DETAILED NON-FINAL OFFICE ACTION
This action is responsive to Applicant’s filing this instant application, dated 07/14/2021.
The instant application is being examined under the pre-AIA first to invent provisions.
Reissue
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. This reissue application was filed 07/14/2021. Thus, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 made in this application are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 10,356,460 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
Rejection Under U.S.C. 251
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The reissue oath/declaration filed with this application is defective because it fails to contain the Correct Assignee.
Applicant is asked to submit a new Oath/ Declaration with the corrections.
Claims 1 – 30 are rejected as being based upon a defective reissue Oath/ Declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the Oath/ Declaration is set forth in the discussion above in this Office action.
Consent of Assignee
This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.01.
A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.
APPLICATION DATA SHEET/FILING RECEIPT
The Applicant Data Sheet filed with the present reissue application filed on July 14th, 2021 (hereinafter the “2021 ADS”) is objected to because it does not contain the correct Assignee. Applicant is asked to resubmit the ADS/Filing Receipt with the corrections needed.
Examiners also find that the Filing Receipt mailed March 30th, 2022 (hereinafter the “2022 Filing Receipt”) reflects the improper/missing Assignee. Accordingly, Applicant is also required in response to this action to file a request for a corrected filing receipt to reflect the changed/corrected Assignee. See MPEP §601.05.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 21, and 30 recited the limitations of,
“a first and a second query, each query being associated with at least one of: 1) the advertisements of the advertisement database, 2) the media content of the content database or 3) neither of the advertisements of the advertisement database and the media content of the content database …”.
The interpretation of this claim would mean that the query can be associated with anything under the sun. The specification does not teach that the query would be associated with or have access to everything.
Claims 2 – 20, and 22 – 29 are rejected for their dependency on the above rejected claims.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The limitation of claim 1 that recites, “a first and a second query, each query being associated with at least one of: 1) the advertisements of the advertisement database, 2) the media content of the content database or 3) neither of the advertisements of the advertisement database and the media content of the content database being programmatically selected based at least in part on the profiles of the first and second users, respectively….a query database comprising a plurality of queries associated with at least one of the plurality of advertisements and the media content.” This limitation appears to contradict itself in the BRI. Applicant is asked to amend this limitation to clarify what is specifically associated with a “query”.
Claims 2 – 20 are dependent on claim 1 and are therefore also rejected.
Claims 2 – 20 state “the media delivery instructions”. There is insufficient antecedent basis for this limitation in the claim. Claim 1 states “media delivery computer instructions”. Please make the appropriate amendment.
Claim 16 recites the limitation "The system of Claim 1, further comprising a set of authoring computer instructions, wherein the executed instructions adapt the computer to allow an author to modify selection criteria used by the media delivery instructions for selecting any of the first and second contents and the first and second advertisements." There is insufficient antecedent basis for this limitation in the claim. It is unclear if the claim is referring to the “set of authoring computer instructions” or the “media delivery instructions”.
Claim 17 recites the limitation "…a set of usage computer instructions, wherein the executed instructions adapt the computer to receive usage data from a user device". There is insufficient antecedent basis for this limitation in the claim. Furthermore, similar to the rejection of claim 16, it is unclear as to what instructions are being executed at that time.
Claim 18 has a similar issue as claims 16 and 17, and is rejected for those reasons.
Regarding claim 28, the phrase "or any other media" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim Objections
Claim 24 is objected to because of the following informalities: Claim 24 recites the limitation, “or the first query to the firs user…”. This appears to be a typo.
Appropriate correction and/or explanation is required. Please review all claims incase other typos are present.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1 – 16, and 19 – 30 are rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over Matz et al., U.S. Patent No. 9967633, hereinafter “Matz”, in view of Stefanik et al., U.S. Patent No. 8640160, hereinafter “Stefanik”.
Claim 1:
A media system including a computer programed to execute system software, the system comprising:
a content database comprising media content;
Matz teaches a media database, (e.g., 3:46 – 4:35).
a user database comprising a plurality of user profiles;
Matz teaches a user database with preferences, (e.g., 3:46 – 4:35).
an advertisement database comprising a plurality of advertisements; and
Matz teaches an ad database such as the claimed one, (e.g., 6:47 et seq.).
a processor of the computer configured to execute a set of media delivery computer instructions, wherein the executed instructions adapt the computer to:
receive an input signal from each of a first user's computing device and a second user's computing device over an electronic network in communication with the computer,
Matz specifically teaches selecting content to view, (e.g., 7:9 et seq.). It is also seen that Matz does refer to multiple subscribers that would be performing the same action, i.e., selecting content to view on a display, (e.g., 20:50 – 51).
