DETAILED ACTION
Status
This communication is in response to Applicant’s “AMENDMENT” filed on October 14, 2025 (hereinafter “Amendment”). In the Amendment, Applicant amended Claims 1, 10, 17 and 20; cancelled no claim(s); and added no claim(s). Claims 9 and 19 were previously cancelled. Therefore, Claims 1-8, 10-18 and 20-22 remain currently pending and presented for examination. Of the pending claims, Claims 1, 17 and 20 remain the independent claims.
The present application (U.S. App. No. 18/162,279) was filed after March 16, 2013, and therefore, is being examined under the first inventor to file (FITF) provisions of the America Invents Act (AIA ).
Original Claims 1-20 were originally presented by Applicant and, therefore, have been constructively elected by original presentation for prosecution on the merits per MPEP §§ 819 & 821.03.
Examiner notes this case has published as U.S. Patent Application Publication No. 2024/0257176 of Kamis et al. (hereinafter “Kamis”), without any of the corrections (i.e., submitted in Applicant’s “CORRECTED ADS FORM” filed on March 8, 2023) being incorporated by the USPTO.
Priority/Benefit Claim
No claim(s) for benefit or priority exists in this application and, therefore, the effective filing date of this application is its filing date of January 31, 2023.
Information Disclosure Statement (IDS)
Examiner notes MPEP § 2001.06(b): “prior art references from one application must be made of record in another subsequent application if such prior art references are ‘material to patentability’ of the subsequent application”.
Response to Amendments
A Summary of the Response to Applicant’s Amendment:
Applicant’s Amendment does not overcome rejections to Claims 1-8, 10-18 and 20-22 under 35 U.S.C. § 101; therefore, the Examiner maintains/asserts § 101 rejections to Claims 1-8, 10-18 and 20-22, as provided below.
Applicant’s Amendment does not overcome prior art rejections to Claims 1-8, 10-18 and 20-22 under 35 U.S.C. § 103; therefore, the Examiner maintains/submits § 103 rejections to Claims 1-8, 10-18 and 20-22, as provided below.
Applicant’s arguments are found to be not persuasive; please see Examiner’s “Response to Arguments” provided below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b) of the America Invents Act (AIA ):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-8, 10-18 and 20-22 are rejected under 35 U.S.C. 112(b) of the AIA as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. “A claim is indefinite when it contains words or phrases whose meaning is unclear” (MPEP § 2173.05(e)).
Independent Claims 1, 17 and 20 are rejected under 35 U.S.C. 112(b) of the AIA , as being indefinite because it is unclear as to what the phrase “the modified first content item” means in the context of each independent claim. More specifically, it is unclear as to whether “the modified first content item” (i) includes “a less relevant portion of the first content item”, or (ii) does not include the “less relevant portion” due to removal) because Applicant’s phrase “remove the less relevant portion”, as currently recited in each of the independent claims and in view of MPEP § 2111.01, is not positively recited as being part of the “modifying” operation in view of MPEP §§ 2111.01 and 2111.04. For example, the phrase “wherein the one or more…models determine a less relevant portion… and remove the less relevant portion” is not (in view of MPEP § 2111.01) necessarily required to be part of Applicant’s “modifying” operation recited in Claims 1, 17 and 20. In addition, see Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1371, 65 USPQ2d 1865, 1869-70 (Fed. Cir. 2003) where the CAFC held that “Although the specification discussed only a single embodiment, the court held that it was improper to read a specific order of steps into method claims where, as a matter of logic or grammar, the language of the method claims did not impose a specific order on the performance of the method steps, and the specification did not directly or implicitly require a particular order”. Hence, in view of Altiris Inc. v. Symantec Corp., it is unclear (A) whether “causing the presentation of the modified first content item” occurs before “the one or more…models… remove the less relevant portion”, or (B) whether “causing the presentation of the modified first content item” occurs after “the one or more…models… remove the less relevant portion”, and; therefore, it is unclear as to whether “the modified first content item” includes “a less relevant portion of the first content item” or does not include the “less relevant portion” — especially since it is unclear whether recited “wherein the one or more…models determine… and remove” is to be understood as being part of Applicant’s recited “the operations comprising” (of independent Claims 1 and 20; or “the method comprising” of independent Claim 17, or is an operation performed by “the one or more machine-learned models” outside the scope of Applicant’s recited “the operations comprising” (of independent Claims 1 and 20; or “the method comprising” of independent Claim 17). Therefore, it is unclear whether (-1-) “the modified first content item” definitely includes “the less relevant portion”, or (-2-) “the modified first content item” is not required to include “the less relevant portion”. As currently presented, whether “the modified first content item” includes or does not include “the less relevant portion” is amenable to multiple plausible constructions and, therefore, a person having ordinary skill in the art would be unable to determine what the Applicant does and does not regard as the invention. Consequently, independent Claims 1, 17 and 20 are rejected under 35 U.S.C. 112(b) of the AIA , as being indefinite. Appropriate corrections are required.
