DETAILED ACTION
This action is responsive to papers filed on 3/16/2026.
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 .
Double Patenting
The nonstatutory 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 nonstatutory 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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,551,269. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader and the differences between the claim sets would be obvious.
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, 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 1 and 18, the claims recite, in part, train a model to generate inferences based on in part on rules and logic using a plurality of requests for delivery and using a plurality of sets of content items respectively matched with the plurality of requests; generate, using a bid request simulator including the model, a request for a content item specified to be selected for delivery based on at least one property associated with the content item; receive an underdelivery report for the content item based on the request, the underdelivery report being generated using the at least one property associated with the content item; determine, based on the underdelivery report, one or more factors that contributed to the content item not being selected for delivery; generate, based at least in part on the one or more factors, a recommendation to improve delivery of the content item; adjust, based on the recommendation, at least one property associated with the content item, further train the model to generate the inferences based in part on more closely estimated rules and logic using the adjusted at least one property associated with the content item, and generate using the bid request simulator including the further trained model one or more additional requests for at least the content item to be selected for delivery.
Regarding claim 5, the claim recites, in part, train a model to generate inferences based in part on estimated rules and logic using a plurality of requests for delivery and using a plurality of sets of content items respectively matched with the plurality of requests; generate using a bid request simulator including the model a request for a content item specified to be selected for delivery based on at least one property associated with the content item; determine properties for a request for delivery based at least in part on the at least one property of the content item; submit the request having the determined properties; determine properties for a bid request based at least in part on the properties of a content item; submit the bid request having the determined properties, determining one or more factors that contributed to whether the content item is a selected content item or an unselected content item in response to the request; generate, based at least in part on the one or more factors, a recommendation to improve delivery of the unselected content item; relating at least one of the one or more factors to the at least one property associated with a content item; adjust, based on the recommendation, one or more of the at least one property associated with the content item using the related factors; further train the model to generate the inferences based in part on more closely estimated rules and logic using the adjusted at least one property associated with the content item, and generate using the bid request simulator including the further trained model one or more additional requests determined for at least the content item to be selected for delivery.
The limitations, as drafted and detailed above, recites determining and implementing recommendations to improve delivery for underdelivered commercial content, which falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, and more specifically commercial interactions. 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 computing device processor (claims 1, 5), memory device (claims 1, 5), content server (claims 1, 5, 18), machine learning (claims 1, 5, 18, merely apply it), computer-implemented (claim 18) and bid request simulator computing device (claims 1, 5, 18). 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 training, receiving, submitting, determining, generating, relating, and adjusting) 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 computing device processor (claims 1, 5), memory device (claims 1, 5), content server (claims 1, 5, 18), machine learning (claims 1, 5, 18, merely apply it), computer-implemented (claim 18) and bid request simulator computing device (claims 1, 5, 18) 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 Paragraphs 0048 and 0057); 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 2-4, 6-17, 19, and 20 appear to merely limit specifics of the request, requesting to troubleshoot underdelivery and receiving a report, properties being associated via a matching model, previous spending being below a threshold amount, determining a set of candidate content items , determining one or more factors that contributed to underdelivery, adjusting a property and reprocessing the request, determining a property to adjust based on the factors, logic for matching content items to requests, generating second requests and aggregating information to determine factors for underdelivery, generating the matching model based on training data, updating the matching model based on the adjustment, and populating a request schema, and therefore only limit the application of the idea, and not add significantly more than the idea (i.e. “PEG” Step 2B=No).
The computing device processor (claims 1, 5), memory device (claims 1, 5), content server (claims 1, 5, 18), machine learning (claims 1, 5, 18, merely apply it), computer-implemented (claim 18) and bid request simulator computing device (claims 1, 5, 18) are each functional generic computer components that perform the generic functions of training, receiving, submitting, determining, generating, relating, and adjusting, all common to electronics and computer systems.
Applicant's specification does not provide any indication that the computing device processor (claims 1, 5), memory device (claims 1, 5), content server (claims 1, 5, 18), machine learning (claims 1, 5, 18, merely apply it), computer-implemented (claim 18) and bid request simulator computing device (claims 1, 5, 18) 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 1-20 are not patent eligible.
Novel/Non-Obvious Subject Matter
Claims 1-20 as currently written are allowable over prior art. However, the rejection under double patenting as well as the rejection under 35 U.S.C. 101 are both currently pending and represent 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. Examiner recommends filing a Terminal Disclaimer to advance prosecution and remove the double patenting rejection.
Response to Arguments
Applicant argues “The Office fails to provide sufficient reasoning to identify any specific claim element(s) that is/are believed to recite an abstract idea”. However, the first 2 paragraphs of the rejection above detail multiple claim elements, while the third paragraph specifies the abstract idea that is recited by those claim elements and the “bucket” in which the abstract idea falls. The reasoning is laid out in the rejection above.
Applicant argues “The system's technical improvements include: (1) simultaneous analysis of multiple request/response patterns across different content servers; (2) detection of complex correlations between content properties and delivery outcomes using a bid request simulator computing device; (3) real-time property adjustments based on processing large volumes of delivery data; and (4) continuous refinement of analysis through technical feedback loops that incorporate each adjustment's impact, as described in at least paragraphs [0014], [0024], [0025], [0030], [0041], and [0045]. These capabilities represent technical improvements to how content delivery systems operate. The technical nature of these improvements is evidenced by the system's ability to process and analyze complex data relationships, implement real-time adjustments, and continuously optimize delivery parameters. The system transforms the technical field by enabling sophisticated analysis and optimization that enhances the functioning of the bid request simulator computing device”. However, these types of improvements are merely attained through the application of the general purpose computer systems involved. Automating and speeding up processes with regard to the abstract idea by merely applying general purpose computer technology is not enough to represent significantly more than the abstract idea. Each of the “improvements” outlined above are merely attained through this application, and are not improvements to a technical field, but rather to the implementation of the abstract idea.
