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 Claims
This action is in reply to the claims filed on 07/22/2026.
Claims 1, 18, and 21 are amended.
Claim 4 is cancelled.
Claims 12-17 are withdrawn.
Claims 1-3 and 5-21 are currently pending, and claims 1-3, 5-11, and 18-21 have been examined.
Request for Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/22/2026 has been entered.
Claim Rejections- 35 U.S.C. § 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 therefore, subject to the conditions and requirements of this title.
Claims 1-3, 5-11, and 18-21 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Under Step 1 of the subject matter eligibility (SME) analysis described in MPEP 2106.03, the instant claims fall within the four statutory categories of invention identified by 35 U.S.C. 101. In the instant case, claims 1-3, and 5-11 are directed to a method and claims 18-21 directed to a manufacture. Claims 1 and 18 are parallel in nature, therefore, the analysis will use claim 1 as the representative claim.
In Step 2A Prong One, it must be considered whether the claims recite a judicial exception. Claim 1, as exemplary, recites abstract concepts including: capturing... a frame of a multimedia segment, wherein the frame includes a subject; sending the captured frame of the multimedia segment ... to analyze the captured frame for a marked subject; receiving a marked frame ... based on the captured frame sent ... wherein the marked frame includes the marked subject having a mark associated with the subject, and wherein the marked frame replaces the captured frame of the multimedia segment, and wherein the mark comprises a highlighted border that is visibly different from an original border of the subject and is based on border location coordinates of the original border of the subject within the captured frame; determining... the subject corresponding to the marked subject having the mark included in the marked frame and associated with the subject to indicate the subject is ready for purchase; detecting ... a selection ... indicating that a portion of the marked frame corresponding to the marked subject has been selected to place an order for the subject; collecting... in response to the indication to place the order for the subject, information included in the order, wherein the information included in the order includes information about a user and information about the subject; and transmitting, to a third party shopping system, at least a portion of the order.
These identified limitations recite the abstract idea of “placing an order for a subject included in a multimedia segment”, which falls within the “Certain Methods of Organizing Human Activities” grouping of abstract ideas as it sets forth commercial interactions of sales activities and behaviors. Identifying a product (“subject ready for purchase”) in multimedia and placing an order for that product are sales activities. Accordingly, claims 1 and 18 recite an abstract idea. See MPEP 2106.04.
Claims 1 and 18 recite additional elements including: a computing device; a context server; sending/receiving to/from the content server; multimedia; transmitting to a third party shopping system; and a non-transitory computer-readable medium having instructions stored thereon. The computing device, content server, and non-transitory computer-readable medium are described at a high level of generality (as generic computers performing generic functions such as transmitting data) and invoked merely as tools for implementing the abstract idea. The limitation that the frame is of multimedia amounts to no more than generally linking the use the identified abstract idea to a particular technological environment, which cannot integrate a judicial exception into a practical application (see MPEP 2106.05(h)). Finally, the transmitting (the order) to a third party system limitation applies the abstract sales activity to a general purpose computer (system) using existing computer operations (transmitting). In combination, these elements provide mere instruction to implement the abstract idea on a computer which does not integrate the abstract idea into a practical application in Step 2A Prong Two (MPEP 2106.05(f)). Claims 1 and 18 are thus directed to an abstract idea.
Under Step 2B of the SME analysis, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) individually and in combination are merely being used to apply the abstract idea to general computer components. For the same reason, the elements are not sufficient to provide an inventive concept (MPEP 2106.05(f) “implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application in Step 2A Prong Two or add significantly more in Step 2B, 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”). Therefore, the additional elements, alone or in ordered combination, there is no inventive concept in the claim, and thus claims 1 and 18 are not patent eligible.
Dependent claim 2-3, 8, and 19-20 recite additional elements including: displaying live the multimedia segment including the frame on a display device; pausing the live displaying; and recording a subsequent portion of the multimedia segment. The display device is recited generically (i.e. as a device for “displaying”) and the claim does not recite specific technical details of how the live displaying, pausing, or recording are performed. These additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than a general link of the use of the abstract idea to a computer environment. Even in combination, these additional elements do not act to integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. Thus claims 2-3, 8, and 19-20 are also ineligible.