Claims 2-8, 10-16 and 21-22 depend from independent Claim 1, but do not resolve the above issues and inherit the deficiencies of the parent claim(s); therefore, Claims 2-8, 10-16 and 21-22 are rejected under 35 U.S.C. 112(b) of the AIA . Similarly, Claim 18 depends from Claim 17, but does not resolve the above issues and directly inherits the deficiencies of independent Claim 17; therefore, Claim 18 is rejected under 35 U.S.C. 112(b) of the AIA .
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 1-8, 10-18 and 20-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification” (MPEP § 2111). In view of this standard and based upon consideration of all of the relevant factors with respect to each claim as a whole, Claims 1-8, 10-18 and 20-22 are rejected as ineligible subject matter under 35 U.S.C. 101.
Step 1: Claims 1-8, 10-18 and 20-22 satisfy Step 1 enunciated in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014).
Step 2A: Claims 1-8, 10-18 and 20-22 are rejected under § 101 because Applicant’s claimed subject matter is directed to an abstract idea without significantly more. The rationale for this finding is that Applicant’s claims recite identifying/selecting content items (e.g., advertisements) to provide to a user within a particular time slot based on calculated/predicted performance metrics (i.e., conversions rates) associated with the content items {which is consistent with Applicant’s disclosure explaining that “…identifying an ideal content item to be presented to a user is a challenging task” mentioned at paragraph [0003] of Applicant’s original specification}, with Applicant’s abstract idea being more particularly recited in Applicant’s pending claims save for recited (non-abstract claim elements):
a client device;
a request from the client device;
a content database;
an impression having time slots;
each of the recited operations/processes of receiving, accessing, removing and causing presentation;
(only Claim 1 and corresponding dependent claims) a computing system to present an impression in a computer application, the system comprising one or more processors and one or more non-transitory computer-readable media that collectively store instructions that, when executed by the one or more processors, cause the computing system to perform operations;
(only Claims 1 and 17) a computer application;
(only Claims 2 and 18) receiving from a third-party application;
(only Claims 3 and 18) updating the content database;
(only Claim 10) a video and removing a portion of the video;
(only Claim 11) a first video and a first end card, wherein the first end card is presented after the first video with a link to install a first mobile application on the client device;
(only Claim 12) a second video and a second end card, wherein the second end card is presented in response to a swipe gesture to the first end card;
(only Claim 14) presenting on the computer application;
(only Claim 15) the impression including a video progress bar;
(only Claim 16) the impression including an indication; and
(only Claim 20) a non-transitory computer-readable media that store instructions that, when executed by one or more computing devices, cause the one or more computing devices to perform operations).
However, calculating/predicting performance metrics (i.e., conversions rates) associated with content items (e.g., advertisements) to select/identify and provide the content items to a user within a particular time slot, as currently recited in Applicant’s pending claims and further explained below, is within a certain method of organizing human activity — (i) fundamental economic principle or practice; and/or (ii) commercial interaction (including advertising, marketing or sales activities or behaviors; business relations) as well as within a mathematical concept (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations) (also see MPEP § 2106.04(a)(2), subsection I). MPEP 2106.04(a)(2)(II)(A) provides examples of “fundamental economic principles or practices” and MPEP 2106.04(a)(2)(II)(B) provides additional discussion and examples of commercial or legal interactions. This judicial exception (i.e., abstract idea exception) is not integrated into a practical application because each claim as a whole, having the combination of additional elements beyond the judicial exception(s), does not integrate the exception into a practical application of the exception and, therefore, the pending claims are “directed to” a judicial exception under USPTO Step 2A. More specifically, each claim as a whole does not appear to reflect the combination of additional elements as: (1) improving the functioning of a computer itself or improving another technology or technical field, (2) applying the judicial exception with, or by use of, a particular machine/manufacture that is integral to the claim, (3) effecting a transformation or reduction of a particular article to a different state or thing, or (4) 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. Instead, any improvement is to the underlying abstract idea of identifying/selecting content items (e.g., advertisements) to provide to a user within a particular time slot based on calculated/predicted performance metrics (i.e., conversions rates associated with the content items). SAP Am., Inc. v. InvestPic, LLC, No. 2017-2081, 2018 U.S. App. LEXIS 12590, Slip. Op. 13 (Fed. Cir. May 15, 2018) (“What is needed is an inventive concept in the non-abstract realm.”). Examiner notes that Applicant's recited use or usage of “one or more machine-learned models” (bolding and underlining emphases added by Examiner), as recited in Claims 1-2, 5-8, 10, 17-18 and 20-21, appears as a high-level black box with no detail about the machine learning algorithm itself or any machine learning processes, such as how Applicant's model operates on input data (e.g., 1st & 2nd durations; and 1st and 2nd conversion rates, for instance) to produce an output, such as Applicant’s selection of first and second content items for respective first and second slots, as recited in each of independent Claims 1, 17 and 20. In addition, Examiner notes that no detail of any training algorithm appears to be mentioned in Applicant's disclosure and, therefore, no specific way of training the algorithm/model exists within Applicant's recited use of a machine model that has already “learned” (past tense), which is consistent with the CAFC’s analysis in Recentive Analytics, Inc. v. Fox Corp., Case No. 2023-2437 (Fed. Cir. Apr. 18, 2025), which found “The machine learning technology described…is conventional, as the…specifications demonstrate” (page 11 of Recentive Analytics, Inc. v. Fox Corp.). Also similar to Recentive Analytics, Inc. v. Fox Corp., Case No. 2023-2437 (Fed. Cir. Apr. 18, 2025), Applicant’s claims “do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning model[] to be applied” (see page 18 of Recentive Analytics, Inc. v. Fox Corp.). Consequently, Applicant's mere recitation to "machine-learned models" (bolding and underlining emphases added by Examiner) is not sufficient by itself to amount to a practical application under Step 2A, Prong 2 of the Subject Matter Eligibility (SME) analysis in view of Recentive Analytics, Inc. v. Fox Corp., Case No. 2023-2437 (Fed. Cir. Apr. 18, 2025).
