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 06/20/2025.
Claims 1-2,5-6,10-1216,18-24,30,33-39 have been amended.
Claims 40-42 have been added.
Claims 3,7,13 have been canceled.
Claims 1-2,4-6,8-12 and 14-42 are currently pending and have been examined.
Response to Applicant’s Arguments
Applicant’s amendments and arguments filed on 06/20/2025 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 Double Patent Rejection:
Claims 1-39 provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-34 of US Patent 11,195,210, the claims as drafted are Not distinguishable over the claims in the cited patent. This is because the claims of the present application recite a first script, a first ad space, a second script, and a second ad space, as well as additional determinations relating to the second script and the second ad space. Claims 1-34 of U.S. Patent 11,195,210 include the elements of a script, and ad space and/ or determination relating to the script and ad space. Given the Broadest Reasonable Interpretation a script include a second script and an ad space include a second ad space. Therefore, the claims are substantially similar or broader or in any way extend the rights granted by U.S. Patent 11,195,210.
Claims 1-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-38 of US Patent 11,587,126. the claims as drafted are Not distinguishable over the claims in the cited patent. This is because the claims of the present application recite a first script, a first ad space, a second script, and a second ad space, as well as additional determinations relating to the second script and the second ad space. Claims 1-38 of U.S. Patent 11,587,126 include the elements of a script, and ad space and/ or determination relating to the script and ad space. Given the Broadest Reasonable Interpretation a script include a second script and an ad space include a second ad space. Therefore, the claims are substantially similar or broader or in any way extend the rights granted by U.S. Patent 11,195,210. As such the “non-statutory Double Patenting” rejection, of claims 1-34 of Pat No: 11,195,210 and claims 1-38 of Pat No: 11,587,126 is maintained.
Accordingly, the non-statutory obviousness-type double patenting rejection will be maintained in the Office Action until such time as the conflicting claims are amended or terminal disclaimer is filed or abandoned of the application.
With regard to claims 1-39 rejection under 35 USC § 101:
Applicant argues that “ Claims 1, 37, and 39, as amended, are not directed to and do not recite a judicial exception. For example, the claim does not recite any type of mental process because the claim, under its broadest reasonable interpretation, does not cover performance in the mind. Further, the claim does not recite any method of organizing human activity, such as a fundamental economic concept or managing commercial interactions between people. The process recited in the claims does not gather data relating to commercial interactions, analyze the data, determine results based upon the analysis, or generate tailored content based on the results, and transmit the tailored content. The data that is gathered pursuant to the claims does not relate to the content. The data that is gathered relates to the locations and positions of certain scripts and the amount of time such scripts remained in such locations and positions. The claimed process does not tailor content nor does it transmit tailored content. The process is content agnostic, as the nature of the content is not of relevance for the claimed process. The process merely determines the position of certain scripts and the timing relating to how long the scripts were in such position (page 3/7)”.
Examiner disagrees. The applicant's argument that the claims overcome the 35 USC 101 rejection under Step 2a, Prong 1 because the claim does not recite any type of mental process because the claim, under its broadest reasonable interpretation, does not cover performance in the mind is not convincing. The only abstract idea bucket in which performance by a human is required is the "Mental Process" bucket which requires that the steps be capable of being performed in the human mind. The claims of the instant invention have not been identified as a "Mental Process". Instead the claims of the instant invention have been identified as "Certain Methods of Organizing Human Activities". The Subject Matter Eligibility Guidelines indicate that "advertising, marketing or sales related activities" is a subcategory of "Certain Methods of Organizing Human Activities". There is no requirement that these "advertising, marketing, or sales related activities" be performed by a human being. Therefore, all steps involved in the performance of advertising, marketing or sales related activities are part of the abstract idea itself irrespective of whether they are performed by a computer or performed by a human being. Thus, the applicant's arguments are moot.
