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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 8, 2025 has been entered.
Response to Amendment
In light of Applicant's submission filed December 8, 2025 the Examiner has maintained and updated the 35 USC § 101 rejection. Also, the double patenting rejection is maintained. Also the 35 USC 112(a) rejection is maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 21, 32, and 40 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, and 20 of Patent No. 11328323. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are generally directed toward similar details related to an apparatus and method for managing branded digital items. The following details would be obvious as it relates to claims 21, 32, and 40 in view of claims 1, 11, and 20 such as, “receiving a first request for electronic content from a first user device; determining a first device type and first source internet protocol (IP) address associated with the first user device, and a first local time at a first geographic location corresponding to the first request for electronic content; receiving a second request for electronic content from a second user device; determining a second device type and second source internet protocol (IP) address associated with the second user device, and a second local time at a second geographic location corresponding to the second request for electronic content: determining a probability that the first user device and the second user device are operated by a common user, based on each of the first device type, the second device type, the first source internet protocol (IP) address, the second source internet protocol (IP) address, the first local time at the first geographic location corresponding to the first request, and the second local time at the second geographic location corresponding to the second request;”
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claim(s) recite(s) the following limitations that are considered to be abstract ideas:
Claims 21, 32, and 40
receiving a first request for electronic content (e.g. advertisement) from a first user;
extracting of online activity, information and parameters corresponding to the first request for electronic content;
receiving, a second request for electronic content from a second user;
extracting, online activity, information, parameters, and cookie data stored on the second user corresponding to the second request for electronic content;
determining, by processing multiple routes in parallel based on the extracted information and dynamically configuring, one or more algorithms processed at the server, a probability that the first user device and the second user device are operated by a common user, based on the information and parameters corresponding to the first request for electronic content and the information, parameters, and cookie data corresponding to the second request for electronic content;
dynamically configuring, the one or more algorithms during the determining the probability based on one or more processing routes performance;
determining that the first user and the second user are operated by a common user when the probability exceeds a predetermined threshold;
accessing determine a unique identifier associated with the common user, the unique identifier comprising purchase history from a third user of the common user;
determining, based on the purchase history associated with the unique identifier, electronic content to display on the first user.
transmitting the electronic content to the second user , based on the second user device requesting an ad
The limitations of independent claim 21, 32, and 40, as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely “advertising, marketing or sales activities or behaviors” because the claims disclose performing advertising, marketing or sales activities or behaviors comprising collecting information, analyzing the information, determining the likelihood of a common user across devices. Accordingly, the claims recite an abstract idea This judicial exception is not integrated into a practical application. In particular the claims recite the additional elements of using an API, database, server, user device, data storage device, processor, non-transitory computer readable medium, electronic content, IP address. The aforementioned additional generic computing elements perform the steps of the claims at a high level of generality (i.e. As a generic medium performing generic computer function of receiving, extracting, storing, determining, and accessing 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 is directed to an 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 element of a processor to receiving, extracting, storing, determining, and accessing amounts to no more than mere instruction 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 claim is not patent eligible. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of API, database, server, user device, data storage device, processor, non-transitory computer readable medium, electronic content, IP address 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.
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
Thus, taken individually and in combination, the additional elements do not amount to
significantly more than the above-identified judicial exception (the abstract idea). (i.e. “PEG”
Step 2B=No) The dependent claims 22-31, and 33-39 appear to merely further limit the abstract and as such, the analysis of dependent claims 22-31, and 33-39 results in the claims “reciting” an abstract idea. The claims do not recite additional elements that integrate the exception into a practical application the additional elements do not amount to an inventive concept (significantly more) other than the above-identified judicial exception (the abstract idea). Thus, based on the detailed analysis above, claims 21-40 are not patent eligible.
Potentially Allowable Subject Matter
Claims 21-40 would be allowable if the applicant were to be able to overcome the Double Patenting and 35 USC 101 above.