In addition, although Applicant’s pending claims (e.g., independent Claims 1, 17 and 20) mention:
calculating conversion rates (e.g. CTR1 and CTR2 per as-filed spec. ¶ [0032]),
adding duration values (e.g., 16 seconds + 16 seconds per as-filed spec. ¶ [0030]),
determining a total duration value (e.g., 32 seconds per as-filed spec. ¶ [0030]) is greater than another value {e.g., 30 seconds per as-filed spec. ¶ [0030]}, as well as
modifying (e.g., deleting, truncating, removing, etc.) time off of the first content item {e.g., truncate/delete 1 second from each content item per as-filed spec. ¶ [0030], or truncate/delete 2 seconds from 1st content item per as-filed spec. ¶ [0030]},
these techniques encompass mathematical concepts in the form of formulas, equations, and calculations which also have been determined to constitute abstract ideas. See Memorandum, "Grouping of Abstract Ideas" and cases cited in footnote 12, such as enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance (84 Fed. Reg. 50). As noted on page 4 of the “October 2019 Update: Subject Matter Eligibility” issued by the USPTO, Examiner notes that a claim does not have to recite the word “calculating” in order to be considered a mathematical calculation. For example, a step of “determining” a variable or number using mathematical methods or “performing” a mathematical operation may also be considered mathematical calculations when the broadest reasonable interpretation (BRI) of the claim, in light of the specification, encompasses one or more mathematical calculations. Applicant’s additional elements, taken individually and in combination, do not appear to be integrated into a practical application since they embody mere instructions to implement the abstract idea on a computer or mere use of a computer as a tool to perform the abstract idea, do no more than generally linking the use of the abstract idea to a particular technological environment or field of use {e.g., a computer network having a client computing device (e.g., a smartphone with software apps) in network communication with a server including a content database for storing content items}, and amount to no more than combining the abstract idea with insignificant extra-solution activity including each of Applicant’s recited operations/processes of receiving, accessing, removing and causing presentation (e.g., transmitting for display), as further explained below. For the reasons discussed above, Applicant’s pending claims are directed to an abstract idea that is not integrated into a practical application under Step 2A, Prong 2 of the Subject Matter Eligibility (SME) analysis of 35 U.S.C. 101.
