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 .
DETAILED ACTION
Status of Claims
This action is in reply to the communication filed on 07/09/2026.
Claims 1-20 are currently pending and have been examined.
Response to Applicant’s Arguments
Applicant’s amendments and arguments filed on 07/09/2026 have been fully considered and discussed in the next section. Applicant is reminded that the claims must be given its broadest, reasonable interpretation.
With regard to claims 1-20 rejection under 35 USC § 101:
Step 2B: The Claims Recite an Inventive Concept
Applicant argues that “ Claim 1 directly reflects this improvement by reciting the generation of the machine learning model based on cross-regional correlations, predicting the counterfactual outcomes, and actively "adjusting the digital component distribution criteria for the first region based on the comparison." This is not a mere instruction to "apply it" on a generic computer; rather, it is a specific, concrete technical action that improves network operations and machine learning efficiency, directly aligning with the established framework of USPTO guidance. Therefore, the claims amount to an inventive concept, and therefore eligible under Step 2B, such that the rejection should be withdrawn. Additionally, the claimed solution solves the problem that conventional machine learning models must be retrained from scratch for every separate geographical area, which wastes processing cycles and memory, thereby increasing computational overhead. This problem is solved by generating a cross-regional machine learning model. As the Specification explicitly notes, "the methods described in this specification do not require a machine learning model to be retrained for predicting the performance of digital component distribution in different geographical areas thereby saving time and valuable computing resources." (Specification at [0014]). "Instead, the machine learning model can be trained to predict the performance of digital component distribution across all geographical areas while taking into account any correlation that might exist between the performances between different geographical areas." (Specification at [0014]). This is expressly recited in Claim 1 ("generating a machine learning model ... configured to predict ... based on a correlation between ... the first region ... and the second region"). For this additional reason, the claims include an inventive concept, and should be deemed patent eligible under Step 2B. For at least these reasons, withdrawal of the 35 U.S.C. § 101 rejection is respectfully requested (page 2-3/3)”.
Examiner disagrees. Since the steps of “generation of the algorithm based on cross-regional correlations, predicting the counterfactual outcomes, and actively "adjusting the digital component distribution criteria for the first region based on the comparison”; are part of the abstract idea itself, they are not capable of transforming the abstract idea into a practical application under Step 2a, Prong 2 and not capable of being considered "significantly more" under Step 2b.
Only technological improvements rooted in the "additional elements" of a claim are capable of transforming an abstract idea into a practical application under Step 2a, Prong 2, and only "additional elements" are capable of being considered "significantly more" under Step 2b.
Additional elements are those elements outside of the identified abstract idea itself. In the instant case the only additional elements are ““ computer, device and machine learning model”, as evidenced by [84] of the specification ,] which are just general-purpose computers with generic computing components upon which the abstract idea is applied which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2 or be considered significantly more under Step 2b.
Thus, any purported technological improvement obtained by practicing the claimed invention is rooted solely in the abstract idea itself which is merely applied using the general-purpose computer, and not rooting in the additional elements upon which the abstract idea is applied.
Improvements of this nature are improvement to an abstract idea which are improvements in ineligible subject matter (SAP v. Investpic decision: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.).
Furthermore, Alice decision requires the "additional elements" of the claim which must contribute something "significantly more" than the abstract idea itself that is far from routine and conventional. However, the only "additional elements" in the applicant's claims are “ computer, device and machine learning model:, which are general- purpose computer. These "additional elements" are merely used as a tool to apply the abstract idea which is insufficient to be considered "significantly more" than the abstract idea. The argued limitations which the applicant asserts are far from routine and conventional are part of the abstract idea itself and not "additional elements" of the claimed invention. Thus, the argued limitations are not capable of being considered "significantly more" under Step 2b. Instead, the argued limitations that the applicant asserts are far from routine and conventional would be, at best, an improvement to the abstract idea which is an improvement in ineligible subject matter. As such, the applicant's arguments are not convincing and the rejections have been maintained. Accordingly, the claim rejection of claims 1-20 35 U.S.C. § 101 is maintained.
Additionally, Examiner asserts that the rejection of claims under 35 USC 101 is separate and distinct from rejections for anticipation and obviousness. Rejecting the claims under 35 U.S.C. § 102 and/or 35 U.S.C. § 103 has no bearing or consequence on the materiality of a rejection under 35 U.S.C. § 101.
