DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/22/26 has been entered.
Status of the Claims
This office action is submitted in response to the RCE filed on 4/22/26.
Examiner notes the previous withdrawal of prior art on 8/1/23.
Examiner further notes the declaration of Ivan Zatkovich that was filed with the RCE under 37 CFR 1.132.
Claims 1 and 6-7 have 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.
Step 1: Claims 1–9 are directed to a patent-eligible subject matter category under 35 U.S.C. § 101. Specifically, claim 1 recites a method comprising steps (A) through (I), and thus falls within the "process" category. See MPEP § 2106.03. Claims 2–9 depend from claim 1 and thus likewise fall within the "process" category. Accordingly, the claims satisfy Step 1.
Step 2A, Prong One: Independent claim 1, in part, describes a method comprising: communicating with a third party on a periodic basis to request content; determining if content is sent in response; upon receiving a response, ranking newly received digital content with prior ranked digital content by conducting a secondary auction and selecting the highest ranked digital content; upon not receiving a response, accessing the prior ranked digital content; determining the availability of display slots within looped content; and generating instructions to display the highest ranked digital content that has not yet been displayed. As such, the invention is directed to the abstract idea of soliciting content from third-party sources, ranking the collected content via an auction process, determining the availability of display slots, and presenting the highest-ranked content in available slots based on predetermined criteria. This is aptly categorized, pursuant to MPEP § 2106.04(a)(2)(II), as a certain method of organizing human activity (advertising and marketing). 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, by the one or more computers, on a periodic basis, a plurality of third-party source computer systems for content; accessing, by the one or more computers, a first plurality of digital content received from the called third-party source computer systems; sending, by the one or more computers, the instructions generated in one of steps (G) and (H) to the at least one non-personal digital out-of-home advertising kiosk; and the at least one non-personal digital out-of-home advertising kiosk dynamically displays within the available slot the highest ranking digital content based on the instructions received in step (I) such that the fall back content is not otherwise displayed in the available slot. The Examiner understands these limitations to be insignificant extra-solution activity. See Accenture Global Servs., GmbH v. Guidewire Software, Inc., 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 into a patentable process.").
The aforementioned claims also recite additional elements including: one or more computers for executing the method; a playlist optimizer system comprising said computers; an impression reservation computer system of a digital out of home network; non-personal digital out-of-home advertising kiosks that display looped content; and third-party source computer systems. These limitations are recited at a high level of generality and appear to be nothing more than generic computer components used to apply the abstract idea. 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. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 223 (2014), 110 USPQ2d 1977, 1983 (2014).
Step 2A, Prong Two: Looking at the elements individually and in combination, 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, 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 and digital advertising kiosks connected to a network). Accordingly, the claims do not integrate the judicial exception into a practical application, and the analysis proceeds to Step 2B.
Step 2B: The claims do not include additional elements sufficient to amount to significantly more than the judicial exception. The additional elements, when considered individually and as an ordered combination, do not amount to significantly more than the abstract idea itself. The recitation that the playlist optimizer system is separate from the impression reservation computer system describes the architectural arrangement of generic computing components relative to one another but does not alter the nature of the computing components themselves; distributing computing tasks across separate systems is a well-known design choice that does not transform otherwise generic computing into something significantly more. Furthermore, 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 a computer or any other technology, and their collective functions are merely facilitated by generic computer implementation.
Additionally, pursuant to the requirement under Berkheimer v. HP Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), the following citations are provided to demonstrate that the additional elements, identified as extra-solution activity, are well-understood, routine, and conventional. See MPEP § 2106.05(d).
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.
Dependent Claims: Claims 2–9 depend from independent claim 1 and include all limitations contained therein. These claims do not recite any additional elements sufficient to transform the abstract idea into patent-eligible subject matter. Specifically:
Claim 2 recites that the periodic basis is less than a duration of the first play of the looped content. This limitation further defines a timing parameter of the abstract idea and does not recite any additional technical elements.
Claim 3 recites that steps (A)-(G) are performed one or more times during the first play of the looped content. This limitation further defines the frequency of performing the abstract idea and does not recite any additional technical elements.
Claim 4 recites that the at least one ranking parameter comprises a plurality of ranking parameters. This limitation further defines a feature of the ranking step of the abstract idea and does not recite any additional technical elements.
Claim 5 recites that the at least one ranking parameter comprises a parameter selected from the group consisting of: price, content fitness, pacing goals, and content preference. This limitation further specifies the criteria used in the ranking step of the abstract idea, all of which are commercial considerations relating to advertising, and does not recite any additional technical elements.
Claim 6 recites discarding, by the one or more computers, digital content from the prior ranked second plurality of digital content. This limitation further defines a content management step of the abstract idea and does not recite any additional technical elements beyond the generic one or more computers already identified.
Claim 7 recites that the step of discarding comprises: (i) determining, by the one or more computers, one or more lowest ranked digital content from the prior second plurality of digital content; and (ii) eliminating, by the one or more computers, the one or more lowest ranked digital content from potential play within the looped content. These limitations further define the discarding step of claim 6 and do not recite any additional technical elements beyond the generic one or more computers already identified.