Dependent claim(s) 5-6, 9-10, and 21 do not aid in the eligibility of the independent claims. These claims merely further define the abstract idea without reciting any further additional elements. Thus, dependent claims 5-6, 9-10, and 21 are also ineligible.
Dependent claim 7 recites additional elements including: launching the third party shopping system by a hyperlink address or a Quick Response (QR) code. Similar to the previously address display elements, the hyperlink and QR are cited at a high level and used in their ordinary capacity to direct users to specific internet addresses. These elements are invoked as a tool in their ordinary capacity to facilitate the abstract idea, that is, the order placement (shopping activity) with a third party shopping system. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. MPEP 2106.05(f). Accordingly, claim 7 is also ineligible.
Claim Rejections - 35 U.S.C. § 112(b)
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.
Claims 1-3, 5-11, and 18-21 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 “sending the captured frame of the multimedia segment to a content server that causes the content server to analyze the captured frame for a marked subject” in lines 4-5. This limitation makes it seem as though the captured frame contains a marked subject, which is contrary to the Specification (¶ [0019], ¶ [0021]) which describes the subject becoming a marked subject. It is therefore unclear whether the marked subject in claim 1 is already present in the captured frame or not, which makes the scope of the claim unclear and indefinite. For examination purposes, claim 1 will be interpreted as if the sending causes the content server to analyze the captured frame for a subject and wherein the marked frame includes a marked subject having a mark associated with the subject.
Claim 18 recites similar limitations as identified in claim 1 and is similarly rejected for being indefinite. The dependent claims do not remedy the deficiencies of the independent claims and are also rejected.
Appropriate correction is required.
Claim Rejections - 35 U.S.C. § 103
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.
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 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 factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 5-7, 10-11, 18, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Cai (US 2012/0304065 A1) in view of Jindal et al. (US 11,398,089 B1).
Claim 1 – Cai discloses a method, comprising:
capturing, by a computing device, a frame of a multimedia segment, wherein the frame includes a subject (¶ [0029] “In response to the selection of the jacket trigger point, the online video is paused”); ...
determining, by the computing device, the subject corresponding to the marked subject having the mark included in the marked frame and associated with the subject to indicate the subject is ready for purchase (FIG. 2C; ¶ [0029] “FIG. 2C shows an example of the online video with a popup layer presented over it. In response to the selection of the jacket trigger point, the online video is paused and popup layer 254 is presented over the video. As shown in the example, popup layer 254 displays product information associated with the jacket trigger point, such as the name of the jacket, the price of the jacket, consumer reviews of the jacket, and availability of the jacket at one or more online stores.”);
detecting, by the computing device, a selection signal indicating that a portion of the marked frame corresponding to the marked subject to place an order for the subject (¶ [0029] “If the user wishes to purchase the jacket, the user may select "Buy now" button 256 to be taken to an online transaction platform at a website (e.g., in a new frame) that sells the jacket or the user may select "Add to cart" button 258 to be taken to a website (e.g., in a new frame) at which the jacket product would be added to the website's shopping cart.”);
collecting, by the computing device, in response to the indication to place the order for the subject, information included in the order, wherein the information included in the order includes information about a user and information about the subject (¶ [0029] “once the purchase transaction of the jacket is completed”, Examiner notes completing a purchase for a jacket on a website inherently requires collecting order information including information about a user (i.e. to charge the user) and information about the subject (i.e. the item purchased must be known to complete the order); and
transmitting, to a third party shopping system, at least a portion of the order (¶ [0029] “the user may select “Buy now” button 256 to be taken to an online transaction platform at a website (e.g., in a new frame) that sells the jacket”).
