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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/18/2026 has been entered.
Response to Amendment
Claims 1-3, 5, 7, and 9-20 are currently amended.
Claims 1-20 are currently pending and addressed below.
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 1-20 is/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 nature phenomenon, or an abstract idea) without significantly more.
Step 1:
Claims 1-20 is/are directed towards a statutory category (i.e., a process, machine, manufacture, or composition of matter) (Step 1, Yes).
Step 2A Prong One:
Claim 1 recites (additional elements underlined):
A method comprising:
performing, by an ad proxy server comprising a processor and memory storing executable instructions, an ad proxy service, including:
receiving, over a network from a client device that is rendering media content, a prepare request, transmitted at a first defined time offset prior to a scheduled ad break identified within the media content;
in response to the prepare request, initiating a preparation window having a bounded duration prior to the ad break, during which the ad proxy server maintains a server-side state associated with the client device and issues network requests to a plurality of heterogeneous ad servers according to a prioritized schedule stored in memory;
monitoring, during the preparation window, for a trigger event comprising expiration of the preparation window or receipt of a fetch request from the client device;
in response to the trigger event, finalizing a standardized ad metadata structure stored in the memory of the ad proxy server based on metadata received from at least one of the plurality of heterogeneous ad servers; and
in response to the fetch request received at a second defined time offset prior to the ad break, transmitting the finalized standardized ad metadata structure to the client device, wherein ad negotiation operations are decoupled from advertisement playback to streamline processing by the client device.
Under the broadest reasonable interpretation, the limitations outlined above that describe or set forth the abstract idea, cover performance of the limitations in the mind but for the recitation of generic computer(s) and/or generic computer component(s). That is, other than reciting the additional elements identified below, nothing in the claim precludes the limitations from practically being performed in the mind. These limitations are considered a mental process because the limitations include an observation, evaluation, judgment, and/or opinion. These limitations are also similar to “collecting information, analyzing it, and displaying certain results of the collection and analysis” and/or “collecting and comparing known information” which were determined to be mental processes in MPEP 2106.04(a)(2)(III)(A). The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer” (see MPEP 2106.04(a)(2)(III)(C)). The mere nominal recitation of the additional elements identified above do not take the claims out of the mental process grouping. Therefore, the claim recite a mental process (Step 2A Prong One, Yes).
The limitations outlined above also describe or set forth an advertising/marketing activity. Advertising/marketing fall within the certain method of organizing human activity enumerated grouping of abstract ideas. The limitations outlined above also describe or set forth a fundamental economic principle or practice because advertising/marketing is related to commerce and economy. The limitations outlined above also describe or set forth a commercial interaction (e.g., advertising, marketing or sales activities or behaviors, business relations). The limitations outlined above also describe or set forth the managing of personal behavior or relationships or interactions between people. Therefore, the claim recites a certain method of organizing human activity (Step 2A Prong One, Yes).
Step 2A Prong Two:
In Step 2A Prong Two, the additional element(s) outlined above are recited at a high level of generality, and under the broadest reasonable interpretation, are generic computer(s) and/or generic computer component(s) that perform generic computer functions. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional element(s) amount adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computer(s) and/or generic computer component(s) does not integrate the judicial exception similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. The Examiner notes that “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter" (see pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use (e.g., in a computer environment). The courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. There is no indication that the combination of elements improves the functioning of a computer, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses 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 claims as a whole is more than a drafting effort designed to monopolize the exception. Their collective functions merely provide generic computer implementation (Step 2A Prong Two, No).
Step 2B:
In Step 2B, the additional elements also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong Two. The Examiner notes that revised Step 2A Prong Two overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Their collective functions merely provide generic computer implementation (Step 2B, No).
Claim(s) 2-9 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 1 (i.e., certain methods of organizing human activities and/or mental processes).
Claim 2 recites the additional elements “the plurality of heterogeneous ad servers, from a pool of ad servers.” Claim 3 recites the additional elements “client,” “regarding the client device,” “the plurality of heterogeneous ad servers.” Claims 5-6 and 9 recite the additional elements “client device.” Claim 7 recites the additional elements “the plurality of heterogeneous ad servers from the pool of ad servers” and “the plurality of heterogeneous ad server.” However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claims 4 and 8 do not recite any other additional elements. Therefore, for the same reasons explained above with respect to claim 1, claims 4 and 8 also do not integrate the judicial exception into a practical application or amount to significantly more.