Furthermore, the process recited in the claims gathers data relating to commercial interactions, analyze the data, determine results based upon the analysis, generate tailored content such as ad content based on the results, and transmit the tailored content (ad content based on ad bidding auction), as evidence by Applicant’s own admission such process results in an improvement in the presentation of content to a user (applicant’s arguments page 7/7). Thus, the data that is gathered pursuant to the claims are related to the content.
Since analyzing data is part of the abstract idea itself, any improvement obtained by automating the analyzing of the data in an improvement to the abstract idea which is an improvement in ineligible subject matters (see SAP v. Investpic: 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.)
As such the claims fall within the “Certain Method of Organizing Human Activity” grouping of abstract ideas as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations, because the merely gather data, analyze the data, determine results based upon the analysis, generate tailored content based on the results, and transmit the tailored content. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes). Therefore, the claim rejection of claims 1-39 under 35 USC § 101 is maintained.
Applicant argues that “Looking to the Subject Matter Eligibility Guidance provided by the USPTO, Claims 1, 37, and 39 correspond to claim 2 of Example 37, "Relocation of Icons on a Graphical User Interface," which recited a method for "determining the amount of use of each icon using a processor that tracks how much memory has been allocated to each application associated with each icon over a predetermined period of time." In such example, claim 2 was found to be patentable under Prong 1 because it did not recite any of the judicial exceptions. This example is very similar to claims 1, 37, and 39, as such claims recite a process that tracks the locations of certain scripts and the time period during which such scripts remained in such positions. Therefore, similar to claim 2 of Example 37, claims 1, 37, and 39 of the present application are eligible because they do not recite a judicial exception (page 4/7)”.
Examiner disagrees. The instant claims bear no similarity to Example 37, claim 2 decision, because the instant claim merely collecting and analyzing presentation ad content data in the manner in which it is received, whereas Example 37 was found eligible, under step 2 A prong2, because the claimed additional element of GUI is integrated into a practical application. The claim as a whole integrates the mental process into a practical application. Specifically, the additional elements recite a specific manner of automatically displaying icons to the user based on usage which provides a specific improvement over prior system, resulting in an improved user interface for electronic devices. Thus the claim is eligible because it is not directed to the recited judicial exception. The instant claims are ineligible because they are directed to a judicial exception as shown above and in the rejection below. Therefore, the claim rejection of claims 1-39 under 35 USC § 101 is maintained.
Applicant argues that “Claims 1, 37, and 39 as a whole each integrates the recited judicial exception into a practical application of the exception and, therefore, the claims are eligible as they are not directed to the recited judicial exception. There are additional elements recited in the claim beyond the judicial exception, including "determining in real time, via the first script, whether the first ad content has been loaded in the web page for a first predefined time period while the web page remains loaded in the browser; determining in real time, via the second script, whether the second ad content has been loaded in the web page for a second predefined time period while the web page remains loaded in the browser; determining in real time, via the first script, whether at least a portion of the first ad is positioned within the second area at least one of as of or after the expiration of the first predefined time period while the web page remains loaded in the browser; determining in real time, via the second script, whether at least a portion of the second ad is positioned within the second area at least one of as of or after the expiration of the second predefined time period while the web page remains loaded in the browser, wherein the first ad position determination is based on the first predefined time period determination determining that the first ad content has been loaded in the web page for the first predefined time period while the web page remains loaded in the browser and wherein the second ad position determination is based on the second predefined time period determination determining that the second ad content has been loaded in the web page for the second predefined time period while the web page remains loaded in the browser," and "replacing, via the processor, each of the first ad content in the third area with the third ad content responsive to the first ad position determination and the first predefined time period determination indicating that at least the portion of the first ad being positioned within the second area and the second ad content in the fourth area with the fourth ad content responsive to the second ad position determination and the second predefined time