Claim 8 recites that the plurality of third-party source computer systems comprises an advertising server. This limitation identifies a type of generic computing component and does not meaningfully limit the abstract idea or provide additional technical elements sufficient to amount to significantly more.
Claim 9 recites that the plurality of third-party source computer systems comprises a third-party programmatic platform. This limitation identifies a software platform running on the generic computing components and does not meaningfully limit the abstract idea or provide additional technical elements sufficient to amount to significantly more.
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
I. The Zatkovich Declaration
Applicant submits the Zatkovich Declaration as a Subject Matter Eligibility Declaration ("SMED") pursuant to the Director's SMED Memorandum dated December 4, 2025, and argues that the Examiner must give it "meaningful evidentiary weight" in the eligibility analysis. The affidavit under 37 CFR 1.132 filed on 4/22/26 is insufficient to overcome the rejection of claims 1-9 under 35 USC 101 for the following reasons.
As an initial matter, the Zatkovich Declaration does not present factual evidence that changes the eligibility analysis. Rather, the Declaration recites the claim steps, labels them "unconventional and non-routine," and concludes that the claims are directed to patent-eligible subject matter. This is legal conclusion, not factual testimony. A declaration under § 1.132 must set forth facts, not merely express opinions on the ultimate legal question of patent eligibility. See MPEP § 716.01(c) ("Attorney arguments and conclusory statements … that are unsupported by factual evidence are entitled to little probative value."). Throughout the Declaration, Mr. Zatkovich asserts that the claimed method is "unconventional" (Paragraphs 14, 15, 16, 17, 25, 26), "non-routine" (Paragraphs 15, 16, 25), "innovative" (Paragraphs 14, 19, 25), and "impossible to perform manually" (Paragraphs 15, 18, 22, 23, 24, 26), but these are conclusory characterizations of the claim language, not independently verifiable factual assertions about the state of the art.
The Declaration's core thesis is that conventional DOOH systems operated using static, pre-configured loops that could not dynamically update content without manual intervention by a network manager, and that the claimed invention solves this "technological problem" through a "specifically architected computing solution." (Zatkovich Declaration, Paragraphs 13–14). However, the alleged "technological problem" identified by Mr. Zatkovich is not a deficiency in how computers function — it is a business problem: conventional DOOH networks could not maximize programmatic advertising revenue because empty slots defaulted to non-revenue-generating fallback content. The claimed solution — soliciting ads from third-party sources, ranking them, and inserting the highest-ranked ad into an available slot — addresses this business problem using generic computing components performing their ordinary functions of transmitting data, processing data, and displaying content. That the prior business process required manual intervention and the claimed method automates it does not render the claims patent-eligible. See 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.").
Mr. Zatkovich further asserts that the claimed method is "categorically incapable of being performed manually or through any human-directed workflow" (Paragraph 15) and that "[n]o human cognitive or manual equivalent" exists for the process (Paragraph 18). This argument is unpersuasive. The inability to perform a process manually at the speed or scale of a computer does not transform an abstract idea into patent-eligible subject matter. Many abstract ideas — such as financial calculations, data organization, and content curation — are performed more quickly and at greater scale by computers, but the use of a computer to perform them faster does not confer eligibility. See Alice Corp., 573 U.S. at 224 ("[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention."). The steps of soliciting content, ranking content via an auction, determining slot availability, and selecting content for display are activities that a human advertising manager could conceptually perform — contacting ad sources, evaluating bids, checking which display slots are open, and deciding which ad to place. That the claims automate and accelerate this process does not place them beyond the reach of § 101.
The Declaration also repeatedly asserts that the "secondary auction" of step (D)(ii) and the slot availability determination of step (F) represent "unconventional" computer-implemented processes. (Zatkovich Declaration, Paragraphs 16, 22, 23). However, conducting an auction to rank competing content and evaluating whether a display opportunity is available are the core commercial activities that define the abstract idea — they are the abstract idea, not additional elements that could supply an inventive concept. Characterizing the abstract idea itself as "unconventional" does not remove it from the realm of abstraction. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) ("[N]o matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.").
Mr. Zatkovich asserts that the playlist optimizer system being architecturally "separate from" the impression reservation computer system evidences an unconventional system architecture. (Zatkovich Declaration, Paragraphs 14, 15, 26). The Examiner is not persuaded. Distributing computing functions across separate systems is a well-known architectural design choice. The specification describes the playlist optimizer system using generic hardware — processors, RAM, ROM, ASICs, FPGAs, and communication portals (Specification, Paragraphs 41–46, 64–69) — none of which represents a specialized or unconventional computing configuration. The "separation" between the two systems is a logical design decision about where to run particular software processes, not a technical innovation in computer architecture.
