DETAILED ACTION
Status of the Claims
This office action is submitted in response to the amendment filed on 10/8/25.
Examiner notes the previous withdrawal of prior art on 8/1/23.
Claim 1 has been amended.
Therefore, claims 1-9 are currently pending and have been examined.
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 .
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 1-9 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.
Independent claim 1, in part, describes a method comprising: contacting remote computers on a periodic basis to request content, determining if ads are sent in response, ranking the ads by conducting an auction and selecting the highest ranked ad from the auction, resorting to previous ads if no ads are received, determining criteria for displaying the ad(s) in ad slots, determining the availability of ad slots, and generating instructions to display the highest ranked ad that hasn’t yet been displayed. As such, the invention is directed to the abstract idea of collecting ads, ranking ads, and presenting the highest-ranking ads in various ad slots based on predetermined criteria, which, pursuant to MPEP 2106.04(a), is aptly categorized as a method of organizing human activity (i.e., marketing and advertising). Therefore, under Step 2A, Prong One, the claims recite a judicial exception.
Next, the aforementioned claims recite additional elements that are associated with the judicial exception, including: calling a third-party computer, receiving a response to the calling, accessing digital ads received from the third-party computers, sending instructions to display the highest-ranking ad from the first plurality of ads or the highest-ranking ad from the prior ranked ads, and displaying the highest ranked ad in a particular slot without any other ads in the slot. Examiner understands these limitations to be insignificant extrasolution activity. (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Cf. Diamond v. Diehr, 450 U.S. 175, 191-192 (1981) ("[I]nsignificant post-solution activity will not transform an unpatentable principle in to a patentable process.”).
The aforementioned claims also recite additional elements including one or more “computers” for executing the method; a “digital out-of-home advertising kiosk” for displaying content; a “playlist optimizer system” for calling other computers and playing looped content; and a “network.”. Dependent claim 8 further describes a computer system that comprises a “server” for sending and receiving data. Dependent claim 9 further describes a “third-party programmatic platform” on the computer system, which merely appears to serve as executable instructions (i.e., software). Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110 USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at 1984.
Furthermore, looking at the elements individually and in combination, under Step 2A, Prong Two, the claims as a whole do not integrate the judicial exception into a practical application because they fail to: improve the functioning of a computer or a technical field, apply the judicial exception in the treatment or prophylaxis of a disease, apply the judicial exception with a particular machine, effect a transformation or reduction of a particular article to a different state or thing, or apply the judicial exception beyond generally linking the use of the judicial exception to a particular technological environment. Rather, the claims merely use a computer as a tool to perform the abstract idea(s), and/or add insignificant extra-solution activity to the judicial exception, and/or generally link the use of the judicial exception to a particular technological environment (e.g., generic computers connected to the internet).
Next, under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered both individually and as an ordered combination, do not amount to significantly more than the abstract idea. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Simply put, as noted above, there is no indication that the combination of elements improves the functioning of a computer (or any other technology), and their collective functions merely provide conventional computer implementation.
Additionally, pursuant to the requirement under Berkheimer, the following citations are provided to demonstrate that the additional elements, identified as extra-solution activity, amount to activities that are well-understood, routine, and conventional. See MPEP 2106.05(d).
Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
Displaying data to a user. Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015); MPEP 2106.05(g)(3).
Thus, taken alone and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea), and are ineligible under 35 USC 101.
Claims 2-7 are dependent on the aforementioned independent claims, and include all the limitations contained therein. These claims do not recite any additional technical elements, and simply disclose additional limitations that further limit the abstract idea with details regarding the duration for the “periodic basis,” looping content, ranking parameters, and discarding ads. Thus, the dependent claims merely provide additional non-structural (and predominantly non-functional) details that fail to meaningfully limit the claims or the abstract idea(s).
Therefore, claims 1-9 are not drawn to eligible subject matter, as they are directed to an abstract idea without significantly more.
