dated 11 April 2016, downloaded 1 July 2022 from https://consumerist.com/2016/04/11/this-farm-in-kansas-is-the-default-address-for-all-american-internet-users/, indicating that a listed IP address may be incorrect and the default for at least one location provider is a Kansas farm yard.
Bar-Yossef et al. (U.S. Patent No. 8065309, hereinafter Bar-Yossef) discusses that “To estimate the number of unique search results 118, the unique item counter 114 uses a hash function to create hash values of information in each of the search results 116. In some implementations, the hash function maps the information in each of the search results 116 to a random number. The information can include a network address or a portion of a network address, such as a uniform resource identifier, a domain name, or an Internet Protocol (IP) address. The information can include a web page or a portion of a web page, such as HyperText Markup Language (HTML) code from a head tag, a meta tag, or a body tag. The information can include a web page advertisement or a portion of a web page advertisement, such as HTML code in the advertisement or meta data associated with the advertisement (e.g., advertisement keywords, an advertiser name, or a product/service name).” (Bar-Yossef at column:lines 3:47-62).
Lapstun et al. (U.S. Patent Application Publication No. 2008/0195645, hereinafter Lapstun) describes that “if a particular brand or model of handbag is identified in a celebrity photo, the corresponding page description can tag that region of the photo with corresponding ad keywords and/or a product code” (Lapstun at 0821), indicating tags identifying a portion of a page (see the Abstract, 0010, 0031, 0397-0400) from which keywords are to be used.
Dumais et al. (U.S. Patent Application Publication No. 2008/0005067, hereinafter Dumais) indicates that “First, search engines agents, often referred to as spiders or crawlers, navigate websites in a methodical manner and retrieve information about sites visited. For example, a crawler can make a copy of all or a portion of websites and related information. The search engine then analyzes the content captured by one or more crawlers to determine how a page will be indexed. Some engines will index all words on a website while others may only index terms associated with particular tags such as such as title, header or metatag(s). In addition, engines can index terms associated with pages obtained from sources such as anchor text, tags, advertising keywords or previous queries. Crawlers must also periodically revisit webpages to detect and capture changes thereto since the last indexing.” (Dumais at 0005 – indicating that Microsoft Corp. recognizes that page indexing for search engines track and “read” page tags that identify particular portions of content).
W3C, The global structure of an HTML document, retrieved from WebArchive.org [online] at https://www.w3.org/TR/html401/struct/global.html, dated 14 October 2002, retrieved on 6 March 2023, indicating tags required by HTML, as used for web pages, including required tags such as for Title and Meta data, including indicating keywords (see § 7.4.4, at p. 5).
Sullivan, Danny, Meta Keywords Tag 101: How To “Legally” Hide Words On Your Pages For Search Engines, Search Engine Land [online], retrieved from https://searchengineland.com/meta-keywords-tag-101-how-to-legally-hide-words-on-your-pages-for-search-engines-12099 on 6 March 2023, dated 5 September 2007, describing the use and history of the meta keywords tag in HTML.
Hill, Kashmir, How an internet mapping glitch turned a random Kansas farm into a digital hell, Splinter News [online], dated 10 April 2016, retrieved 6 March 2023 from https://splinternews.com/how-an-internet-mapping-glitch-turned-a-random-kansas-f-1793856052, indicating how inaccurate IP Address mapping to location may be, and that mapping location to IP address started at least as early as 2002.
Seals (U.S. Patent Application Publication No. 2003/0110158) indicates “keywords are selected by the crawler or indexing function because of their location and frequency in the particular product web page. They can also be intentionally placed in tags within the source code of the page, viewable only to search engines or by viewing the source of the page” (Seals at 0081).
Yih et al., Finding advertising keywords on web pages, WWW '06: Proceedings of the 15th international conference on World Wide Web, Pp. 213 – 222, https://doi.org/10.1145/1135777.1135813, 23 May 2006, downloaded 13 March 2026 from https://dl.acm.org/doi/abs/10.1145/1135777.1135813, indicating that “We describe a system that learns how to extract keywords from web pages for advertisement targeting. The system uses a number of features, such as term frequency of each potential keyword, inverse document frequency, presence in meta-data, and how often the term occurs in search query logs. The system is trained with a set of example pages that have been hand-labeled with "relevant" keywords. Based on this training, it can then extract new keywords from previously unseen pages. Accuracy is substantially better than several baseline systems” (at Abstract).
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/Scott D Gartland/
Primary Examiner, Art Unit 3685