period determination indicating that at least the portion of the second ad being positioned within the second area while the web page remains loaded in the browser such that each of the third ad content is displayed within the first area and the fourth ad content is displayed within the second area while the web page remains loaded in the browser." Evaluating the additional elements individually and in combination clearly indicates that the claims as a whole integrate the exception into a practical application. For example, the first script is used to determine whether the first ad content has been loaded in the web page for a first predefined time period while the web page remains loaded in the browser. The first script is also used to determine whether at least a portion of the first ad is positioned within the second area at least one of as of or after the expiration of the first predefined time period while the web page remains loaded in the browser. The first ad position determination is based on the first predefined time period determination determining that the first ad content has been loaded in the web page for the first predefined time period while the web page remains loaded in the browser. Lastly, the process replacing the first ad content in the third area with the third ad content responsive to the first ad position determination and the first predefined time period determination indicating that at least the portion of the first ad being positioned within the second area. These additional elements recited in the claim extend beyond the judicial exception. Therefore claims 1, 37, and 39 are eligible under Step 2A of Prong 2. Claims 1, 37, and 39, as discussed above, are similar to claim 1 as discussed in Example 37 of the Subject Matter Eligibility Guidance provided by the USPTO, which "recites a specific manner of automatically displaying an icon to the user based on usage which provides a specific improvement over prior systems, resulting in an improved user interface for electronic devices." The present claims 1, 37, and 39 similarly recite a specific manner of automatically replacing ad content in a particular location on a web page based on position and timing criteria resulting in an improvement in the presentation of content to a user. Claims 1, 37, and 39, as discussed above, are also similar to claims 2 and 4 in Example 45 of the Subject Matter Eligibility Guidance provided by the USPTO. With respect to claim 2, Example 45 states Limitation (d) does not merely link the judicial exceptions to a technical field, but instead adds a meaningful limitation in that it employs the information provided by the judicial exceptions (the calculated percentage of the extent of cure) to control the operation of the injection molding apparatus. As explained in the specification, because the claimed controller opens the mold and ejects the molded polyurethane at the time when the target percentage of cure is reached, the claimed controller avoids the technical problems associated with undercure and overcure, which would otherwise negatively affect the cured polyurethane's strength and wear performance. Further, a person of ordinary skill in the art would recognize that limitation (d), in combination with the other claim limitations, reflects the technical advantages described in the specification. The claim as a whole thus improves upon previous controllers used in this technical field of injection molding. In present claims 1, 37, and 39, the process determines that the first ad is at a particular position and that the first ad remained in that position for a predefined period of time and as a result of such determinations replaces the first ad content with a third ad content. This results in an improvement in the presentation of content to a user, and is something that a person of ordinary skill in the art would recognize as reflecting a technical advantage in the presentation of content. Therefore, claims 1, 37, and 39 are not directed to a judicial exception and are patent eligible subject matter. On page 8 of the Office Action, the Examiner cites to 2010/0269030 Al, paragraph 47 regarding integration of the abstract idea into a practical application. However, the Examiner has misconstrued the functionality provided by the invention as recited in claims 1, 37, and 38. In the cited reference, the paragraph describes the fadeout of an advertisement and sets a timer to countdown to such fadeout. However, this comparison is inaccurate, as the scripts recited by claims 1, 37, and 39 do not merely run a timer. The claims recite a system and process that determine, in real time, and on an ongoing basis, using a first script, a position of the first ad and, using a second script, a position of the second ad, how long the first ad and the second ad have been in a particular location relative to the first area, respectively, and how long the first ad and the second ad have been within a particular location relative to a second area, respectively. As such, claims 1, 37, and 39, and each of the claims that depend therefrom either do not recite a judicial exception under Prong 1, or reflect a technical improvement and advantage, recite additional elements that extend beyond the judicial exception under Prong 2, Step 2A, and are directed to patent eligible subject matter. Therefore, the Examiner's rejection of the claims under 35 U.S.C. § 101 should be withdrawn (page 7/7)”.