Relevant Art
The following references are made of record and not relied upon, as they are deemed to be pertinent to Applicant’s disclosure.
LaJoie et al. (20160012492), directed to a method for user-based targeted content delivery.
Krishnamurthy et al. (20150142557), directed to a method for user engagement-based contextually-dependent automated pricing for non-guaranteed delivery.
Inoue et al. (20040054577), directed to a method for advertisement selection.
Els et al. (20160042407), directed to a method for controlling purchasing online ads in a real-time bidding environment.
Ward et al. (20130311294), directed to a closed loop mobile messaging system.
Response to Arguments
Applicant’s arguments regarding the sufficiency of the claims under 35 USC 101 remain unpersuasive.
First, Applicant argues that the claims are not directed to a judicial exception. Examiner disagrees. The invention is clearly directed to a method that involves collecting ads, ranking ads, and presenting the highest-ranking ads in various ad slots based on predetermined criteria. As such, the invention is unquestionably categorized as a method of organizing human activity (advertising).
Next, Applicant argues that the claims recite a technical improvement to a technical problem. Applicant goes on to explain that the alleged “improvement” consists of “dynamically providing revenue generating content to DOOH media systems that would otherwise have to be manually updated.” (Emphasis added). This feature is nothing more than automation of a manual process, which is not eligible under 101. Both Supreme Court and Federal Circuit precedent make clear that automation of a long-standing human process cannot be the inventive concept because such automation is itself an abstract idea. See, e.g., ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 774 (Fed. Cir. 2019) (“[A] claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention significantly more than that ineligible concept.”)).
Next, Applicant once again attempts to argue that the claims are eligible in view of Enfish and Bascom. In those cases, the claims were patent-eligible because they were directed to improvements in the way computers and networks carry out their basic functions. Enfish, 822 F.3d at 1335–36; BASCOM, 827 F.3d at 1348–49; see Electric Power, 830 F.3d at 1354. Here, the focus of the claims is not any improved computer or network, but the improved curation and selection of ads; and indeed, the specification makes clear that off-the-shelf computer technology is usable to carry out the analysis. (See paragraphs 41-46 and 64-69 of Applicant’s specification). The claims of the current invention thus fit into the familiar class of claims that do not “focus . . . on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.” Electric Power, 830 F.3d at 1354 (Emphasis added).
Next, Applicant argues that Examiner failed to consider the hardware and software components of the playlist optimizer, which includes one or more computers such as the auction module and the programmatic selection module. Examiner clearly considered these features and determined that they were generic computer components (based on evidence provided by the claim language and specification).
Next, Applicant inexplicably argues that Examiner failed to provide the requisite evidence under Berkheimer. A cursory reading of the rejection makes it clear that this standard was met by citing evidence indicating that the following extrasolution features are well-understood, routine, and conventional:
Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
Displaying data to a user. Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015); MPEP 2106.05(g)(3).
Examiner further notes that Applicant has erred in arguing that the claimed method is an improvement over conventional DOOH media systems and is therefore not well-understood, routine, or conventional. This is not representative of the legal standard.
Applicant further attempts to argue that the Berkheimer requirement can not be met by “the mere listing of case citations.” This represents a fundamental misunderstanding of 101 guidance. MPEP 2106.05(d) states that a factual determination is required to support a conclusion that an additional element is well-understood, routine, and conventional. Because examiners should rely on what the courts have recognized, or those of ordinary skill in the art would recognize, as elements that describe well‐understood, routine activities, 2106.05(d) provides examples of elements that have been recognized by the courts as well-understood, routine, conventional activity in particular fields. These citations meet this burden.
Finally, Applicant cites to a number of PTAB cases that are neither binding nor persuasive.
Therefore, for at least these reasons, the rejection under 35 USC 101 is sustained.
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.
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/CHRISTOPHER C BUSCH/Examiner, Art Unit 3621
/WASEEM ASHRAF/Supervisory Patent Examiner, Art Unit 3621