programmatically select, in response to the input signals from the first and second user's computing devices, first and second media content and first and second advertisements based on the input signal for the first and second users, respectively, the first and second media content, the first and second advertisements, and a first and a second query, each query being associated with at least one of: 1) the advertisements of the advertisement database, 2) the media content of the content database or 3) neither of the advertisements of the advertisement database and the media content of the content database being programmatically selected based at least in part on the profiles of the first and second users, respectively,
Matz specifically teaches selecting a program to watch with the intersection of ads along with the content requested, (e.g., 18:17 et seq.). However, Matz does not specifically teach a type of query as claimed above. Stefanik specifically teaches querying the subscriber to gather information about them. These questions are inserted into the media they are consuming, (e.g., 7:37 – 63, 10:40 – 47, “survey”). It would have been obvious to one of skill in the art at the time the invention was made to combine Stefanik’s questionnaire with Matz ability to insert specific ads into programs at specific time because allowing the system to insert the questions about the content they just viewed would give the advertiser specific feedback in “real time” that would aid in determining what other preferences the subscriber may have.
deliver the first media content, the first advertisement and the first query to the first user, and to deliver the second media content, the second advertisement and the second query to the second user, wherein each of at least the first media content, the first advertisement and the first query are programmatically and serially arranged in discrete time slots so as to produce a personalized program for delivery to and presentation by the first user,
Matz and Stefanik teach this limitation as stated above, see the above citations and reasons for combination.
cause the personalized program to be presented to the first user's computing device over the electronic network,
Matz teaches displaying specific media to the user based on past interactions, (e.g., 3:46 – 4:35, 6:47 – 7:9 et seq., 18:17 et seq.).
obtain a first reply from the first user's computing device that is generated in response to the first query during presentation of the personalized program,
Matz teaches selecting an advertisement based on user preferences as described above. Stefanik further describes a user answering a questionnaire and using such data to further refine the profile database on a specific subscriber, (e.g., 5:58 – 6:12, 7:17 – 53 et seq.). It would have been obvious to one of skill in the art at the time the invention was made to combine Stefanik’s questionnaire with Matz ability to insert specific ads into programs at specific time because of similar reasons stated above.
determine if the first reply requests information that can be provided in a discrete time slot of the personalized program,
Matz specifically teaches determining the specific slots for programs and advertisements, see above cited areas). Therefore, under BRI, if the subscriber selects an ad that they like, the profile database would inform the system to send more information regarding that demographic. Which would cause the invention of Matz to place another ad in a time slot.
obtain the requested information from one of the databases and insert the information in a discrete time slot of the personalized program when the requested information can be provided in the personalized program,
Matz specifically teaches this limitation as described above.
wherein the first query is dynamically selected prior to being arranged in the discrete time slot based at least on information received from the first user's computing device, and
This is an inherent step that would have to occur in order for the query to be arranged, i.e., one could not just arrange or send the first query unless it was selected to be arrange or sent first, regardless if it was “dynamic” or not. Furthermore, the prior art of Matz specifically teaches the prior art uses different questions to set up a baseline profile data set that is used to send information to a subscriber to interact with and recover more metrices for a more refined map of the subscribers interests, (e.g., 2:3 – 16 et seq.).
a query database comprising a plurality of queries associated with at least one of the plurality of advertisements and the media content.
Matz in view of Stefanik teach this limitation as previously stated above.
Claims 7, 10, 11, 12, 13, 14, 15, 21, 24, 25, 26, 27, 28, 29, and 30 claim similar limitations as claim 1 or have the same teachings disclosed in the cited areas of the prior art, and is therefore rejected for similar reasons as stated above.
Claim 2:
The system of Claim 1, wherein the media delivery instructions further adapt the computer to select the first advertisement based at least in part on the first media content.
Matz teaches the use of selecting specific content and displaying the advertisement that is associated with specific programs, i.e., local programs are linked to local ads, national programs are linked to national ads, etc., (e.g., 10:13 et seq.).
Claims 14 and 22 claim similar limitations as claim 2 and is therefore rejected for similar reasons as stated above.
Claim 3:
The system of Claim 1, wherein the advertisement database comprises an advertisement profile for each of the plurality of advertisements, and the media delivery instructions further adapt the computer to select the first advertisement based at least in part on the profile of the first advertisement.
Matz teaches the use of selecting specific content and displaying the advertisement that is associated with specific programs, i.e., local programs are linked to local ads, national programs are linked to national ads, etc., (e.g., 10:13 et seq.).
Claim 4:
The system of Claim 3, wherein the media delivery instructions further adapt the computer to select the first advertisement based at least in part on profiles of one or more advertisements other than the first advertisement.
