DETAILED ACTION
This action is responsive to papers filed on 2/13/2026.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 23-25, 30-34, 39-41, 44, 45, 48, and 49 are rejected under 35 U.S.C. 101 because, while the claims herein are directed to a method and/or system, which could be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes), the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Regarding claims 23, 32, and 41, the claims recite, in part, monitor information exchanged; generate implicit user data associated with respective subscribers from the monitored information; and store the implicit user data in association with the respective subscribers; user opt-in functionality configured to: receive an indication of a subscriber's desire to receive targeted messages and explicit user data provided by the subscriber; and store the explicit user data in association with the respective subscriber for the subscriber with the desire to receive targeted messages; storing a plurality of ad campaigns, each ad campaign including: user profiling criteria; advertisement message data; and advertisement timing data; targeted messaging functionality configured to: determine target subscribers to receive a targeted message of an ad campaign of the plurality of ad campaigns by: receiving a selection of a precedence order for the implicit user data or the explicit user data; querying the implicit user interest database and the explicit user interest database using the profiling criteria of the ad campaign; determining if user data of a subscriber stored matches the profiling criteria of an ad campaign, wherein when user data of a corresponding type is present in both the implicit user interest database and the explicit user interest, using the user data from one of the implicit user interest and the explicit user interest according to a selected precedence order for the user data present in the implicit user interest database and the user data present in the explicit user interest database; wherein the profiling criteria of each ad campaign comprises a plurality of criteria corresponding to a plurality of subscriber attributes defining user information or user device information, and wherein each criterion in the profiling criteria is associated with a respective precedence order for comparing the criterion with corresponding user data from either the user data present in the implicit user interest database or the user data present in the explicit user interest database when the corresponding user data is present in both the implicit user interest database and the explicit user interest database; and when user data matches the profiling criteria, adding the associated subscriber to the target subscribers; and transmit a message to one or more of the target subscribers with the desire to receive targeted messages in accordance with the advertisement timing data and the advertisement message data of the ad campaign as an SMS message, an MMS message, an email, a message via a social network, or combinations thereof.
The limitations, as drafted and detailed above, recites generating of implicit data from monitored information, receiving explicit data and a user desire to receive targeted advertising, and based on this, targeting advertising to users, which falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, and more specifically advertising, marketing or sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements of system (claim 23, not clearly structural), a server (claims 23, 32, 41), plurality of mobile devices (claims 23, 32), mobile telecommunication network (claims 23, 32, 41), context aware engine (claims 23, 32, 41, not clearly structural), service provider network interface (claims 23, 32, 41) user devices (claims 23, 32, 41), user interest database (claims 23, 32, 41, merely storage), explicit user interest database (claims 23, 32, 41, merely storage), ad database (claims 23, 32, 41, merely storage), non-transitory computer-readable medium (claim 41), and one or more processors (claim 41). 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 monitoring, generating, storing, receiving, determining, querying, adding, and transmitting) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. There are no additional functional limitations to be considered under prong two.
Accordingly, 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 system (claim 23, not clearly structural), a server (claims 23, 32, 41), plurality of mobile devices (claims 23, 32), mobile telecommunication network (claims 23, 32, 41), context aware engine (claims 23, 32, 41, not clearly structural), service provider network interface (claims 23, 32, 41) user devices (claims 23, 32, 41), user interest database (claims 23, 32, 41, merely storage), explicit user interest database (claims 23, 32, 41, merely storage), ad database (claims 23, 32, 41, merely storage), non-transitory computer-readable medium (claim 41), and one or more processors (claim 41) 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 computer (see Applicant specification Page 6 Line 5 – Page 8 Line 7); 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.
The dependent claims 24, 25, 30, 31, 33, 34, 39, 40, 44, 45, 48, and 49 appear to merely limit updating the target subscribers, addition of one or more broad APIs, type of monitored information, type of profiling criteria, profiling criteria having a precedence order, updating occurring over a duration of a campaign, and storing subscriber indications in an opt-in database, and therefore only limit the application of the idea, and not add significantly more than the idea (i.e. “PEG” Step 2B=No).
The system (claim 23, not clearly structural), a server (claims 23, 32, 41), plurality of mobile devices (claims 23, 32), mobile telecommunication network (claims 23, 32, 41), context aware engine (claims 23, 32, 41, not clearly structural), service provider network interface (claims 23, 32, 41) user devices (claims 23, 32, 41), user interest database (claims 23, 32, 41, merely storage), explicit user interest database (claims 23, 32, 41, merely storage), ad database (claims 23, 32, 41, merely storage), non-transitory computer-readable medium (claim 41), and one or more processors (claim 41) are each functional generic computer components that perform the generic functions of monitoring, generating, storing, receiving, determining, querying, adding, and transmitting, all common to electronics and computer systems.
