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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 29, 2025 has been entered.
Status of the Claims
Claims 1-20 are currently pending, of which 7-20 are withdrawn from consideration.
Response to Arguments
Applicant's arguments with respect to the rejections made under § 112(b) have been considered but are not persuasive because they do not rebut the issues raised in the rejection.
Applicant's arguments filed with respect to the rejection made under § 101 (Remarks, 5-13) have been fully considered but they are not persuasive for reasons already of record (Final Rejection mailed 2/27/2024, ¶ 6) and because they argue elements not recited by the claims.
Applicant's arguments filed with respect to the rejection made under § 103 (Remarks, 1-4) have been fully considered but they are not persuasive for reasons already of record (Final Rejection mailed 3/27/2025, ¶ 6) and because they argue elements not recited by the claims.
Claim Rejections - 35 USC § 112
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 1-6 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.
Claim 1 recites "changing the attribute data of the content based on personal identifying information associated with the user, wherein the personal identifying information includes a personal attribute of the user and a financial status of the user." The terms "personal attribute of the user" and "financial status of the user" are recited as separate elements, however they contain significant overlap. Thus, it is unclear if using a single attribute that also relates to the user's financial status (e.g., the user's income level, which meets both definitions) to change the attribute data of the content would be sufficient to infringe the claimed invention. The other independent claims contain analogous limitations. The dependent claims inherit the rejections of their respective base claims and, as such, are rejected for the same reasons.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (abstract idea without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 1-6, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., an abstract idea) without significantly more.
MPEP 2106 Step 2A – Prong 1:
The claims recite an abstract idea reflected in the recited representative functions of the independent claims—including requesting, at a user, content for display; receiving attribute data about the content; changing the attribute data of the content based on personal identifying information associated with the user, wherein the personal identifying information includes a personal attribute of the user and a financial status of the user; receiving a record, wherein the record is retrievable using the personal identifying information associated with the user, and wherein the record is stored; rendering the display of the content; modifying the attribute data of the content based on the record; and sending data about the modification.
These limitations taken together qualify as a method of organizing human activities because they recite collecting and analyzing information for customizing user-requested content based on recorded attributes (i.e., in the terminology of the 2019 Revised Guidance, commercial interactions (including marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people).
It shares similarities with other abstract ideas held to be non-statutory by the courts (see Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015)—tailoring sales information presented to a user based on, e.g., user data or time data, similar because at another level of abstraction the claims could be characterized as tailoring content information presented to a user based on, e.g., content attribute data or personal attribute data; Affinity Labs of Texas, LLC v. Amazon.com, 838 F.3d 1266 (Fed. Cir. 2016)—delivering user-selected media content to portable devices, which also characterizes the invention).
These cases describe significantly similar aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
MPEP 2106 Step 2A – Prong 2:
This judicial exception is not integrated into a practical application because there are no meaningful limitations that transform the exception into a patent eligible application. The elements merely serve to provide a general link to a technological environment (e.g., computers and the Internet) in which to carry out the judicial exception (three generic devices with a memory and different device addresses, digital record—all recited at a high level of generality). Although they have and execute instructions to perform the abstract idea itself (e.g., modules, program code, etc. to automate the abstract idea), this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." Aside from such instructions to implement the abstract idea, they are solely used for generic computer operations (e.g., receiving, storing, retrieving, transmitting data), employing the computer as a tool. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.") (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,1256 (Fed. Cir. 2014)) (emphasis added).
The claims only manipulate abstract data elements into another form. They do not set forth improvements to another technological field or the functioning of the computer itself and instead use computer elements as tools to improve the functioning of the abstract idea identified above. Looking at the additional limitations and abstract idea as an ordered combination and as a whole 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 improves any other technology. Rather than any meaningful limits, their collective functions merely provide generic computer implementation of the abstract idea identified in Prong One. None of the additional elements recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
At the levels of abstraction described above, the claims do not readily lend themselves to a finding that they are directed to a nonabstract idea. Therefore, the analysis proceeds to step 2B. See BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.") (citations omitted).
MPEP 2106 Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons as presented in Step 2A Prong 2 (i.e., they amount to nothing more than a general link to a particular technological environment and instructions to apply it there). Moreover, the additional elements recited are known and conventional computing elements (three generic devices with a memory and different device addresses, digital record—see published Specification ¶¶ 0090, 100-01 describing these at a high level of generality and in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy the statutory disclosure requirements).