Examiner disagrees. The instant claims bear no similarity to Example 45 ( claim 2 and claim 4) decision, because the instant claim merely collecting and analyzing presentation ad content data in the manner in which it is received, whereas Example 45, claim 2 and claim 4 was found eligible, under step 2 A prong 2, because the claimed additional element of controller is integrated into a practical application. The claim as a whole thus improves upon previous controllers used in this technical field of injection molding. Further, using the information obtained via the judicial exception to take corrective action and control the injection molding apparatus in a particular way is an “other meaningful limitation” that integrates the judicial exception into the overall control scheme and accordingly practically applies the exception, such that the claim is not directed to the judicial exception (Step 2A: NO) (example 45, claims 2 and 4). The claims are eligible. Specifically, the additional elements integrates into practical application. Thus the claim is eligible because it is not directed to the recited judicial exception. The instant claims are ineligible because they are directed to a judicial exception as shown above and in the rejection below. Therefore, the claim rejection of claims 1-39 under 35 USC § 101 is maintained.
Furthermore, a process that determines that the first ad is at a particular position and that the first ad remained in that position for a predefined period of time and as a result of such determinations replaces the first ad content with a third ad content and/ or determine, in real time, and on an ongoing basis, using a first script, a position of the first ad and, using a second script, a position of the second ad, how long the first ad and the second ad have been in a particular location relative to the first area, respectively, and how long the first ad and the second ad have been within a particular location relative to a second area, respectively fails to (a) improve another technology or technical field and (b) improve the functioning of the computer itself and (c) applies the abstract idea with or by use of, a particular machine, which is a generic computer performing generic computer functions and are not seen to recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself.
Indeed, the identified improvements recited by Applicant are really, at best improvements to the performance of the abstract idea (e.g., improvements made in the underlying business method (an improvement in the presentation of content to a user) and not in the operations of any additional elements or technology.
As such, the examiner finds that any improvement obtained by practicing the claimed invention is an improvement to a business process. Second, under Step 2a, Prong 2, the improvement to a technology or technological field must be rooted in the additional element. Additional elements are those elements outside of the identified abstract idea itself. In the instant case the only additional elements are a digital device that displays to consumer ad content consisting of “ web page , memory, processor , script, viewport, and browser”) to provide a consistent user experience via a user input 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 improvement obtained by practicing the abstract idea, is an improvement obtained by practicing the abstract idea and not rooting in the additional elements upon which the abstract idea is applied. Improvements of this nature are not patent eligible (see SAP v. Investpic: 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 there 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.). Thus, the rejection has been maintained.
Additionally, it appears that Applicant has misunderstood Examiner’s citation to 2010/0269030 Al, paragraph 47 that shows that the use of additional elements such as : a processor and a graphical user interface (e.g., webpage executing a script for timing duration of display) is just a general-purpose computer and generic computer components and does not integrate the abstract idea into a practical application.
Therefore, the claim rejection of claims 1-39 under 35 USC § 101 is maintained.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-39 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-34 of Patent Application No: 11,195,210. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variation of each other.
Claims 1-2,4-6,8-12 and 14-42 of the instant application recite the limitations of wherein the first area contains a third area and a fourth area, wherein the first area is larger than the third area, wherein the first area is larger than the fourth area, wherein the third area and fourth area are is-not positioned within the second area when the web page is loaded, wherein the third area contains a first ad content sourced from a first real-time ad bidding auction and wherein the fourth area contains a second add content sourced from a second real-time ad bidding auction; wherein the third that the first ad content has been loaded in the web page for the first predefined time period while the web page remains loaded in the browser and wherein the fourth real-time determination is based on the second real-time determination determining that the second ad content has been loaded in the web page for the second predefined time period while the web page remains loaded in the browser; and a fourth real-time ad bidding auction for a fourth ad content to be input into the fourth area and replace the second ad content responsive to the at least the portion of the fourth area being positioned within the second area based on the fourth real-time determination while the web page remains loaded in the browser.
It would have been obvious to one of ordinary skill in the art before the filed time of the invention to include in the instant application the above limitations with the motivation of providing advertiser (s) with a real time auction of advertisement system that continuously monitoring advertisement slot (s) availability based on viewing area, and thus increasing advertiser marketability and revenue.