Cai does not disclose sending the captured frame to a content server and receiving a marked frame back. However, Jindal – which like Cai is directed to identifying products within multimedia – further teaches:
sending the captured frame of the multimedia segment to a content server that causes the content server to analyze the captured frame for a marked subject (Col 9, ll. 15-20 “According to some embodiments, in response to shopper 102 initiating the search for a jar of Welch's grape jelly by clicking find button 118, object locator system 116 automatically engages a camera component of smartphone 106 which in turn allows shopper 102 to capture scene 110”; Col 9, ll. 30-35 “Once object locator system 116 has received or otherwise has access to the desired product (a jar of Welch's grape jelly) and the captured video or image of scene 110, object locator system 116 analyzes the objects of the captured scene”);
receiving a marked frame from the content server based on the captured frame sent to the content server, wherein the marked frame includes the marked subject having a mark associated with the subject, wherein the marked frame replaces the captured frame of the multimedia segment (Col 9, ll. 30-35 “Once object locator system 116 has received or otherwise has access to the desired product (a jar of Welch's grape jelly) and the captured video or image of scene 110, object locator system 116 analyzes the objects of the captured scene and indicates the location of target product 112 in the live display of smartphone 106, by overlaying a graphical indication 120 on the displayed scene”), and wherein the mark comprises a highlighted border that is visibly different from an original border of the subject and is based on border location coordinates of the original border of the subject within the captured frame (Col 14, ll. 55-65 “For example, the captured video scene displayed on display 204 may show real-world items such as a shelving unit with multiple objects with one of the real-world objects being highlighted or otherwise indicated via a digital augmentation on the displayed scene (e.g., graying out of non-target objects, or highlighting the target object itself). The highlighting may involve, for example, a color filter or outline placed around the target object, while other examples include a mask filter around all other portions of the screen except for the location of the target object”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the receipt of the marked frame, as taught by Jindal, in the method of Cai because current image-based object identification techniques cannot discern the target can of soup from the surrounding similar looking cans of soup, or otherwise identify the target can of soup among the plurality of similar looking cans of soup (Jindal: Col 1, ll. 25-30).
Claim 5 – The combination of Cai in view of Jindal teaches the method of claim 1. Cai further discloses, wherein the mark included in the marked subject includes a graphically visible mark to indicate the subject is ready for purchase (FIG. 2B #252; ¶ [0029] “To do so, the user may move his or her computer mouse cursor over icon 252, which is associated with a trigger point associated with the jacket. In response to the cursor selecting (e.g., being placed over or clicking on) the jacket trigger point, a popup layer associated with the jacket popup layer may be presented over the video... As shown in the example, popup layer 254 displays product information associated with the jacket trigger point, such as the name of the jacket, the price of the jacket, consumer reviews of the jacket, and availability of the jacket at one or more online stores. In the example, the jacket is available for purchase and so there are two selectable elements, "Buy now" button 256 and "Add to cart" button 258, that are presented”).
Claim 6 – The combination of Cai in view of Jindal teaches the method of claim 1. Cai further discloses, wherein the subject is a first subject, the marked subject is a first marked subject having a first mark, the frame further includes a second subject (¶ [0018] “In various embodiments, trigger points are placed on one or more particular areas (e.g., an image of a product that is shown/advertised/placed in the video) of one or more feature frames of the online video.”), and the method further comprises:
determining the second subject corresponds to a second marked subject having a second mark included in the marked frame and associated with the second subject to indicate the second subject is ready for purchase (¶ [0023] “When a feature frame is shown, a user viewing the video may have the opportunity to select one or more trigger points embedded in the feature frame. In some embodiments, the location and/or availability of a trigger point is denoted by a visual indicator. In some embodiments, the visual indicator that denotes the availability and/or location of a trigger point with respect to a feature frame of the online video is an icon. For example, such an icon may display a price tag associated with an item shown in the video.” emphasis added by Examiner);
determining a selected subject which is selected from the first subject or the second subject to place an order for purchase (¶ [0033] “For example, if the trigger point were associated with a jacket shown in the video, in response to the selection of the trigger point, the preset metadata for the trigger point may be executed to display the set of predetermined product information such as the name, price, and links to online stores that sell the jacket.”; The Examiner is considering the selection of one trigger point, where multiple are displayed in the same frame as discussed in ¶ [0023], to be “related” to the first and second marked subject as the selection occurs on the frame which depicts the first and second marked subject); and
collecting information included in the order, wherein the information included in the order includes information about the user and information about the selected subject (¶ [0040] “For example, if the user clicks on the "Buy now" selection presented at the popup layer, then a new frame may open to direct the user to a webpage associated with the checkout process of an online transaction platform (e.g., of an online store). For example, if the user clicks on the "Add to cart" selection presented at the popup layer, then a new frame may open to direct the user to a webpage associated with a shopping cart webpage of an online transaction platform (e.g., of an online store). In some embodiments, if the user proceeds with completing the purchase of the product, then the user may be guided back to the webpage associated with the paused online video.”; Examiner notes a “checkout process of an online transaction platform” requires information about the user and the selected product).