The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, retrieving, transmitting data—see Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these basic computer functions).
"The use and arrangement of conventional and generic computer components recited in the claims—such as a database, user terminal, and server— do not transform the claim, as a whole, into 'significantly more' than a claim to the abstract idea itself. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea." Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed. Cir. 2017) (citations and quotation marks omitted). 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 improves any other technology. Their collective functions merely provide conventional computer implementation.
Dependent Claims Step 2A:
The limitations of the dependent claims but for those addressed below merely set forth further refinements of the abstract idea without changing the analysis already presented (i.e., they merely narrow the abstract idea without adding any new additional elements beyond it). Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general technological environment and instructions to implement the abstract idea as the independent claims (generic devices and digital records). Although claim 3 adds "programmable media" and claim 5 adds a generic network and some forms of Internet device identifiers (IP address, MAC address, device identifier), these do not integrate the abstract idea into a practical application for the same reasons as the elements in the independent claims (i.e., they amount to nothing more than generally linking the abstract idea to a particular technological environment, e.g., computers and the Internet).
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. Although they add the elements identified in 2A above (programmable media, a generic network, and some forms of Internet device identifiers (IP address, MAC address, device identifier)), these do not amount to significantly more for the same reasons they fail to integrate the abstract idea into a practical application. Moreover, the Specification also indicates this is the routine use of known components for the same reasons presented with respect to the elements in the independent claims above (see ¶¶ 0089, 101). Accordingly, they are not directed to significantly more than the exception itself, and are not eligible subject matter under § 101.
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 (i.e., changing from AIA to pre-AIA ) 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Dessert, et al., U.S. Pat. Pub. No. 2014/0239066 (Reference A the PTO-892 part of paper no. 202230901) in view of Ouimet, et al., U.S. Pat. Pub. No. 2014/0156392 (Reference B of the PTO-892 part of paper no. 202230901).
As per claim 1, Dessert teaches a method of transmitting data, comprising:
requesting, at a first digital device of a user, content for display from a second digital device (¶¶ 0182, 198, see also ¶ 0211—first device);
receiving attribute data about the content, from the second digital device (¶¶ 0182-84, 198);
changing the attribute data of the content based on personal identifying information associated with the user, wherein the personal identifying information includes a personal attribute of the user and a financial status of the user (¶¶ 0165, 185-86, 189, 194-95);
receiving, at the first digital device, a digital record from a third digital device, wherein the digital record is retrievable using the personal identifying information associated with the user, and wherein the digital record is stored in a memory device in the third digital device (¶¶ 0180, 192);
rendering the display of the content (¶ 0194; Fig. 2F);
modifying the attribute data of the content based on the digital record (¶ 0194; Fig. 2F); and
sending data about the modification to the third digital device (¶¶ 0196, 203, 225).
Dessert does not explicitly teach the first, second, and third digital devices have different device addresses; which is taught by Ouimet (¶ 0069). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Ouimet—namely, to uniquely identify and enable communication between devices on a network. Moreover, this is merely a combination of old elements in the art of ecommerce platform sales. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 2, Dessert in view of Ouimet teaches claim 1 as above. Dessert further teaches the personal identifying information are further associated with a characteristic of a product, service, person, or entity (¶¶ 0186-89).
As per claim 3, Dessert in view of Ouimet teaches claim 1 as above. Dessert further teaches the digital record further comprises programmable media that can store data, which is accessible and readable by the third digital device (¶¶ 0044, 180).
As per claim 4, Dessert in view of Ouimet teaches claim 1 as above. Dessert further teaches the digital record is accessed using a clearinghouse that links a record and attribute with at least a third digital device (¶¶ 0180, 192, 198).
As per claim 5, Dessert in view of Ouimet teaches claim 1 as above. Ouimet further teaches the digital record is accessible on a network using at least one IP address, MAC address, or device identifier (¶¶ 0069, 82, 172), which would have been obvious to incorporate for the same reasons as the elements in claim 1 above.
As per claim 6, Dessert in view of Ouimet teaches claim 1 as above. Dessert further teaches the digital record stores an amount associated with an account, currency, reward, balance, points, money, crypto, and combinations thereof (¶¶ 0182, 188).
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 DANIEL VETTER whose telephone number is (571)270-1366. The examiner can normally be reached M-F 9:00-6:00.
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/DANIEL VETTER/Primary Examiner, Art Unit 3628