Claim 10 recites (additional elements underlined):
A system comprising:
an ad proxy server, including:
a communication interface configured for network communication with client devices and a plurality of heterogeneous ad servers;
a memory storing executable instructions, prioritized access schedules, and standardized ad metadata structures; and
a processing system configured to execute the instructions to:
receive a prepare request from a client device at a first time offset prior to an ad break scheduled in media content rendered by the client device;
establish a preparation window during which network-based ad negotiation is performed independently of media playback timing;
normalize advertisement responses received from the plurality of heterogeneous ad servers into a standardized ad metadata structure stored in memory;
monitor, during the preparation window, for a trigger event comprising expiration of the preparation window or receipt of a fetch request from the client device;
finalize a standardized ad metadata structure stored in the memory of the ad proxy server in response to the trigger event; and
in response to the fetch request received at a second defined time offset prior to the ad break, transmit the finalized standardized ad metadata structure to the client device, wherein ad negotiation operations are decoupled from advertisement playback to streamline processing by the client device.
For the same reasons explained above with respect to claim 1, claim 10 also recites an abstract idea in Step 2A Prong One. For the same reasons explained above with respect to claim 1, claim 10 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claim(s) 11-15 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 10 (i.e., certain methods of organizing human activities and/or mental processes).
Claim 11 recites the additional elements “comprising the ad proxy server further configured to,” “regarding the client device,” and “network-based.” Claim 12 recites the additional elements “comprising the ad proxy server further configured to” and “client device.” Claim 13 recites the additional elements “comprising the ad proxy server further configured to,” “multiple ad servers, from the plurality of heterogeneous ad servers,” and “the multiple ad servers.” Claim 14 recites the additional elements “comprising the ad proxy server further configured to” and “client device.’ Claim 15 recites the additional elements “the client device configured to” and “to the ad proxy server.” However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claim 16 recites (additional elements underlined):
A memory device storing instructions that, when executed, cause a processor to perform a method comprising:
coordinating timed network communication, by a client device, with a remote from an ad proxy service server configured to perform advertisement preparation independent of advertisement playback, including:
obtaining ad configuration information identifying a scheduled ad break within media content rendered by the client device;
sending, over a network, a prepare request to the ad proxy server at a first defined time offset prior to the scheduled ad break, the prepare request initiating a server-side preparation window during which advertisement negotiation is performed by the ad proxy server;
sending, over the network, a fetch request to the ad proxy server at a second defined time offset that is later than the first defined time offset and closer to the scheduled ad break;
receiving, in response to the fetch request, a finalized standardized ad metadata structure generated by the ad proxy server during the preparation window;
obtaining advertisement content based on the finalized standardized ad metadata structure without performing advertisement negotiation operations at the client device; and
displaying the obtained advertisement content during scheduled the ad break, wherein ad negotiation operations are decoupled from advertisement playback to streamline processing by the client device.
For the same reasons explained above with respect to claim 1, claim 16 also recites an abstract idea in Step 2A Prong One. For the same reasons explained above with respect to claim 1, claim 16 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claim(s) 17-20 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 16 (i.e., certain methods of organizing human activities and/or mental processes).
Claim 17 recites the additional elements “storing instructions that, when executed, cause the processor to,” “from an ad server,” and “network address.” Claim 18 recites the additional elements “storing instructions that, when executed, cause the processor to,” “client system,” and “to the ad proxy server.” Claim 19 recites the additional elements “storing instructions that, when executed, cause the processor to,” “client system,” client device,” and “from the ad server.” Claim 20 recites the additional elements “storing instructions that when executed, cause the processor to” and “to a remote system.” However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Prior Art
After an comprehensive search on the claims as currently amended, they are found to recite novel and non-obvious subject matter. While the prior art teach some of the limitations of the claimed invention, one of ordinary skill in the art would not have arrived at Applicant’s claimed invention unless one was using Applicant’s claims and specification as a roadmap, thus using impermissible hindsight. The closest prior art found to date are the following
Shanson et al. (US 2016/0127803 A1) discloses a system and method for providing an advertisement calling proxy server.
Berger et al. (US 2015/0074715 A1) discloses the concept of storing the ad metadata for the selected number of ads to a list data structure, and providing the list data structure to the client device.
Wen et al. (US 2015/0358689 A1) discloses the concept of receiving a fetch request from the client device to retrieve ads.