Claim 7 – The combination of Cai in view of Jindal teaches the method of claim 1. Cai further discloses, wherein the transmitting, to the third party shopping system, at least the portion of the order comprises launching the third party shopping system by a hyperlink address or a Quick Response (QR) code (¶ [0040] “For example, if the user clicks on the "Buy now" selection presented at the popup layer, then a new frame may open to direct the user to a webpage associated with the checkout process of an online transaction platform (e.g., of an online store). For example, if the user clicks on the "Add to cart" selection presented at the popup layer, then a new frame may open to direct the user to a webpage associated with a shopping cart webpage of an online transaction platform (e.g., of an online store)”).
Claim 10 – The combination of Cai in view of Jindal teaches the method of claim 1. Cai further discloses, wherein the selection signal includes an indication of a location of the marked subject being selected by the user (Cai ¶ [0023] “In some embodiments, the location and/or availability of a trigger point is denoted by a visual indicator. In some embodiments, the visual indicator that denotes the availability and/or location of a trigger point with respect to a feature frame of the online video is an icon. For example, such an icon may display a price tag associated with an item shown in the video. In some embodiments, the location and/or availability of a trigger point is invisible to the user until the user places a cursor over the general region of the trigger point.”).
Claim 11 – The combination of Cai in view of Jindal teaches the method of claim 1. Cai further discloses, wherein the frame is captured by an application software operating on a mobile device (¶ [0020] “A user may use a web browser application at client 102 to stream online videos from one or more websites.”; ¶ [0026] “In some embodiments, in response to a selection being made with respect to a trigger point, the online video pauses. In some embodiments, in response to a selection being made with respect to a trigger point (e.g., a mouse moves over the trigger point), a message is sent to the server that hosts the online video to pause the stream.”).
Claim 18 is directed to a non-transitory computer-readable medium. Claim 18 recites limitations that are parallel in nature as those addressed above for claim 1 which is directed towards a method. Claim 18 is therefore rejected for the same reasons as set forth above for claim 1.
Claim 21 – The combination of Cai in view of Jindal teaches the method of claim 1. Cai further discloses, wherein the mark included in the marked subject includes a graphically visible mark to indicate the subject is ready for purchase (¶ [0029] icon 252 trigger point; FIG. 2B and 2C).
Claims 2-3 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cai in view of Jindal, and further in view of McDevitt (US 2024/0095792 A1).
Claim 2 – The combination of Cai in view of Jindal teaches the method of claim 1. Cai further discloses, further comprising: displaying ... the multimedia segment including the frame on a display device before capturing the frame of the multimedia segment (¶ [0026] “In some embodiments, in response to a selection being made with respect to a trigger point (e.g., a mouse moves over the trigger point), a message is sent to the server that hosts the online video to pause the stream”).
Cai does not explicitly disclose displaying live. However, McDevitt – which like Cai is directed to making purchases from video streams – teaches:
displaying live the multimedia segment (McDevitt ¶ [0009] “present the live feed of that on-going program”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the live displaying as taught by McDevitt in the method of Cai because it may be advantageous by encouraging the user to purchase the desired item, instead of procrastinating and then forgetting to purchase the desired item (McDevitt ¶ [0025]).
