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 .
This office action is in response to communication filed on 11/28/2025.
Claims 1-20 are presented for examination.
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 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim invention pertains to: creating a list of multimedia assets from a plurality of multimedia assets for presentation to a user based on an anchor multimedia asset that is consumed by the user.
Claims 1-8 do fall within at least one of the four categories of patent eligible subject matter because the claims 1 recites a process steps (i.e., a method). Claims 9-16 recite non-transitory computer readable storage media (i.e. manufacture) and claims 17-20 recite systems components (e.g. machine).
Although claims 1-20 fall under at least one of the four statutory categories, it should be determined whether the claim recites a judicial exception.
Claims 1 and 9 recite creating a list of multimedia assets, estimating an expected user viewing length, selecting, and creating an ordered playlist.
The limitations under their broadest reasonable interpretation covers managing personal behavior and fall under “Certain Methods of Organizing Human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A prong two (for determining whether the Abstract idea is integrated into practical application).
This judicial exception is not integrated into a practical application
The claims 1 and 9 includes a display and is not sufficient to amount to significantly more than the judicial exception and does not impose meaningful limitations or render the idea less abstract. Looking at the elements as a combination does not add anything more than the elements analyzed individually. Therefore, the claim does not amount to significantly more than the abstract idea itself. The claim is not patent eligible.
Apparatus claims 17 further recite the additional elements of a processor and memory are recited at a high level of generality (e.g. generic processors) such that they amount no more than mere instructions to apply the exception using generic computer components. They are considered as “apply it” as the claim invokes the computer as a tool to perform the abstract idea. See MPEP 2106.05(f)(2) (similar to Apple, Inc. v Ameranth and Intellectual Ventures I LLC v Capital One Bank (USA).
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. (MPEP 2106.05(f) Mere Instructions To Apply An Exception).
There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No.11,763,173. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader in scope than ‘173 patent in that it doesn’t recite pairwise comparison of one or more additional electronic asset related to the anchor. It is old and well known to not pair any additional assets or products, in order to only provide the user with the asset or product selected by the user and avoid annoying the users with marketing materials.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Application No.18/231,642. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader in scope than ‘642 application in that it doesn’t recite pairwise comparison of one or more additional electronic asset related to the anchor. It is old and well known to not pair any additional assets or products, in order to only provide the user with the asset or product selected by the user and avoid annoying the users with marketing materials.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent Application No.11,562,259. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims further recite removing multimedia assets from the list when not consumed by the user. It is old and well known add or remove marketing, advertisements and the like based on a shopping habits/consumption, in order to better target the advertisements/assets.
Allowable Subject Matter
Claims 1-20 are allowable over prior art of record.
The invention pertains to: creating a list of multimedia assets from a plurality of multimedia assets for presentation to a user based on an anchor multimedia asset that is consumed by the user.
The closest prior art of record: Bernard (2012/0151511) and Howett (2013/0216200) teach: estimating a total length of engagement that represents (Fig. 4A, step 407, Para. 55, wherein the percentage and duration of viewing time corresponds to estimate a length of engagement, the duration of view of the content item corresponds to amount of time available to present a set of multimedia assets and Para. 51, wherein the current session viewed corresponds to current viewing, Bernard). Bernard doesn't explicitly disclose that represent a total amount of time that the user is likely to be engaged in order to present a set of multimedia asset that follow the anchor multimedia asset to the user. On the other hand, Howett disclose the method of represent a total amount of time available to present a set of multimedia asset to the user as shown in Fig. 5, and further described in Para. 0099, and Para. 0100, wherein the timeline of the total view time corresponds to estimating the represent total time for the different scenes which corresponds to a set of multimedia, wherein the SCENE 2-5 corresponds to the follow the anchor multimedia asset as further described in Fig. 5, step 514, Para. 0098-099.
However, Howett is a video editing system where the user manually assembles clips into a variable video. Howett makes no mention of “as the anchor multimedia asset is being consumed by the user; estimating a total length of engagement based on historical interaction data, the total length of engagement represents an estimated total amount of time available to present a set of multimedia assets that follow the anchor multimedia asset to the user; Thus, Howett does not provide what Bernard lacks.
Other references of record:
Walker teaches pairing the transaction data/ordered items/anchor asset at step 1906 with offers/additional electronic assets that are based on/pairing with previously ordered items/transaction data/anchor items at step 1908. The pairing of the additional electronic assets, offers in Walkers is based on the anchor asset, transaction/ordered items in Walker.
Choi teaches on paragraph 0089 selecting ads based on ad targeting objectives as described above but selects creatives from within an ad collection based on the capabilities of the device environment to which the ad is to be served. These capabilities criteria can include any characteristic of the target device environment that is available to the application into which the ad is to be served; these capabilities can include but are not limited to: screen size and color depth; number and type of screens.
Reichert teaches paragraph 0003 for the presentation control system can analyze the captured portion of the content item (and any additional information) and compare the received portion of content to reference data that is tuned for optimal display. The presentation control system can then provide instruction to modify display configuration settings on the presentation device.
Article, titled “ Evaluation of User Reputation on YouTube” teaches determining the quality of related contents using this new social network. Based on this observation, we introduce a user evaluation algorithm for user-generated video sharing website such as YouTube.
JP 2008193431 (A) teaches PROBLEM TO BE SOLVED: To prevent expiration of viewing period of a desired content, and to recommend a current available content. ;SOLUTION: A content information acquiring section 104 acquires the information about all distributable contents. A viewable time calculating section 105 calculates a viewable time for each of the contents from the content information and the present time, and generates list information in which the contents are sorted in the ascending order of viewable time. A priority determining section 107 selects the information of contents whose viewable time is lower than a threshold value from the list information. A determination section 108 determines whether or not each the content can be reproduced on the basis of the viewable time of the content information selected by the priority determining section 107 and the total reproducing time of all the contents determined to be reproducible together with reproduction time. A recommendation screen generating section 110 generates a recommendation screen for highlighting the content determined to be reproducible by the determination section 108.
Response to Arguments
The Obviousness type Double Patenting rejections have been maintained, since Terminal Disclaimers have not been filed.
Applicant argues that the claimed invention is “directed to technological improvements to the prior art technical problems and improves the performance of any item existing recommendation algorithm as well as improves the quality of recommendations, as well as other improvement to the technological area”. The Examiner disagrees with Applicant because the claims pertain to: creating a list of multimedia assets, estimating an expected user viewing length, selecting, and creating an ordered playlist, and is not solving a technical problem, but is improving performance of an item recommendation which is a marketing related problem with a marketing related solution and falls under “Certain Methods of Organizing Human activity” grouping of abstract ideas. The additional elements of a processor and memory are recited at a high level of generality (e.g. generic processors) such that they amount no more than mere instructions to apply the exception using generic computer components and using a display device for receiving ordered playlist/data is equivalent to the words ‘apply it”. “The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words "apply it".
The instant claims are not similar in scope to the claims in McRo because the claims in McRO, is an example of inventions that the court found not to be abstract. The instant application lacks the rules for lip sync and facial expression animation of McRO which are elements that were determined to be non-abstract.
The claims so not amount to significantly more than the abstract idea itself, because the combination of the element does not improve the technology as well as the functioning of a computer. The claims are not patent eligible.
Conclusion
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 filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Point of contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAQUEL ALVAREZ whose telephone number is (571)272-6715. The examiner can normally be reached Mondays thru Thursdays 8:30-6:30.
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/RAQUEL ALVAREZ/Primary Examiner, Art Unit 3621