Step 2B: Under Step 2B enunciated in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014), Applicant’s instant claims do not recite limitations, taken individually and in combination, that are sufficient to amount to “significantly more” than the abstract idea because Applicant’s claims do not recite, as further explained in detail below, an improvement to another technology or technical field, an improvement to the functioning of a computer itself, an application with or by a particular machine, a transformation or reduction of a particular article to a different state or thing, unconventional steps confining the claim to a particular useful application, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Examiner notes that each of Claims 17-18 is drawn to a method; however, the method steps do not recite, require, or indicate implementation by a particular machine since none of limitations recited in Applicant’s method claims are performed by any computer or processing device, since Applicant’s recited computer-implemented method encompasses a situation where a computing device (not recited) does no more than assist/help a person perform such method processes/thoughts when the person is using the computing device (not recited). Even if a computer/machine was implied (e.g., based on “computer-implemented method” and “in a computer application” recited in preamble of Claim 17, for instance), Applicant’s claim limitations taken individually and in combination would be merely instructions to implement the abstract idea on a computer and would require no more than generally linking the use of an abstract idea to a particular technological environment or field of use {e.g., a computer network having a client computing device (e.g., a smartphone with software apps) in network communication with a server including a content database for storing content items}, and having Applicant’s abstract idea combined with insignificant extra-solution activity including each of Applicant’s recited operations/processes of receiving, accessing, removing and causing presentation (e.g., transmitting for display), as further explained below. Furthermore, Examiner also notes that albeit limitations recited in the Claim 1 are performed by the generically-recited “computing system” while limitations recited in independent Claim 20 are performed by the generically-recited “one or more computing devices”, these claim limitations taken individually and in combination are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to generally link the abstract idea to a particular technological environment or field of use {e.g., a computer network having a client computing device (e.g., a smartphone with software apps) in network communication with a server including a content database for storing content items}, and no more than a combination of the abstract idea with insignificant extra-solution activity including each of Applicant’s recited operations/processes of receiving, accessing, removing and causing presentation (e.g., transmitting for display), as further explained below. As mentioned above, the claim elements in addition to the abstract idea arguably include: a client device; a request from the client device; a content database; an impression having time slots; each of the recited operations/processes of receiving, accessing, removing and causing presentation; (only Claim 1 and corresponding dependent claims), a computing system to present an impression in a computer application, the system comprising one or more processors and one or more non-transitory computer-readable media that collectively store instructions that, when executed by the one or more processors, cause the computing system to perform operations; (only Claims 1 and 17) a computer application; (only Claims 2 and 18) receiving from a third-party application; (only Claims 3 and 18) updating the content database; (only Claim 10) a video and removing a portion of the video; (only Claim 11) a first video and a first end card, wherein the first end card is presented after the first video with a link to install a first mobile application on the client device; (only Claim 12) a second video and a second end card, wherein the second end card is presented in response to a swipe gesture to the first end card; (only Claim 14) presenting on the computer application; (only Claim 15) the impression including a video progress bar; (only Claim 16) the impression including an indication; and (only Claim 20) a non-transitory computer-readable media that store instructions that, when executed by one or more computing devices, cause the one or more computing devices to perform operations). However, each of these components is recited at a high level of generality that taken individually and in combination perform corresponding generic computer functions of receiving, accessing, removing and causing presentation — there is no indication that the combination of elements improves the functioning of a computer or improves any other technology since the additional elements taken individually and collectively merely provide generic computer implementations known to the industry. Furthermore, Examiner notes that none of the processes/steps recited in Applicant’s pending claims taken individually and in combination impose a meaningful limit on the claim’s scope since none of recited processes/operations taken individually and in combination involve activity that amounts to more than generic computer functions/activity. The operations/processes of receiving, accessing, removing and causing presentation, as currently recited individually and in combination in Applicant’s pending claims, are considered to be generic computer functions since they involve having the abstract idea combined with insignificant extra-solution activity, and generally linking the use of an abstract idea to a particular technological environment or field of use previously known to the industry — each of the operations of “receiving” encompasses a data input/loading or retrieving function performed by virtually all general purpose computers {see Alice Corp., 134 S. Ct. at 2360; see Ultramercial, 772 F.3d at 716‐17; see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); see Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014); and see Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S.Ct. 1289, 101 USPQ2d 1961 (2012)}; each of the operations of “accessing” encompasses a data recognition/inquiry function or lookup function performed by virtually all general purpose computers {see Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 113 U.S.P.Q.2d 1354 (Fed. Cir. 2014), hereinafter “Content Extraction”, for data recognition); each of the operations of “updating” the content database (see Claims 3 and 18) as well as “removing” encompasses a data updating/saving or depositing function performed by virtually all general purpose computers {see Alice Corp., 134 S. Ct. at 2360; Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988 (Fed. Cir. 2014), hereinafter “Cyberfone”; and Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 113 U.S.P.Q.2d 1354 (Fed. Cir. 2014), hereinafter “Content Extraction”, for data storage}; each of the operations of “causing presentation” (e.g., transmitting for display) encompasses a data output/transmittal function performed by virtually all general purpose computers {see Ultramercial, 772 F.3d at 716‐17; see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); and see Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014)}. In addition, with reference to Figure 1 of Applicant’s drawings, Examiner notes that Applicant’s disclosure mentions that its “network 180 can be any type of communications network” (see ¶ [0076] of Applicant’s as-filed specification with bolding emphasis added by Examiner); its “user computing device 102 can be any type of computing device, such as… a mobile computing device (e.g., smartphone or tablet), a gaming console or controller, a wearable computing device, an embedded computing device, or any other type of computing device” (see ¶ [0055] of Applicant’s as-filed specification with bolding emphasis added by Examiner); and its “server computing system 130 includes one or more processors 132 … The one or more processors 132 can be any suitable processing device….”(see ¶ [0066] of Applicant’s as-filed specification with bolding and underlining emphases added by Examiner). Examiner notes it may be worth being mindful of the “July 2015 Update: Subject Matter Eligibility” document, at page 7, second and sixth bullet points (July 30, 2015) regarding various well‐understood, routine, and conventional functions of a computer. Employing well-known computer functions individually and in combination to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not add significantly more, similar to how limiting the computer-implemented abstract idea in Flook (Parker v. Flook, 437 U.S. 584, 19 U.S.P.Q. 193 (1978)) to petrochemical and oil-refining industries was insufficient. In addition, it may be worth being mindful of the CAFC’s 4/26/2021 opinion in Whitserve LLC v. Dropbox, Inc. (Fed. Cir. 2021) where the CAFC held that “the system is for requesting, transmitting, receiving, copying, deleting, and storing data records. Such transmitting, saving, and storing of client records is a fundamental business practice that ‘existed well before the advent of computers and the Internet,’ Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017); see, e.g., Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (‘The concept of data collection, recognition, and storage is undisputedly well-known.’)” with bolding and underlining emphases added by Examiner to quoted text from Whitserve LLC v. Dropbox, Inc. (Fed. Cir. 2021). For the reasons discussed above, Applicant’s pending claims do not satisfy Step 2B enunciated in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014).