Matz teaches all that is stated above that would be applied to this limitation as stated above. Furthermore, Stefanik teaches specific advertisements specifically linked to demographic groups where different groups may overlap with each other, (e.g., 2:16 – 59, 5:50 – 6:13 et seq.). It would have been obvious to one of skill in the art at the time the invention was made to combine Stefanik with Matz because matching groups of advertisements with groups of subscribers would yield more subscribers wanting to purchase what is being specifically advertised to said subscribers.
Claim 5:
The system of Claim 1, wherein the content database further comprises a media content profile for each of the media contents, and the media content profile comprises attributes of the associated media content.
Matz teaches content being grouped in different lists such as genre, (e.g., 4:12-35).
Claim 6:
The system of Claim 1, wherein the content database further comprises a media content profile for each of the media contents, and the media content profile comprises data related to quantity of presentations of the associated media content.
Matz teaches storing the number of time a specific program was streamed as one example, (e.g., 2:24 – 63 et seq.).
Claim 8:
The system of Claim 7, wherein the first query is an offer to sell.
Stefanik teaches presenting data that gives the subscriber the opportunity to purchase items, (e.g., 4:40 – 57, 7:37 – 53, 8:37 – 46, 14:44 – 52). It would have been obvious to one of skill in the art at the time the invention was made to combine Stefanik with Matz because if a subscriber sees something desirable in a piece of content, it would give the subscriber the ability to purchase said product from their device, therefore giving companies faster chances of a sale.
Claim 9:
The system of Claim 7, wherein the first query is an offer for additional information.
Under BRI, this is nonfunctional descriptive matter. Furthermore, the claim language is broad enough to read on the questions of Stefanik, i.e., in Stefanik’s questionnaires, one of the questions could read, “Would you like more ads about X?”, (e.g., see above cited areas of Stefanik). It would have been obvious to one of skill in the art at the time the invention was made to combine Stefanik’s questionnaire with Matz because of similar reasons stated above.
Claim 16:
The system of Claim 1, further comprising a set of authoring computer instructions, wherein the executed instructions adapt the computer to allow an author to modify selection criteria used by the media delivery instructions for selecting any of the first and second contents and the first and second advertisements.
Matz teaches the system operator being able to change advertisements based on viewing parameters, (e.g., 16:63 – 17:15, 18:25 et seq., 20:6 et seq.).
Claim 19:
The system of Claim 1,wherein the first query is optimized prior to being arranged in a discrete time slot based at least on information transmitted from the first user's computing device over the network, the information comprising current geographic location of the computing device.
Matz teaches determining if the subscriber is watching content from a local or national regions. Utilizing this data, Matz invention displays local or national ads, (e.g., Figs. 3A – 4 and supporting areas of the specification.). Stefanik specifically teaches the use of geographical location, (e.g., 3:3 – 22). It would have been obvious to one of skill in the art at the time the invention was made to combine Stefanik with Matz because utilizing specific geographical location of a subscriber would allow the advertisers to know what specific ads they could sent the user that would have the immediate impression, i.e., detecting which coffee shop a subscriber may be the closest to and sending an ad from that specific coffee shop.
Claims 20, 23 are interpreted in a similar light as claim 19 and is therefore rejected for the same reasons as stated above.
Claims 17 and 18 are rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over Matz and Stefanik in further view of Krassner et al., U.S. Pub. No. 2007/0150353, hereinafter “Krassner”.
Claim 17:
The system of Claim 1, further comprising: a set of usage computer instructions, wherein the executed instructions adapt the computer to receive usage data from a user device, the usage data indicating any of a time, a date and a location when either of the first content and the first advertisement has been presented to the first user; and
a set of accounting computer instructions, wherein the executed instructions adapt the computer to calculate billing or payment information based on the usage data.
Matz does not specifically teach the limitation above. Krassner billing as claimed above, (e.g., ¶¶ 0007, 0015, and 0100 et seq.). It would have been obvious to one of skill in the art at the time the invention was made to combine Krassner with Matz and Stefanik because billing using the matrix of how many times the ad is presented allows the system to which ads are receiving the most attention and worth the most.
As for Claim 18, Krassner teaches cost per click and cost per impression. This well-known practice accumulates usage data from all users in the system to determine billing of the advertiser. Therefore, claim 18 is rejected for similar reasons as stated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID E. ENGLAND whose telephone number is (571)272-3912. The examiner can normally be reached M-F 8:00-5:00.
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DAVID E. ENGLAND
Primary Examiner
Art Unit 3992
/DAVID E ENGLAND/Primary Examiner, Art Unit 3992
Conferees:/MATTHEW E HENEGHAN/Primary Examiner, Art Unit 3992
/MICHAEL FUELLING/Supervisory Patent Examiner, Art Unit 3992