Claims 1-2,4-6,8-12 and 14-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-38 of U.S. Patent No: 11,587,126. Although the claims at issue are not identical, they are not patentably distinct from each other because because they are obvious variation of each other.
Claims 1-2,4-6,8-12 and 14-42 of the instant application recite the limitations of: wherein the first area contains a third area and a fourth area, wherein the first area is larger than the third area, wherein the first area is larger than the fourth area, wherein the third area and fourth area are not positioned within the second area when the web page is loaded, wherein the third area contains a first script associated with a first advertisement (ad) content sourced from a first real-time ad bidding auction and wherein the fourth area contains a second script associated with a second ad content sourced from a second real-time ad bidding auction; determining in real time, via the first script, whether the first ad content has been loaded in the web page for a first predefined time period while the web page remains loaded in the browser; determining in real time, via the second script, whether the second ad content has been loaded in the web page for a second predefined time period while the web page remains loaded in the browser; determining in real time, via the first script, whether at least a portion of the first ad third area is positioned within the second area at least one of as of or after the expiration of the first predefined time period while the web page remains loaded in the browser; determining in real time, via the second script, whether at least a portion of the second ad fourth area is positioned within the second area at least one of as of or after the expiration of the second predefined time period while the web page remains loaded in the browser, wherein the first ad position third area determination is based on the first predefined time period area determination determining that the first ad content has been loaded in the web page for the first predefined time period while the web page remains loaded in the browser and wherein the second ad position fourth area determination isbased on the second predefined time period area determination determining that the second ad content has been loaded in the web page for the second predefined time period while the web page remains loaded in the browser; receiving, via the processor, each of the third ad content sourced from the third real=time ad bidding auction and a the fourth ad content sourced from at least one of an ad server or content server the fourth real-time ad bidding auction while the web page remains loaded in the browser; and replacing, via the processor, each of the first ad content in the third area with the third ad content responsive to the first ad position determination and the first predefined time period determination indicating that at least the portion of the first ad third area being positioned within the second area and the second ad content in the fourth area with the fourth ad content responsive to the second ad position determination and the second predefined time period determination indicating that at least the portion of the second ad fourth area being positioned within the second area while the web page remains loaded in the browser such that each of the third ad content is displayed within the first area and the fourth ad content is displayed within the second area while the web page remains loaded in the browser. It would have been obvious to one of ordinary skill in the art before the filed time of the invention to include in the instant application the above limitations with the motivation of providing advertiser (s) with a real time auction of advertisement system that continuously monitoring advertisement slot (s) availability based on viewing area, and thus increasing advertiser marketability and revenue.
Applicant is required to either cancel the conflicting claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
The subject matter claimed in the instant application is fully disclosed in the referenced US Patent No: 11,15,210 and 11,587,126 and would be covered by any patent granted on that application since the referenced application and the instant application are claiming common subject matter, as follows: providing real -time viewable advertising that programmatically sell the same ad space on the same computing device multiple times.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2,4-6,8-12 and 14-42 are rejected under 35 U.S.C.101 because the claimed invention is directed to a judicial exception subject matter, specifically an abstract idea. The analysis for this determination is explained below:
Step 1, determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. In this case, Step 1, determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
In this case, claim(s) 1-2,4-6,8-12,14-36,40 are directed to a process (i.e. a method); claims 37 -38, 41-42 are directed to a machine (i.e. a system).