Applicant's specification does not provide any indication that the system (claim 23, not clearly structural), a server (claims 23, 32, 41), plurality of mobile devices (claims 23, 32), mobile telecommunication network (claims 23, 32, 41), context aware engine (claims 23, 32, 41, not clearly structural), service provider network interface (claims 23, 32, 41) user devices (claims 23, 32, 41), user interest database (claims 23, 32, 41, merely storage), explicit user interest database (claims 23, 32, 41, merely storage), ad database (claims 23, 32, 41, merely storage), non-transitory computer-readable medium (claim 41), and one or more processors (claim 41) are anything other than generic, off-the-shelf computer components. Therefore, the claims do not amount to significantly more than the abstract idea (i.e. “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claims 23-25, 30-34, and 39-49 are not patent eligible.
Novel/Non-Obvious Subject Matter
Claims 23-25, 30-34, 39-41, 44, 45, 48, and 49 as currently written are novel/non-obvious over prior art. However, the rejection under 35 U.S.C. 101 is currently pending and represents a barrier to allowability. Examiner notes that any amendments made to the claims in an attempt to correct pending rejections could drastically alter the claim scope and could open up the possibility of prior art being applied in a future action.
None of the prior art of record, alone or in combination, teaches each and every limitation of the claimed invention. Specifically, none of the applied references teaches “wherein the profiling criteria of each ad campaign comprises a plurality of criteria corresponding to a plurality of subscriber attributes defining user information or user device information, and wherein each criterion in the profiling criteria is associated with a respective precedence order for comparing the criterion with corresponding user data from either the user data present in the implicit user interest database or the user data present in the explicit user interest database when the corresponding user data is present in both the implicit user interest database and the explicit user interest database” in combination with the other claimed limitations. There is no prior art that teaches each and every limitation of the invention as a whole in combination with one another. Therefore Examiner finds the independent claims to be allowable over the prior art of record.
Response to Arguments
Applicant argues “the claim limitations do not merely recite "targeted advertising." The claim's focus is a specific technical arrangement operating and interfacing within a mobile telecommunications network to acquire, generate, and store data in a particular way that is feasible only via network-embedded computing. The claim recites how the system operates in that environment, not just the result. As such, Applicant disagrees that the claim recites a method of organizing human activity”. However, the entirety of the claimed operations work to accomplish generating of implicit data from monitored information, receiving explicit data and a user desire to receive targeted advertising, and based on this, targeting advertising to users. While the operations are implemented using computer functionality, the fact remains that the claim language still very clearly recites an abstract idea. Further, Examiner notes that the claimed invention shares similarities with abstract ideas of other federal circuit decisions, such as Electric Power Group (collecting information, analyzing it, and displaying certain results of the collection and analysis) and Int. Ventures v. Cap One Bank (tailoring content based on information about the user). Therefore, the claims indeed recite a method of organizing human activity.
Applicant argues “these additional limitations provide a concrete technical improvement, not simply an improvement in the field of targeted advertising, but an improvement in how user data is collected and generated from network traffic in a mobile telecommunications network and used for determining whether or not to send a message to a subscriber, which is one of the sought after improvements by the inventors (i.e. the ability to discriminate between ads to send and ads not to send, as described in the Background of the instant application)”. However, this improvement is entirely similar to the abstract ideas identified in Electric Power Group and Int. Ventures v. Cap One Bank, listed above. This improvement realized by the claimed invention and detailed in the background is merely an improvement to the abstract idea of Certain Methods of Organizing Human Activity, and specifically the advertising. In the SAP decision (See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018)), the courts found that an improvement made to the abstract idea is not patent eligible. 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.
Applicant argues “the above claim amendment further anchors the claim in a specific data-handling architecture that changes how the system executes matching queries. This is a concrete, rule-driven workflow. Furthermore, the amended limitation deepens the technical specificity by reciting a particular data-structure relationship and a concrete execution behavior, rather than generic ad targeting”. However, the added limitation merely recites additional targeting parameters without the inclusion of any additional elements. Once an abstract idea has been identified, eligibility under 35 U.S.C. 101 must be established through the additional elements, not additional details to the abstract idea (see the SAP decision above).
Applicant argues “the presently claimed subject-matter is not simply mere instructions to apply an exception using a generic computer component, but rather the claimed arrangement reflects a specific implementation that meaningfully limits the claim to a practical network-embedded solution”. However, nothing in the specification (specifically pages 6-8 that describes the network system) is anything other than generic computer components connected over a conventional network system. There is no technical improvement to the computer or network functionality, and so even if there is arguably a network-embedded solution, that solution is merely a way to better target advertising, and is not enough to overcome the 35 U.S.C. 101 rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/MICHAEL BEKERMAN/ Primary Examiner, Art Unit 3682
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