Consequently, based upon consideration of all of the relevant factors with respect to each claim as a whole, Claims 1-8, 10-18 and 20-22 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. For information regarding 35 U.S.C. 101, please see Subject Matter Eligibility (SME) guidance and instructional materials at https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility, which includes guidance, memoranda, and updates regarding SME under 35 U.S.C. 101.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 (AIA ) which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-4, 7-8, 10, 13-18 and 20-22 are rejected under 35 U.S.C. 103 of the AIA as being unpatentable over U.S. Patent Application Publication No. 2023/0328323 of Jain et al. (hereinafter “Jain”) in view of U.S. Patent Application Publication No. 2018/0165700 of ONDA et al. (hereinafter “Onda”), and further in view of U.S. Patent Application Publication No. 2014/0040026 of Swaminathan et al. (hereinafter “Swaminathan”).
Regarding Claim 1, Jain discloses a computing system to present an impression in a computer application, comprising: one or more processors; and one or more non-transitory computer-readable media that collectively store: one or more machine-learned models configured to determine a time slot to present a content item in the impression; and instructions that, when executed by the one or more processors, cause the computing system to perform operations, the operations comprising (e.g., Figures 1-4 of Jain; and Jain at ¶¶ [0030], [0040], [0057], [0073] and [0090]–[0092]):
receiving, from a client device, a request to view the impression, the impression having a first time slot and a second time slot (e.g., receiving a content request from a user device to fill 1st and 2nd impression slots with 1st and 2nd content items — “content viewer…may use…a smartphone…to view the content provided by… content provider” such as “a plurality of content items…such as…gaming content” —Jain at ¶¶ [0037] and [0041]; “term ‘content’ may refer to any media content including…‘video content’… ‘gaming content’… any combination of such content offered…” —Jain at ¶ [0035]; Figure 1 of Jain illustrating content viewer’s device in network communication for viewing/accessing sequential content —Jain at ¶¶ [0034] and [0039]; “content viewer… to swipe/scroll through the sequence of recommended content items or click on a ‘More’ button to explore other content items that may interest the content viewer…” —Jain at ¶ [0045]; “determine an optimal content sequence for…content items based on the content viewer interaction data and the online viewer behavior. To that end, the optimal content sequence is customized to a viewer profile” —Jain at ¶ [0046]; and Jain at ¶¶ [0039], [0057] and [0082]);
accessing, from a content database, a plurality of content items, the plurality of content items having a first content item and a second content item (e.g., “use…a smartphone…to view the content provided by… content provider” such as “a plurality of content items…such as…gaming content” —Jain at ¶¶ [0037] and [0041]; “term ‘content’ may refer to any media content including…‘video content’… ‘gaming content’… any combination of such content offered…” —Jain at ¶ [0035]; “content viewer… to swipe/scroll through the sequence of recommended content items or click on a ‘More’ button to explore other content items that may interest the content viewer…” —Jain at ¶ [0045]; and Jain at ¶ [0011], [0031], [0041]), wherein the first content item has a first duration and the second content item has a second duration (e.g., Jain at ¶¶ [0040], [0064]–[0065], [0070], [0073], [0090], [0092] and [0127]);
calculating a first conversion rate associated with the first content item being presented in the first time slot and a second conversion rate associated with the second content item being presented in the second time slot (e.g., “contents are arranged in an optimal order sequence…. the optimal content sequence is a reflection of how receptive the content is” based on conversion rates —Jain at ¶¶ [0136] and [0044]; “determine… receptiveness or performance of… content items at every position in the sequence” —Jain at ¶ [0085]; as well as Jain at ¶¶ [0044], [0065], [0069] and [0073]–[0079]);
selecting, using the one or more machine-learned models based on the first and second durations and the first and second conversion rates, the first content item to be presented in the first time slot and the second content item to be presented in the second time slot (e.g., based on conversion rates, “contents are arranged in an optimal order sequence…. the optimal content sequence is a reflection of how receptive the content is” —Jain at ¶¶ [0044] and [0136]; “displaying a UI with the optimal content sequence” —Jain at ¶ [0019]; as well as Jain at ¶¶ [0040], [0044], [0064]–[0065], [0067], [0069]–[0070], [0073]–[0079], [0082], [0090], [0092] and [0127]);
modifying, using the one or more machine-learned models, content publication organization including the first content item, wherein the one or more machine-learned models perform operations including determining a less relevant portion of the first content item (e.g., modifying organization of how content items are to be displayed using the machine learning model, the organization including sequence/order of the content items in the first content item — “machine learning model employs a relative weight value assignment technique” and “the machine learning model is a recursive neural network (RNN) model. More specifically, the plurality of recommended content items are assigned different positions in a content sequence for a predefined time” —Jain at ¶¶ [0073] and [0092]; “recommended content items may be scored based on …relevancy…. Thereafter, the plurality of recommended content items is ranked based on their scores” and “assign scores to the recommended content items based on…relevancy” —Jain at ¶¶ [0044] and [0073]; and Jain at ¶¶ [0073], [0079], [0086], [0090], [0092], [0121] and [0127]–[0128]); and