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 are directed to a system and a method which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes). However, claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the following abstract idea: “ obtaining, based on digital component distribution criteria, data quantifying digital component distribution in a first region during a first predetermined period of time; obtaining data quantifying digital component distribution in a second region during the first predetermined period of time; generating an algorithm that is configured to predict a first outcome quantifying digital component distribution in the first region based on a correlation between the data quantifying digital component distribution in the first region during the first predetermined period of time and the data quantifying digital component distribution in the second region during the first predetermined period of time; obtaining data quantifying digital component distribution in the first region during a second predetermined period of time; predicting, using the algorithm, a predicted second outcome quantifying digital component distribution in the first region during the second predetermined period of time; comparing the predicted second outcome during the second predetermined period of time with the data quantifying digital component distribution in the first region during a second predetermined period of time; and adjusting the digital component distribution criteria for the first region based on the comparison”.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising, marketing and sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of “ computer, device and machine learning model” (e.g. a general purpose computer with generic computer components) and a database to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and one or more generic computer component.
More The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor and generic computer components performing a generic computers function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using 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 claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on one or more computers, or merely uses computers as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes).
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
Specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using “ computer, device and machine learning model” , to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and one or more generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “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 FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). 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 the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on one or more computers, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires one or more general-purpose computer and generic computer components (as evidenced from paragraphs 84 of the applicant’s specification) and the affinity v Direct TV decision which states that a database is a generic computer component); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e., “PEG” Step 2B=No). For the same reason these elements are not sufficient to provide an inventive concept. For these reasons, there is no inventive concept in the claim, and thus the claim is not patent eligible. Same Judicial analysis is applied here to independent claims 10 and 19.
The dependent claims 2-9, 11-18 and 20 appears to merely further limit the abstract idea of Certain methods of organizing Human Activity” as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations), which is considered part of the abstract idea and therefore only further limit the abstract idea (i.e. MPEP Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. MPEP Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. MPEP Step 2B=No). Thus, based on the detailed analysis above, claims 1-20 are not patent eligible.
Possible Allowable Subject Matter
Claims 1-20 would be allowable if the applicant were to be able to overcome the Claim rejection under 35 USC § 101.
Jiang et al, US Pub No: 2015/0348134 A1 teaches An advertiser specifies an advertising campaign including one or more targeting criteria for presentation to users of an online system, which retrieves information describing previously completed advertisement auctions for presenting advertisement to users of the online system satisfying one or more of the targeting criteria. Based on the retrieved information, the online system associates various bid amounts with the advertising campaign and determines the advertising campaign's estimated performance for various bid amounts. For each bid amount, the online system determines a number of previously completed advertisement auctions that would have selected an advertisement from the advertising campaign, an amount that would have been charged to the advertiser if an advertisement campaign was selected, and a number of distinct users that would have been presented with an advertisement from the advertising campaign.
Maycotte et al, US Pub No: 2015/0088635 A1 teaches Systems and methods of measurement and modification of advertisements and content are described. In one example, advertisements/content items (or web servers or applications that present the advertisements/content items) send signals to a measurement server in response to certain events or actions. The signals identify the advertisement/content item and the user that caused the event or performed the action. The measurement server aggregates received signals from different advertisements/content items to determine metrics such as digital brand lift (e.g., a change in brand awareness due to an advertisement/advertising campaign). The measurement server can send computed information back to an advertisement/content item, so that the advertisement/content item (or web server/application) can self-modify and/or deploy additional advertisements/content items.
As thus, none of the cited reference discloses the claimed features of the independent claims 1,10,19. Accordingly, the claims subject matter of claims 1-20 would be allowable over the prior art, if the applicant would able to overcome the claim rejections under 35 USC 101 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Polachi, US Pub No: 2014/0164118 A1, teaches Systems and methods for statistical dynamic geofencing are discussed. For example, a method for statistical dynamic geofencing can include operations such as receiving a location-based campaign request, analyzing demographic data, determining a geofence parameter, generating a geofence, and distributing location-aware advertisements. The location-based campaign request can include a list of points of interest (POIs) and a target demographic parameter. The demographic data can include data from geographic areas surrounding at least a portion of the POIs as well as data related to the target demographic parameter. The geofence can be generated based at least in part on the geofence parameter, where the geofence parameter directly affects either the size or shape of the geofence. The location-aware advertisements are distributed to a plurality of mobile devices determined to be within the geofence.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 files within TWO MONTHS from 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Affaf Ahmed whose telephone number is 571-270-1835. The examiner can normally be reached on [ Mon-Thursday 8-6 pm ].
If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Ilana Spar can be reached at 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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/AFAF OSMAN BILAL AHMED/
Primary Examiner, Art Unit 3622