The following is a statement of reasons for the indication of allowable subject matter: In regards to claims 21-40, the closest prior art found by the examiner is the prior art of Sivaramakrishnan (WO 2013/170198) which discloses, “various digital identities are linked, all of the accumulated digital profile information from these linked digital identities may be used to accurately select advertisements for all of the linked digital devices.”. However, the Examiner was unable to find prior art for the limitations of claims 21, 32, and 40 that states, “storing the first source internet protocol (IP) address or the second source internet protocol (IP) address as public internet protocol (IP) addresses based on a number of unique browsers appearing on the first source internet protocol (IP) address or the second source internet protocol (IP) address;” Thus claims 21-40 would be allowable over the prior art.
Response to Arguments
Applicant's arguments filed January have been fully considered but they are not persuasive. The applicant argues the 35 U.S.C 101 rejection by citing paragraphs [0104 and 0026], the Examiner respectfully disagrees the cited paragraphs merely describe generic software functionality and the cited paragraphs do not have any specific improvement to the functioning of a computer, or to any other technology or technical field. Nor is there any technical solution that explains the details of an unconventional technical solution expressed in the claim. The cited paragraphs and the claims merely recite generic computing techniques and routine software design.
. MPEP 2106.05(a) - In determining patent eligibility, examiners should consider whether the claim "purport(s) to improve the functioning of the computer itself" or "any other technology or technical field." Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 225, 110 USPQ2d 1976, 1984 (2014). This consideration has also been referred to as the search for a technological solution to a technological problem. See e.g., DDR Holdings, LLC. v. Hotels.com, L.P., 773 F.3d 1245, 1257, 113 USPQ2d 1097, 1105 (Fed. Cir. 2014); Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300-01, 120 USPQ2d 1527, 1537 (Fed. Cir. 2016) and MPEP 2106.04(a)(2) It is important to note that a mathematical concept need not be expressed in mathematical symbols, because "[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula." In re Grams, 888 F.2d 835, 837 and n.1, 12 USPQ2d 1824, 1826 and n.1 (Fed. Cir. 1989). See, e.g., SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018) (holding that claims to a ‘‘series of mathematical calculations based on selected information’’ are directed to abstract ideas); In both of the examples it is contemplated that there should be a technical solution to a technical problem and not as the applicant has used merely stating the results or the mere use of said algorithm. As stated in the MPEP - Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
In regards to the applicant’s assertion that “particular algorithm” meaningful limits, the Examiner respectfully disagrees the claim does not detail the algorithms structure, equations, or processing technique. The applicant does not state how the algorithm is improved, thus it remains a generic mathematical concept applied to data analysis. MPEP 2106.05( e) states Diamond v. Diehr provides an example of a claim that recited meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. 450 U.S. 175, 209 USPQ 1 (1981). In Diehr, the claim was directed to the use of the Arrhenius equation (an abstract idea or law of nature) in an automated process for operating a rubber-molding press. 450 U.S. at 177-78, 209 USPQ at 4. The Court evaluated additional elements such as the steps of installing rubber in a press, closing the mold, constantly measuring the temperature in the mold, and automatically opening the press at the proper time, and found them to be meaningful because they sufficiently limited the use of the mathematical equation to the practical application of molding rubber products. 450 U.S. at 184, 187, 209 USPQ at 7, 8. In contrast, the claims in Alice Corp. v. CLS Bank International did not meaningfully limit the abstract idea of mitigating settlement risk. 573 U.S. 208, 110 USPQ2d 1976 (2014). In particular, the Court concluded that the additional elements such as the data processing system and communications controllers recited in the system claims did not meaningfully limit the abstract idea because they merely linked the use of the abstract idea to a particular technological environment (i.e., "implementation via computers") In comparison the applicant’s additional elements of database, server, user device, data storage device, processor, non-transitory computer readable medium, API, and algorithm merely link the use of the abstract idea to a particular technological environment (i.e implementation via computers) The applicant’s claims do not have steps that integrated the results of the analysis into a specific and tangible method that resulted in the method "moving from abstract scientific principle to specific application." 659 F.3d at 1066-68; 100 USPQ2d at 1500-01. Also note In contrast, in OIP Technologies, Inc. v. Amazon.com, Inc., the court determined that the additional steps to "test prices and collect data based on the customer reactions" did not meaningfully limit the abstract idea of offer-based price optimization, because the steps were well-understood, routine, conventional data-gathering activities. 788 F.3d 1359, 1363-64, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) In the previous Non-final rejection the examiner highlighted several court cases that reflect the well understood, routine and conventional data gathering, analysis and transmitting activities. MPEP2106.05(f) - Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea – which applies to the applicant’s generically recited use/result of an “algorithm”