The claimed invention is directed to at least one judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claim (s) 1, for instance recite(s) the following abstract idea:
“loading, page having a viewport, wherein the page has a first area, wherein the viewport has a second area, wherein the first area is larger than the second area, wherein the first area contains a third area and a fourth area, wherein the first area is larger than the third area, wherein the first area is larger than the fourth area, wherein the third area and fourth area are not positioned within the second area when the page is loaded, wherein the third area contains a first advertisement (ad) content sourced from a first real-time ad bidding auction and wherein the fourth area contains a second ad content sourced from a second real-time ad bidding auction; determining in real time, whether the first ad content has been loaded in the page for a first predefined time period while the page remains loaded, determining in real time, whether the second ad content has been loaded in the page for a second predefined time period while the page remains loaded; determining in real time, whether at least a portion of the first ad is positioned within the second area at least one of as of or after the expiration of the first predefined time period while the page remains loaded; determining in real time, whether at least a portion of the second is positioned within the second area at least one of as of or after the expiration of the second predefined time period while the page remains loaded, loaded and wherein the second ad position determination is based on the second predefined time period determination determining that the second ad content has been loaded in the page for the second predefined time period while the page remains loaded; receiving, each of a third ad content and a fourth ad content from at least one of an ad server or content server while the web page remains loaded in the browser; and replacing, each of the first ad content in the third area with the third ad content responsive to the first ad position determination and the first predefined time period determination indicating that at least the portion of the first ad being positioned within the second area and the second ad content in the fourth area with the fourth ad content responsive to the second ad position determination and the second predefined time period determination indicating that at least the portion of the second ad being positioned within the second area while the page remains loaded such that each of the third ad content is displayed within the first area and the fourth ad content is displayed within the second area while the page remains loaded”.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations, because the merely gather data, analyze the data, determine results based upon the analysis, generate tailored content based on the results, and transmit the tailored content. 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 “ web page , memory, processor , script, viewport, and browser” . The additional technical elements above are recited at a high-level of generality (i.e. as a generic processor performing a generic computer function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. 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 a computer, or merely uses a computer 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.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using “ web page , memory, processor , script, viewport, GUI and browser”, specifically the use of : a processor and a graphical user interface (e.g., webpage executing a script for timing duration of display) which is just a general-purpose computer and generic computer components as evidenced from 2010/0269030 A1, paragraph 47 to perform the claimed functions amounts to no more than mere instructions to apply the exception using a 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 a computer, 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 a general purpose computers communicating over a general purpose network (as evidenced from paragraphs 49, 128-131); 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. Finally, the following limitations are considered insignificant extra solution activity as they are directed to merely receiving, storing and/or transmitting data:
receiving, via the processor, each of a third ad content and a fourth ad content from at least one of an ad server or content server while the web page remains loaded in the browser;
transmitting, via the processor, the third ad content and the fourth ad content to the browser;
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 37 and 39.
The dependent claims 2-36 and 38 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. “PEG” Revised Step 2A Prong One=Yes), because they do not include 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. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No). Thus, the dependent claims further narrows the abstract idea and/or recite additional elements previously rejected in the independent claims 1,37, 39.
Accordingly, the claim fails to recite any improvements to another technology or technical field, improvements to the functioning of the computer itself, use of a particular machine, effecting a transformation or reduction of a particular article to a different state or thing, adding unconventional steps that confine the claim to a particular useful application, and/or meaningful limitations beyond generally linking the use of an abstract idea to a particular environment. See 84 Fed. Reg. 55. Viewed individually or as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Possible Allowable Subject Matter
Claims 1-2,4-6,8-12 and 14-42 would be allowable if the applicant were to be able to overcome the Claim rejection under 35 USC § 101 and Double patenting rejection.
The following is a statement of reasons for the indication of allowable subject matter, none of the cited reference discloses the claimed features of independent of claims 1, 37 and 39. As such, the examiner, has been unable to find prior art that discloses the combination of the claimed features. Thus, the claims contain subject matter that would be allowable over the prior art if the applicant to be able to overcome the claim rejections under 35 USC § 101 and the Double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Zacharski et al, US Pub No: 2019/0043092 A1, teaches Dynamic Header Bidding configuration.
Luttrell et al, US Pat No: 11,068,931B1, teaches systems, methods and media for detecting content viewability.
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.
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/AFAF OSMAN BILAL AHMED/ Primary Examiner, Art Unit 3621