Response to Arguments
Applicant's arguments filed 05/18/2026 have been fully considered but they are not persuasive. In the Remarks, Applicant argues:
Argument: “The focus of the amended claims is not on advertising, bidding, or commercial decision-making. Rather, the claims are directed to coordinating timing-constrained network interactions between client devices and remote servers so as to streamline processing, improve computational efficiency, and improve negotiated advertisement operations at client computing devices. This is a technical solution to a technical problem that arises specifically in networked media delivery systems-namely, how to perform time-sensitive data negotiation without disrupting real-time rendering of streaming or stored media. As recited, the claimed protocol behavior cannot be practically performed in the human mind and does not merely collect, analyze, or display information. Accordingly, the amended claims are cannot be characterized as mental processes or as methods of organizing human activity under Step 2A, Prong One…. These limitations impose meaningful constraints that improve the operation of the technical field of distributed media delivery systems by ensuring that network negotiation does not compete with, or delay, real-time playback by streamlining processing at the client device. This is precisely the type of technical field improvement identified as a practical application under the USPTO's Revised Patent Subject Matter Eligibility Guidance. Notably, the Examiner previously acknowledged that the claimed timed prepare/fetch arrangement is not disclosed by the prior art. While novelty alone is not determinative under § 101, the absence of prior art implementing this timing-constrained protocol further underscores that the claims recite a specific technical solution, not a generic business practice.”
In response, the Examiner respectfully disagrees. First, the limitations that describe or set forth the abstract idea in Step 2A Prong One clearly describe an advertising/marketing activity which falls within the certain methods of organizing human activity grouping of abstract ideas. The limitations also fall within the mental process grouping of abstract ideas because they include an observation, evaluation, judgment, and/or opinion. These limitations are also similar to “collecting information, analyzing it, and displaying certain results of the collection and analysis” and/or “collecting and comparing known information” which were determined to be mental processes in MPEP 2106.04(a)(2)(III)(A). Therefore, the claims recite an abstract idea in Step 2A Prong One.
Second, there is no indication from the claims or specification that the claimed invention improves computational efficiency. As explained in the Final rejection and agreed with by the PTAB in the Decision mailed on 03/18/2026, “having a second computer (e.g., ad proxy server) perform a task of the first computer (e.g., client device) does not provide an improvement to the functioning of the first computer. To the extent the claimed invention reduces the complexity of the client device and the workload and data traffic required by the client device at all, that reduction is ostensibly no more than the natural and inevitable result of shifting performance of the negotiating tasks from the client device to the ad proxy server” (pp. 14-15 of the PTAB Decision in Appeal 2025-003409).
Third, the alleged improvement is entirely in the realm of the abstract idea (i.e., improvement to advertising), not a technical solution to a technical problem. Similar to the claimed invention in SAP, the advance here lies entirely in the realm of the abstract idea, with no plausibly alleged innovation in the non-abstract application realm.
Fourth, “[a]s made clear by the courts, the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter” (MPEP 2106.05(I)).
Argument: “The present claims do not merely place an abstract idea on a generic computer. Instead, they recite a particular arrangement and interaction of system components that enforces: " defined time offsets relative to scheduled ad breaks; " server-side preparation windows distinct from playback operations; and " structured exchange of finalized metadata immediately prior to playback. This ordered combination of limitations reflects a non-generic protocol architecture that governs how distributed components behave under real-time constraints. As such, the claims are analogous to those found eligible in cases such as DDR Holdings, BASCOM, and Amdocs, where specific network architectures and timing-dependent behavior were held to constitute patent-eligible subject matter…. The amendments materially change the §101 analysis by clarifying that the claims are directed to a technical solution in the field of networked media delivery, rather than to advertising or commercial activity.”
In response, the Examiner respectfully disagrees. Unlike in DDR in which the claimed invention solved the business challenge of retaining website visitors that is particular to the Internet, here the claimed invention amounts to merely reciting the performance of a business practice along with the requirement to perform it on the Internet. The claimed invention here is not necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks. “We caution, however, that not all claims purporting to address Internet-centric challenges are eligible for patent” (see p. 22 of DDR Holdings, LLC v. Hotels.com, L.P. (Fed. Cir. 2014)). The claims here are ineligible because their innovation is an innovation in ineligible subject matter. The advance here lies entirely in the realm of the abstract idea.
Unlike in Bascom in which the particular arrangement of known elements provided a technical improvement over prior art ways of filtering content, here 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, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses 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 claims as a whole is more than a drafting effort designed to monopolize the exception. Their collective functions merely provide generic computer implementation. The claims at issue do not require any non-conventional computer, network or display components, or even a non-conventional and non-generic arrangement of known conventional pieces. The claims at issue merely call for the performance of the claimed invention on a set of generic computer components and display devices.
Unlike in Amdocs in which the claimed invention’s distributed network architecture operated in an unconventional fashion to reduce network congestion while generating networking accounting data records, the claimed invention here does not reflect such improvements. Additionally, the specification is silent with regard to such technical improvements as did the claimed invention in Amdocs.
Therefore, the claims as currently amended still do not integrate the judicial exception into a practical application or amount to significantly more.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAM REFAI whose telephone number is (313)446-4822. The examiner can normally be reached M-F 9:00am-6:00pm.
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/SAM REFAI/Primary Examiner, Art Unit 3621
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