ii. Accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016); the patent claims in FairWarning IP, LLC v. Iatric Systems did use algorithms or rule-based analysis, but the Federal Circuit still found them invalid under Section 101. The court concluded that merely applying these rules on a computer was an unpatentable abstract idea, not an "inventive concept"
The applicant argues the 101 in regards to the USPTO August 4, 2025 memo, the Examiner respectfully disagrees the claim is more than 50% directed to an abstract idea. Thus this argument is moot. Furthermore, on September 26, 2025, the United States Patent and Trademark Office (USPTO) issued an Appeals Review Panel decision in Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) vacating the Board’s new ground of rejection under 35 U.S.C. § 101. The decision was designated precedential on November 4, 2025. (SEE USPTO memorandum dated December 5, 2025) Specifically, Ex Parte Desjardins explained the following:
Enfish ranks among the Federal Circuit's leading cases on the eligibility of technological improvements. In particular, Enfish recognized that “[m]uch of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes.” 822 F.3d at 1339. Moreover, because “[s]oftware can make non-abstract improvements to computer technology, just as hardware improvements can,” the Federal Circuit held that the eligibility determinations should turn on whether “the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.” Id. at 1336. (Desjardins, page 8). The applicant's claims are directed to one or more algorithms, However, the Desjardins decision further emphasizes that merely performing a calculation (e.g. the calculation of a particular algorithm) and/or merely performing business logic via a computer is not sufficient to overcome a 101 rejection.
Examples of claims that improve technology or a technical field and are not directed to a judicial exception include: Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339, 118 USPQ2d 1684, 1691-92 (Fed. Cir. 2016) (data structure claims to a self-referential table for a computer database were directed to an improvement in computer capabilities and not directed to an abstract idea); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102-03 (Fed. Cir. 2016) (claims to automatic lip synchronization and facial expression animation were directed to an improvement in computer-related technology and not directed to an abstract idea); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259- 60, 123 USPQ2d 1712, 1717 (Fed. Cir. 2017) (claims to an enhanced computer memory system were directed to an improvement in computer capabilities and not an abstract idea); Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 125 USPQ2d 1282 (Fed. Cir. 2018) (claims to virus scanning were found to be an improvement in computer technology and not directed to an abstract idea); SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1303 (Fed. Cir. 2019) (claims to detecting suspicious activity by using network monitors and analyzing network packets were found to be an improvement in computer network technology and not directed to an abstract idea); Ex Parte Desjardins (claims to a method of training a machine learning model were directed to improvements in the machine learning technology itself and additionally included data structure elements reciting adjustments in values to plurality of performance parameters while preserving prior values). Additional examples are provided in MPEP § 2106.05(a). The applicant’s claims do not improve machine learning (e.g. algorithms) itself, nor do the recited parameters perform any type of adjustments. The applicant’s algorithm merely performs calculations and classifications.
The second paragraph of MPEP § 2106.05(a), subsection I, is revised to add new examples xiii and xiv to the list of examples that may show an improvement in computer functionality: xiii. An improved way of training a machine learning model that protected the model’s knowledge about previous tasks while allowing it to effectively learn new tasks; Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential); and xiv. Improvements to computer component or system performance based upon adjustments to parameters of a machine learning model associated with tasks or workstreams; Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential).The applicant’s claims do not have an improved way algorithms, nor do the algorithms appear to have improvements to computer components or system performance based upon adjustments of the algorithm associated with task or workstreams.
Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
The applicant has not provided any arguments or evidence that the claims have limitations that are indicative of integrations into a practical application. Thus the 35 U.S.C 101 rejection is maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARNELL A POUNCIL whose telephone number is (571)270-3509. The examiner can normally be reached Monday - Friday 10:00 - 6:00.
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/D.A.P/Examiner, Art Unit 3622
/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622