causing the presentation of the modified first content item in the first time slot of the impression and the presentation of the second content item in the second time slot of the impression (e.g., “displaying a UI with the optimal content sequence” —Jain at ¶ [0019]; “enable transmission of…content items in an optimal content sequence to electronic devices associated with the content viewers…. facilitate the display of a plurality of rearranged recommended content items on User Interfaces (UIs) of the plurality of electronic devices” —Jain at ¶ [0056]; “contents are arranged in an optimal order sequence” —Jain at ¶ [0136]; Figures 4-5 of Jain; and Jain at ¶¶ [0039], [0044], [0073], [0079] and [0082]), but Jain fails to explicitly disclose: the impression including a reward impression; determining that a total duration value is greater than a threshold time value received from the client device via the impression, the total duration being calculated by adding the first duration and the second duration; the modifying of the content publication organization including modifying the first content item based on the determination that the total duration value is greater than the threshold time value; and the operations include removing the less relevant portion. However, Onda teaches a reward advertisement being presented in a computer gaming environment in which a user earns rewards by watching the advertisement or by installing an application presented by the advertisement (e.g., Onda at ¶¶ [0003], [0047] and [0054]); video advertisements being selected and displayed in series in a single watching time (e.g., Onda at ¶¶ [0126] and [0159]; and Figures 3-5 and 9 of Onda); displaying a video watched progress bar to the user (e.g., Onda at ¶ [0135]; and Figure 4 of Onda); and wherein an impression for the user to earn the rewards includes a reward impression (e.g., Onda at ¶¶ [0003], [0047] and [0054]; as well as Figures 3-5 and 9 of Onda). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate the impression including a reward impression, as taught by Onda, into the method/system disclosed by Jain, which is directed toward providing gaming content to client devices such that the gaming content is offered in an interactive form (e.g., Jain at ¶¶ [0035], [0037], [0041] and [0052]), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143). Jain in view of Onda fails to explicitly teach: determining that a total duration value is greater than a threshold time value received from the client device via the impression, the total duration being calculated by adding the first duration and the second duration; and the modifying of the content publication organization including modifying the first content item based on the determination that the total duration value is greater than the threshold time value and wherein the operations include removing the less relevant portion. However, Swaminathan teaches presenting video content from online sources onto user devices such as smartphones (e.g., Swaminathan at ¶ [0002]) as well as operations comprising calculating a total duration value by adding a first content item duration and a second content item duration, determining that the total duration value is greater than a threshold time value associated with an impression received from a client device, and in response to the total duration value being greater than the threshold time value, modifying a first content item based on the determination that the total duration value is greater than the threshold time value (e.g., Swaminathan at ¶¶ [0083], [0086] and [0096]), as well as modification of a video content item including removing a portion/segment of the video (e.g., no longer relevant) to achieve modification of a first content item to be more relevant (e.g., Swaminathan at ¶¶ [0055]–[0056], [0083], [0086] and [0096]). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate determining that a total duration value is greater than a threshold time value received from the client device via the impression, the total duration being calculated by adding the first duration and the second duration; the modifying of the content publication organization including modifying the first content item based on the determination that the total duration value is greater than the threshold time value; and wherein the operations include removing the less relevant portion, as taught by Swaminathan, into the method/system taught by Jain in view of Onda, which is directed toward providing gaming content to client devices such that the gaming content is offered in an interactive form (e.g., Jain at ¶¶ [0035], [0037], [0041] and [0052]), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda and Swaminathan as applied to Claim 1 above and Jain teaching the operations further comprising:
receiving, from a third-party application, the first content item (e.g., “gaming content” —Jain at ¶ [0041]; and Jain at ¶ [0011], [0031], [0035], [0037], [0039], [0041] and [0045]);
calculating, using the one or more machine-learned models, the first conversion rate associated with the first content item being presented in a first time slot of the impression (e.g., “contents… arranged in an optimal order sequence…. the optimal content sequence is a reflection of how receptive the content is” based on conversion rates —Jain at ¶¶ [0136] and [0044]; “determine… receptiveness or performance of… content items at every position in the sequence” —Jain at ¶ [0085]; as well as Jain at ¶¶ [0044], [0065], [0069] and [0073]–[0079]); and