Applicant argues “Other examples of claims that recite advertising, marketing, or sales activities or behaviors include claims that recite steps or limitations for structuring a sales force or marketing company, or an algorithm for determining the optimal number of visits by a business representative to a client. See MPEP § 2106.04(a)(2)(II)(B). The claim steps described above do not recite anything similar to these subject matters” and “at least the steps of claim 1 relating to the "bid request simulator computing device," "content server," "at least one property," and "estimated rules and logic" associated with a "content item" are not analogous to any of the examples that courts have held recite advertising, marketing, or sales activities or behaviors”. However, the claims do not have to be identical to other ineligible claimed to recite an abstract idea. The claimed invention irrefutably recites advertising. Further, the claims share similarities with other Certain Methods of Organizing Human Activity, such as Electric Power Group (collecting information, analyzing it, and displaying certain results of the collection and analysis) and Intellectual Ventures v. Capital One Financial (collecting, displaying, and manipulating data). Therefore, the claims are still believed to recite an abstract idea within the grouping of Certain Methods of Organizing Human Activity.
Applicant argues “The automated analysis and adjustment capabilities, combined with the dynamic property adjustment system, provide concrete improvements to computer functionality rather than merely using computers as a tool. This is evidenced by the system's ability to automatically diagnose and correct delivery issues that previously required extensive manual troubleshooting…. amended claim 1 constitutes an improvement to the technical field of bid request simulator computing devices. As of the effective filing date, existing approaches for the conduct of content delivery campaigns were unsatisfactory. For example, present technology requires a publisher to offer, through a request, a display instance of the content space to a content provider through an electronic process, where a situation may occur in which the content is underdelivered. This may indicate that the content provider is not being effectively serviced by the content exchange and the content exchange is not performing optimally. See generally Specification, [0002]”. However, as stated before, the computing device is not actually improved, but rather the abstract idea of determining and implementing recommendations to improve delivery for underdelivered commercial content. In the SAP decision (See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018)), the determination was made that the improvement made to the abstract idea is not patent eligible. SAP v. Investpic, on Page 2, line 22 through Page 3, line 13, states “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 cites paragraph 0013 of the instant specification and argues “It is the claimed "bid request simulator computing device," "content server," "at least one property," and "estimated rules and logic" associated with a "content item" in the context of the other operations of amended claim 1 that enable this technical solution”. However, Paragraph 0013 states “various embodiments attempt to resolve issues related to underdelivery of an electronic paid content item by a content exchange by determining a cause of the underdelivery. In accordance with an embodiment, underdelivery refers to a situation in which the budget set for a certain content item is not spent in its entirety”. This is not a technical problem, but rather a business-centric problem. Any improvement to this business-centric problem would not be a technical solution, as to technical field has been improved.
Applicant argues “The ordered combination of elements amounts to significantly more than the abstract idea. This technological solution represents an unconventional technical improvement over prior systems. The system's ability to automatically identify, adjust, and improve from represents capabilities beyond what was routine and conventional in the field” and “the claims as amended require a combination of elements which result in an unconventional arrangement of technology much like BASCOM, and integrate any abstract idea into a practical application, with support from the specification. The amended claims more specifically recite certain elements, including "bid request simulator," "content server," "estimated rules and logic," "at least one property," and "estimated rules and logic" associated with a "content item," which are described in the specification as part of the unconventional arrangement”. However, as explained above, there is nothing in the specification that describes any alleged improvements to the technical operation of the computer system. The physical components are addressed in the analysis separate from the abstract idea, but those components are merely general purpose computer components that operate in a conventional way. Likewise, in BASCOM, the computing elements were also determined to be merely generic computer, network, and internet components. The eligibility of BASCOM was in the non-conventional non-generic arrangement of those components, as outlined by the specification. Specifically, it was determined that the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user would provide “both the benefits of a filter on the local computer, and the benefits of a filter on the ISP server”. There is no such functionality present in the current claim language. Rather, the claims are entirely directed to the abstract idea while merely using general purpose computing elements to apply the abstract idea. Unlike BASCOM, the present disclosure does not explain how the generic computer components form an unconventional arrangement.
Applicant cites paragraphs [0013]-[0014], [0016], [0023], [0025], [0027]-[0029], [0042]- [0043], [0045] of the specification and argues “the language of the specification, including at least outlines how a multi-step, self-adapting system allows users the ability to improve content delivery without having to know why the content is not being selected by content servers and without having to know the winning bid requests” and “The ability to generate requests to determine a cause of underdelivery which can then be used to adjust parameters of the content items, and then update the system based on those adjustments to generate additional requests create an unconventional arrangement that, much like BASCOM, integrate the abstract idea into a practical application”. However, as explained above in great detail, the BASCOM decision appears to be non-analogous to the instant claim language.
Applicant argues “The technical benefits of the claimed system include: (1) reduced computational resources through automated diagnosis, (2) improved accuracy through continuous improvements to the system, (3) dynamic property adjustment capabilities that were not previously possible, and (4) automated feedback loops that improve system performance over time, as described in at least paragraphs [0014], [0024], [0025], [0030], [0041], and [0045]”. However, with regard to benefits (1)-(4), these benefits are not outlined in the specification as having been envisioned as improvements to existing systems. With specific regard to benefit (2), improved accuracy is a benefit of the application (apply it) of recursively trained machine learning, and does not represent significantly more. With specific regard to benefit (3), this dynamic property adjustment is directed to the abstract idea. The only improvements that appear to be envisioned by the specification have to do with determining recommendations to improve delivery for underdelivered commercial content, which is an abstract idea.
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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