Claim 3 – The combination of Cai in view of Jindal, and further in view of McDevitt teaches the method of claim 2. Cai further discloses, wherein the capturing the frame of the multimedia segment includes:
pausing the ... displaying of the multimedia segment on the display device (¶ [0026] “the online video pauses”).
Cai does not explicitly disclose live displaying, or limitations associated with recording the subsequent multimedia segment while the frame is being captured. However, McDevitt further teaches:
recording a subsequent portion of the multimedia segment while the frame of the multimedia segment is being captured (McDevitt ¶ [0025] However, the user may be allowed to “rewind” or replay previous segments, or pause the current feed. This would be a “live′VVOD hybrid function similar to digital video recording technology provided for pausing live television); and
resuming the live displaying of the multimedia segment including the recorded subsequent portion of the multimedia segment (see previous citation to McDevitt ¶ [0025]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the live displaying as taught by McDevitt in the method of Cai because it may be advantageous by encouraging the user to purchase the desired item, instead of procrastinating and then forgetting to purchase the desired item (McDevitt ¶ [0025]).
Claims 19-20 are directed to a non-transitory computer-readable medium. Claims 19-20 recite limitations that are parallel in nature as those addressed above for claims 1-2 which are directed towards a method. Claim(s) 18-20 are therefore rejected for the same reasons as set forth above for claims 1-2, respectively.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Cai in view of Jindal, and further in view of Killoran, Jr. et al. (US 2017/0064402 A1).
Claim 8 – The combination of Cai in view of Jindal teaches the method of claim 1. Cai does not disclose limitations associated with a user shopping account and media account. However, Killoran Jr. – which like Cai is directed to interactive video payments – teaches, wherein the order is recorded in a user shopping account managed by the third party shopping system (¶ [0107] “A customer or vendor, wishing to complete a transaction with an e-commerce system 140 may register his/her email address and payment information with the e-commerce system 140”; ¶ [0121] “The URL captures the payment information and registry information. The e-commerce system 140 updates the database once the new customer is registered. In future transactions, the email address of the customer is identified as registered by the e-commerce system 140”), wherein the user shopping account corresponds to a media account associated with the computing device (Killoran Jr. ¶ [0037] “A system that integrates with the cable provider, where customers can enter email addresses or phone number and confirm via email, SMS, and social media would provide a competitive advantage.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the user shopping account corresponding to a media account, as taught by Killoran Jr. in the method of Cai because a system that integrates with the cable provider would provide a competitive advantage (Killoran Jr. ¶ [0037]).
Claim 9 – The combination of Cai in view of Jindal, and further in view Killoran Jr. teaches the method of claim 8. Cai does not disclose the following limitations, however Killoran Jr. teaches, further comprising: facilitating a payment for the order based on information associated with the media account (Killoran Jr. ¶ [0159] “FIGS. 8 A-B disclose a design where the viewers watching the television may interact and make payments based on inputting an identifier such as an email address, phone number or social media handle”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the payment based on media account information as taught by Killoran Jr. in the method of Cai because a system that integrates with the cable provider would provide a competitive advantage (Killoran Jr. ¶ [0037]).
Response to Arguments
Applicant’s arguments filed 07/22/2026, with respect to 35 USC § 101 rejections, have been fully considered but they are not persuasive. On page 10 of the Remarks under “Step 2A Prong 1”, Applicant argues “claims 1 and 18 are eligible because they do not recite certain methods for organizing human activity”.