calculating a subsequent conversion rate associated with the first content item being presented in a second time slot of the impression (e.g., “contents are arranged in an optimal order sequence…. the optimal content sequence is a reflection of how receptive the content is” based on conversion rates —Jain at ¶¶ [0044] and [0136]; “displaying a UI with the optimal content sequence” —Jain at ¶ [0019]; as well as Jain at ¶¶ [0044], [0065], [0067], [0069], [0073]–[0079], [0082], [0090] and [0127]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda and Swaminathan as applied to Claim 2 above and Jain teaching the operations further comprising: updating the content database by associating the first content item with the first conversion rate and the subsequent conversion rate (e.g., Jain at ¶¶ [0019], [0044], [0057], [0065], [0067], [0069], [0073]–[0079], [0082], [0090], [0127] and [0136]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda and Swaminathan as applied to Claim 2 above and Jain teaching wherein the subsequent conversion rate is less than the first conversion rate (e.g., Jain at ¶¶ [0044], [0067], [0073] and [0091]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda and Swaminathan as applied to Claim 1 above and Jain teaching wherein the first conversion rate is calculated by the one or more machine-learned models based on a type of content being presented in the first time slot of the impression, the type of content being received by a developer of the computer application (e.g., “viewer… provided with…content items belonging to the same genre” —Jain at ¶ [0004]; “contents …arranged in an optimal order sequence…. a reflection of how receptive the content is” based on conversion rates —Jain at ¶¶ [0136] and [0044]; “determine… receptiveness or performance of… content items at every position in the sequence” —Jain at ¶ [0085]; as well as Jain at ¶¶ [0040], [0044], [0065], [0069]–[0070], [0073]–[0079], [0090] and [0127]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda and Swaminathan as applied to Claim 1 above and Jain teaching the operations further comprising: selecting, using the one or more machine-learned models based on the first duration, the first content item from the plurality of content items to be presented in the first time slot of the impression (e.g., Jain at ¶¶ [0040], [0064]–[0065], [0070], [0073], [0090], [0092] and [0127]); and selecting, using the one or more machine-learned models based on the second duration, the second content item from the plurality of content items to be presented in the second time slot of the impression (e.g., Jain at ¶¶ [0040], [0064]–[0065], [0070], [0073], [0090], [0092] and [0127]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda and Swaminathan as applied to Claim 1 above and Jain teaching wherein the second content item is a video (e.g., “use…a smartphone…to view the content” such as “gaming content” —Jain at ¶¶ [0037] and [0041]; “term ‘content’ may refer to any media content including…‘video content’… ‘gaming content’… any combination of such content offered…” —Jain at ¶ [0035]; and Jain at ¶¶ [0042], [0045] and [0082]) and modifying, using the one or more machine-learned models, content publication organization of the video (e.g., modifying organization of how video content items are to be displayed using the machine learning model, the organization including sequence/order of the video content items including the second content item — “machine learning model employs a relative weight value assignment technique” and “the machine learning model is a recursive neural network (RNN) model. More specifically, the plurality of recommended content items are assigned different positions in a content sequence for a predefined time” —Jain at ¶¶ [0073] and [0092]; and Jain at ¶¶ [0073], [0079], [0086], [0090], [0092], [0121] and [0127]–[0128]), but Jain fails to explicitly teach the modifying of the video including removing a portion of the video based on the modification of the first content item, the total duration value, and the threshold time value. However, Swaminathan teaches presenting video content from online sources onto user devices such as smartphones (e.g., Swaminathan at ¶ [0002]) as well as modifying of a video content item including: removing a portion of the video based on the modification of the first content item, the total duration value, and the threshold time value (e.g., Swaminathan at ¶¶ [0083], [0086] and [0096]). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate the modifying of the video including removing a portion of the video based on the modification of the first content item, the total duration value, and the threshold time value, as taught by Swaminathan, into the method/system taught by Jain in view of Onda and Swaminathan, which is directed toward providing gaming content to client devices such that the gaming content is offered in an interactive form (e.g., Jain at ¶¶ [0035], [0037], [0041] and [0052]), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda and Swaminathan as applied to Claim 1 above and Jain teaching wherein the second content item is further selected to be presented in the second time slot based on the first content being selected to be presented in the first time slot (e.g., based on conversion rates, “contents are arranged in an optimal order sequence…. the optimal content sequence is a reflection of how receptive the content is” —Jain at ¶¶ [0044] and [0136]; “displaying a UI with the optimal content sequence” —Jain at ¶ [0019]; as well as Jain at ¶¶ [0044], [0065], [0067], [0069], [0073]–[0079], [0082], [0090] and [0127]).