Finally, the Examiner notes that despite Applicant's amendment of "advertisements" to "content" throughout the claims, the Zatkovich Declaration itself repeatedly refers to the invention in advertising terms, describing "programmatic media" (Paragraphs 19, 20, 21, 22, 24, 27), "programmatic revenue" (Paragraphs 19, 21, 22), "programmatic advertisements" (Paragraph 13), and "revenue-generating content" (Paragraphs 13, 14, 17, 22, 24). The specification uses the term "advertising" or "advertisement" over 70 times. Moreover, dependent claim 8, which was not amended, recites that the plurality of third-party source computer systems comprises an advertising server — an express acknowledgment in the claim language itself that the invention operates in the field of advertising. Relabeling "advertisements" as "content" does not change the nature of the invention or the abstract idea to which the claims are directed.
II. Applicant's Step 2A, Prong One Arguments
Applicant argues that the Examiner's characterization of the claims as directed to a "method of organizing human activity (advertising and marketing)" constitutes a "broad-brush approach" condemned by the PTAB in Ex parte Toru Shimuta and warned against by Director Squires in the SMED Memorandum and In re DesJardins. These arguments are not persuasive.
The rejection does not broadly categorize the claims based solely on the "media context in which the technology operates," as Applicant suggests. Rather, the rejection specifically identifies the abstract idea as soliciting content from third-party sources, ranking the collected content via an auction process, determining the availability of display slots, and presenting the highest-ranked content in available slots based on predetermined criteria. This is a specific characterization grounded in the actual claim limitations, not an overbroad label.
Applicant's reliance on In re Desjardins is misplaced. Desjardins involved claims directed to improvements in a machine learning model itself — specifically, reduced storage requirements, lowered system complexity, and prevention of catastrophic forgetting. The claims here involve no machine learning, no artificial intelligence, and no improvement to the functioning of any computing technology. The claims are directed to the management of advertising content placement using generic computing hardware. Desjardins is inapposite.
III. Applicant's Step 2A, Prong Two Arguments
Applicant argues that the claims integrate the judicial exception into a practical application because they "improve the technical functioning of DOOH content management computer systems" in a manner not previously possible, citing Enfish, McRO, and Ex parte Rogan. These arguments are not persuasive.
In Enfish, the claims were directed to a specific improvement to a self-referential table in a computer database that improved how the computer itself stored and retrieved data. 822 F.3d at 1335–36. In McRO, the claims were directed to a specific set of rules that improved the functioning of computer animation technology. 837 F.3d at 1314–15. In both cases, the improvement was to the functioning of the computer or technology itself. Here, the focus of the claims is not any improved computer or network, but the improved curation and selection of advertising content for display in available slots. The specification confirms that the invention is implemented on off-the-shelf computing hardware (Specification, Paragraphs 41–46, 64–69). The claims fit squarely within the 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 Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
Applicant's reliance on Ex parte Rogan is similarly unpersuasive. In Rogan, the claims were directed to an airport airside advertising system that used sensor elements to detect aircraft within a predetermined range and control an actuation signal to a billboard in response — a specific hardware-sensor configuration that improved energy efficiency. The claims here involve no sensors, no actuation signals, and no hardware-specific configuration. The claimed method uses generic computers to manage advertising content, which is not analogous to the sensor-based detection and actuation system in Rogan.
Applicant further argues that the Director's SMED Memorandum requires the Examiner to credit the Zatkovich Declaration's assertions that the claimed method improves the functioning of DOOH content management computer systems. The SMED Memorandum instructs Examiners to give "meaningful evidentiary weight" to properly submitted SMEDs, and the Examiner has done so by considering the Declaration in its entirety. However, "meaningful weight" does not mean dispositive weight. The Examiner has weighed the Declaration and finds it unpersuasive for the reasons set forth above — it offers legal conclusions rather than facts, it conflates a business improvement with a technical improvement, and it relies on characterizations of the claim steps that are inconsistent with the eligibility framework.
IV. Applicant's Step 2B Arguments
Applicant argues that the ordered combination of additional elements amounts to significantly more under BASCOM. These arguments are not persuasive.
In BASCOM, the Federal Circuit found an inventive concept in the "non-conventional and non-generic arrangement" of filtering content at a specific location in a network architecture — namely, at the ISP server level rather than at the local or remote server level — which provided a technical benefit of allowing individualized filtering while avoiding the disadvantages of prior approaches. 827 F.3d at 1350. Here, there is no analogous non-conventional arrangement. The claims recite generic computing components — computers, servers, kiosks, and networks — performing their ordinary functions of processing, transmitting, and displaying data. The recitation that the playlist optimizer system is "separate from" the impression reservation computer system does not represent a non-conventional arrangement; it is a routine client-server or multi-system architecture. The specification's description of the hardware confirms this — processors, RAM, ROM, ASICs, FPGAs, communication portals, LCDs, and standard network connections (Specification, Paragraphs 41–46, 64–69).
Accordingly, Applicant's arguments and the Zatkovich Declaration have been fully considered but are not persuasive. The rejection of claims 1–9 under 35 U.S.C. § 101 is therefore maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BUSCH whose telephone number is (571)270-7953. The examiner can normally be reached M-F 10-7.
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/CHRISTOPHER C BUSCH/Examiner, Art Unit 3621
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