The Examiner respectfully disagrees. In Prong One examiners evaluate whether the claim recites a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim (MPEP 2106.04(II)A,1). Claim 1 recites limitations including “determining ... the subject corresponding to the marked subject having a mark included in the marked frame and associated with the subject to indicate the subject is ready for purchase”, “detecting ... a selection signal indicating a portion of the marked frame corresponding to the marked subject has been selected to place an order for the subject”, “collecting ... information included in the order, wherein the information included in the order includes information about a user and information about the subject”, and “transmitting, to a third party shopping system, at least a portion of the order”. These limitations set forth and describe a sales activity wherein an order is placed for a selected subject depicted in a marked frame. Furthermore, the limitation “receiving a marked frame ... wherein the marked frame includes the marked subject having a mark associated with the subject, wherein the marked frame replaces the captured frame of the multimedia segment, and wherein the mark comprises a highlighted border...” is describing the identification of the purchasable subject, which is part of the sales process. Moreover, the limitation “wherein the marked frame replaces the captured frame of the multimedia segment” is recited at such a high level of generality that it includes mental activity. For example, a person can replace an image in their mind with another one or, with pen & paper, replace a captured image with another one comprising the mark as recited. Accordingly, the Examiner maintains that claim 1, and similarly claim 18, recite an abstract idea belonging to the certain methods of organizing human activity grouping. Limitations recited in claim 1 which are outside of the abstract idea are additional elements and properly considered in prong two and step 2B.
On page 11 of the Remarks, under “Step 2A Prong 2”, Applicant argues “Claims 1 and 18 as amended provide an improvement in the functioning of a computer, and/or an improvement to other technology or technical fields”.
The Examiner respectfully disagrees. It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit into a hardware component description of a logic circuit was found to be ineligible because the method did not employ a computer and a skilled artisan could perform all the steps mentally). Similarly, a claimed process covering embodiments that can be performed on a computer, as well as embodiments that can be practiced verbally or with a telephone, cannot improve computer technology.
T-commerce, or sales activities occurring via a smart digital TV-set, is not considered a technology or technical field by Office guidance. Instead, the use of a computer in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) is considered mere instruction to implement an abstract idea on a computer, and does not integrate a judicial exception into a practical application or provide significantly more. See MPEP 2106.05(f). Claim 1 is not directed to improvements in smart digital TV-sets, but instead focused on identifying and placing an order for a subject (product) via a general-purpose “computing device” which receives and transmits data. For example, claim 1 does not recite a smart TV or any display.
The amended limitations recite “receiving a marked frame from the content server” that “includes the marked subject having a mark” and that “replaces the captured frame of the multimedia segment”. These limitations do not recite a technical process for receiving the marked frame or replacing the marked frame with the captured frame. Instead the claims recite only the idea of an outcome (“wherein the marked frame replaces the captured frame of the multimedia segment, and wherein the mark comprises a highlighted border that is visibly different from an original border of the subject and is based on border location coordinates of the original border of the subject within the captured frame”), without any description of the mechanism for accomplishing the result. Limitations which provide only a results-oriented solution and lack details as to how the computer performs the desired results, are considered to be mere instructions to implement an abstract idea on a computer. See MPEP 2106.05(f)(1). As explained in MPEP 2106.05(a), the claim must include more than mere instructions to perform the method on a generic component or machinery to quality as an improvement to existing technology. Accordingly, the Examiner maintains that the additional elements do not provide integration into a practical application in prong two and the claims are directed to an abstract idea.
For at least these reasons, the Examiner is maintaining the 101 rejections over claims 1-11 and 18-21.
Applicant’s arguments filed 07/22/206 with respect to the 35 U.S.C. § 103 rejection of claims 1, 5-7, 10-11, 18, and 21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. As explained in the rejection, the Examiner is relying on Jindal et al. (US 11,398,089 B1) to teach “wherein the mark comprises a highlighted border that is visibly different from an original border of the subject and is based on border location coordinates of the original border of the subject within the captured frame”.
For at least these reasons, the Examiner is maintaining a § 103 rejection of claims 1 and 18, as well as their dependent claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Feinstein (US 8,682,739 B1) describes systems and methods for identifying products that appear in a video and generating links that are associated with the identified products.
N. P. John, K. A. S. Pillai and A. R. Anil (NPL Reference U) is directed to leveraging existing video contents and turning them into transactional content marketing.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNEDY A GIBSON-WYNN whose telephone number is (571)272-8305. The examiner can normally be reached M-F 8:30-5:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marissa Thein can be reached at 571-272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.G.W./Examiner, Art Unit 3688
/KELLY S. CAMPEN/Primary Examiner, Art Unit 3691
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