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda and Swaminathan as applied to Claim 1 above and Jain teaching wherein the first content item is presented on the computer application, the mobile application being developed by a developer (e.g., “content viewer…may use…a smartphone…to view the content provided by… content provider” such as “a plurality of content items…such as…gaming content” —Jain at ¶¶ [0037] and [0041]; “term ‘content’ may refer to any media content including…‘video content’… ‘gaming content’… any combination of such content offered…” —Jain at ¶ [0035]; and Jain at ¶¶ [0037], [0039] and [0042]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda and Swaminathan as applied to Claim 1 above, but Jain fails to explicitly teach wherein the reward impression includes a video progress bar. However, Onda teaches reward advertisements being presented in a computer gaming environment in which a user earns rewards by watching the advertisement or by installing an application presented by the advertisement (e.g., Onda at ¶¶ [0003], [0047] and [0054]); an impression for the user to earn the rewards includes a reward impression (e.g., Onda at ¶¶ [0003], [0047] and [0054]; and Figures 3-5 and 9 of Onda); and wherein the reward impression includes a video progress bar (e.g., Onda at ¶ [0135]; and Figure 4 of Onda). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate wherein the reward impression includes a video progress bar, as taught by Onda, into the method/system taught by Jain in view of Onda and Swaminathan, which is directed toward providing gaming content to client devices such that the gaming content is offered in an interactive form (e.g., Jain at ¶¶ [0035], [0037], [0041] and [0052]), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda and Swaminathan as applied to Claim 1 above and Jain teaching wherein the impression includes an indication associated with a number of content items to be presented in the impression (e.g., Jain at ¶¶ [0044], [0065], [0067], [0069], [0073]–[0079], [0082], [0090] and [0127]).
Regarding Claim 17, Jain in view of Onda and Swaminathan teaches a computer-implemented method to present an impression in a computer application (e.g., Jain at ¶¶ [0019], [0039], [0044], [0073], [0079] and [0082]), the method comprising respective processes/operations as recited in Claim 1, and, therefore, Claim 17 is rejected on the same basis(es) as applied above with respect to Claim 1.
Claim 18 recites substantially similar subject matter to that of collective Claims 2-4 together and, therefore, Claim 18 is rejected on the same basis(es) as Claims 2-4, collectively.
Regarding Claim 20, Jain in view of Onda and Swaminathan teaches a non-transitory computer-readable media that store instructions that, when executed by one or more computing devices, cause the one or more computing devices (e.g., Jain at ¶¶ [0019], [0039], [0044], [0073], [0079] and [0082]) to perform respective processes/operations as recited in Claim 1, and, therefore, Claim 20 is rejected on the same basis(es) as applied above with respect to Claim 1.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda and Swaminathan as applied to Claim 1 above, and Jain teaching the operations further comprising: modify, using the one or more machine-learned model, a section of a content publication (e.g., modifying a section of how video content is to be published/displayed using the machine learning model, the organization including sequence/order of the video content items including the second content item— “machine learning model employs a relative weight value assignment technique” and “the machine learning model is a recursive neural network (RNN) model. More specifically, the plurality of recommended content items are assigned different positions in a content sequence for a predefined time” —Jain at ¶¶ [0073] and [0092]; and Jain at ¶¶ [0073], [0079], [0086], [0090], [0092], [0121] and [0127]–[0128]), but Jain fails to explicitly teach the modifying of the section of the content publication including modifying a section of the first content item based on the total duration value and the threshold time value. However, Swaminathan teaches presenting video content from online sources onto user devices such as smartphones (e.g., Swaminathan at ¶ [0002]) as well as modifying of a section of a content publication including modifying a section of a video content item including removing a section of the video based on the total duration value and the threshold time value (e.g., Swaminathan at ¶¶ [0083], [0086] and [0096]). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate the modifying of the section of the content publication including modifying a section of the first content item based on the total duration value and the threshold time value, as taught by Swaminathan, into the method/system taught by Jain in view of Onda and Swaminathan, which is directed toward providing gaming content to client devices such that the gaming content is offered in an interactive form (e.g., Jain at ¶¶ [0035], [0037], [0041] and [0052]), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda and Swaminathan as applied to Claim 1 above, but Jain fails to explicitly teach wherein the first content item is modified by removing a section of the first content item. However, Swaminathan teaches presenting video content from online sources onto user devices such as smartphones (e.g., Swaminathan at ¶ [0002]) wherein a first content item is modified by removing a section of the first content item (e.g., Swaminathan at ