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 .
Status of the Application
This action is in response to the Request for Continued Examination filed September 29, 2025. Claim 1-2, 4-5, 7, 10, 27-35 and 37-39 are amended. Claims 1-2, 4-5, 7-8, 10 and 27-39 are pending and have been examined in this application.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/29/2025 has been entered.
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 1-2, 4-5, 7-8, 10 and 27-39 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 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
In Claims 1 and 30 the limitation “wherein a respective second data structure is generated corresponding to each media asset of the plurality of media assets, and wherein each respective second data structure comprises a plurality of congruent objects represented in each frame in the respective media asset,” is not supported by the original disclosure. A review of the specification does not describe that a second data structure is generated that corresponds to each media asset of the plurality of media assets, nor a second data structure that comprises a plurality of congruent objects represented in each frame of media asset. Accordingly, this is impermissible new matter, and applies to all limitations reciting a second data structure. Claims 2, 4-5, 7-8, 10, 27-29, 39 and 31-38 by being dependents of claims 1 and 30 respectively are also rejected.
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 1-2, 4-5, 7-8, 10 and 27-39 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 pre-AIA the applicant regards as the invention.
Claims 1 and 30 recite the limitations “the respective secondary content item” in several lines of claims 1 and 30 respectively. There is insufficient antecedent basis for the limitation in the claims. Claims 2, 4-5, 7-8, 10, 27-29, 39 and 31-38 by being dependents of claims 1 and 30 respectively are also rejected.
Claims 1 and 30 recite the limitations “the plurality of media assets” in several lines of claims 1 and 30 respectively. There is insufficient antecedent basis for the limitation in the claims. Claims 2, 4-5, 7-8, 10, 27-29, 39 and 31-38 by being dependents of claims 1 and 30 respectively are also rejected.
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 1-2, 4-5, 7-8, 10 and 27-39 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.
Claims 1-2, 4-5, 7-8, 10 and 27-39 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Specifically, claims 1-5, 7-8, 10 and 27-39 are directed toward at least abstract idea without significantly more. In accordance with MPEP § 2106, the rationale for this determination is explained below.
Representative claim 1 is directed towards a method, claim 30 is directed towards a system, which are statutory categories of invention.
Although, claim 1 is directed toward a statutory category of invention, the claim is nonetheless directed toward a judicial exception namely an abstract idea. The limitations that set forth the abstract idea recites: tracking, user consumption activity of content; identifying a secondary content item from a plurality of secondary content items for recommendation based on the tracked user consumption activity, wherein a respective first data structure is generated corresponding to each secondary content item of the plurality of secondary content items, wherein each first data structure comprises a plurality of congruent objects represented in each frame in the respective secondary content item and classifies each congruent object based on a respective level of relationship between the respective congruent object and a subject of the respective secondary content item, and wherein each level of relationship corresponds to a respective reinforcement level; determining a reinforcement level for recommending on a social media platform, at a time prior to recommending the identified secondary content item, one or more media assets of a plurality of media assets, wherein the one or more media assets are not the same as the identified secondary content item, wherein a respective second data structure is generated corresponding to each media asset of the plurality of media assets, and wherein each respective second data structure comprises a plurality of congruent objects represented in each frame in the respective media asset; determining that the one or more congruent objects of the secondary content data structure corresponds with one or more congruent objects of the respective media asset data structure of each of the one or more media assets; searching, via storage, the plurality of second data structures for one or more second data structures having one or more congruent objects corresponding to the selected one or more congruent objects of the first data structure corresponding to the identified secondary content item; based on determining one or more second data structures that have one or more congruent objects corresponding to the selected one or more congruent objects of the first data structure, identifying the respective one or more media assets corresponding to the determined one or more second data structures; transmitting, to a social media server, a recommendation for (a) selecting a media asset from the identified one or more media assets and (b) the identified secondary content item; based on receiving the recommendation: selection of a media asset from the one or more media assets of the plurality of media assets posted on the social media platform. These limitations, entail commercial interactions including, advertising, marketing or sales activities and business relations; as well as managing personal behavior or relationships including social activities and following rules or instructions. As such, the limitations are directed towards the abstract grouping of Certain Methods of Organizing Human Activity in prong one of step 2A of the Alice/Mayo test (see MPEP 2106.04(a)(2) II).
The judicial exceptions are not integrated into a practical application because, when analyzed as a whole under prong two of step 2A of the Alice/Mayo test (see MPEP 2106.04(d)), the additional elements provided by the claim are recited at a high level of generality and amount to merely using a computer as a tool to apply an abstract idea, or instructions to implement the abstract idea on a computer and extra-solution activity. In particular the claim recites the additional elements of: causing by the server, transmitting of display instructions for automatically playing the selected media asset on the social media platform at a time prior to playing the identified secondary content item, which amounts to insignificant extra-solution activity because such activity is merely post-solution data outputting. See MPEP 2106.05(g). While the additional elements: by a server; by the server, by the server; by the server; automatically causing by the server; causing by the server, which are recited at a high level of generality and are the mere use of a computer as a tool to perform the abstract ideas. See MPEP 2106.05(f). Simply applying the abstract idea by computer components and adding insignificant extra-solution activities is not a practical application of the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claim does not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claim does not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claim does not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e)). Therefore, the claim does not, for example, purport to improve the functioning of a computer. Nor does it effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claim is directed to abstract ideas.
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 claim recites additional limitations amounting to extra-solution activity and using a computer to apply the abstract idea. Viewing the limitations individually, the transmitting of display instructions for automatically playing the selected media asset on the social media platform at a time prior to playing the identified secondary content item, amount to insignificant extra-solution activity because it amounts to necessary data outputting in implementing the aforementioned abstract concepts, see MPEP 2106.05(g). The courts have recognized automating mental tasks and receiving or transmitting data over a network to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity. See MPEP 2106.05(d)(II); Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1321, 120 USPQ2d 1353, 1362 (Fed. Cir. 2016); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015).
Moreover, the limitations generically referring to a server, social media server and circuitry (claim 30), which do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment1. Viewing these limitations as a combination, the additional elements amount to no more than merely applying the exception using a generic computer system, executing basic functions of a computer. Merely applying an exception using generic computer components cannot provide an inventive concept. See TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept). Therefore, the limitations of the claim as a whole, when viewed individually and as an ordered combination, do not amount to significantly more than the abstract idea.
A review of dependent claims 2, 4-5, 7-8, 10, 27-29 and 39, likewise, do not recite any limitations that would remedy the deficiencies outlined above. The claims only further add to the abstract idea, with no elements which integrate the abstract idea into a practical application or constitute significantly more. Thus, while they may slightly narrow the abstract idea by further describing it, they do not make it less abstract and are rejected accordingly. Further still, claims 30-38 suffer from substantially the same deficiencies as outlined with respect to claims 1-2, 4-5, 7-8, 10, 27-29 and 39 and are also rejected accordingly.
Response to Arguments
Applicant's filed arguments have been fully considered but have not been found persuasive.
A. Applicant argues regarding the 35 U.S.C. § 101 rejection that the claims are not drawn to a mental process because they are necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer technology and integrate any judicial exception into a practical application. The Examiner respectfully disagrees. Although, the claims may not necessarily be directed to Mental Processes, they are not necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer technology. As noted in DDR not all claims purporting to address Internet-centric challenges are eligible for patent. See DDR Holdings, LLC. v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014). Applicant’s claims are directed to the abstract grouping of Certain Methods of Organizing Human Activity, because they set forth commercial interactions that include, advertising, marketing or sales activities and business relations; as well as managing personal behavior or relationships including social activities and following rules or instructions.
Applicant states that performing a search that corresponds to congruent objects of the first data structure for the secondary content item and to a relationship level with the subject of the secondary content item corresponding to the reinforcement level, improves the accuracy of the system to identify content recommendations that would be less intrusive to a user. However, this is directed to solving an entrepreneurial problem and not a technological one. Further still, Applicant’s specification does not describe or even suggest any technical improvement that the invention seeks to achieve neither do the claims provide a technological solution for any technical problem. The specification states that “methods and systems are needed that warmup or prime the user prior to their consumption of an ad and provide a personal touch, as such through the user's contacts, to enhance their ad consumption experience and provide for a better reinforcement of the product being displayed in the ad.” [0009]. This addresses an entrepreneurial concern and merely applying such a process by computer components does not integrate the abstract idea into a practical application or amount to significantly more than the abstract idea.
As such, the claims as a whole, in view of Alice, do not connote an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer itself; and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment. Therefore, the Examiner considers that the current 35 U.S.C. § 101 rejection has not been overcome by the Applicant.
B. The 35 U.S.C. §103 rejection is withdrawn pending the rejections above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Errol CARVALHO whose telephone number is (571)272-9987. The
Examiner can normally be reached on M-F 9:30-7:00 Alt Fri
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached on 571- 270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E CARVALHO/
Primary Examiner, Art Unit 3622
1 See, Alice Corp. Pty Ltd. v. CLS Bank lnt'l, 134 S. Ct. 2347, 2360 (2014) (noting that none of the hardware recited “offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment,’ that is, implementation via computers” (citing Bilski v. Kappos, 561 U.S. 593, 610-11 (2010))).
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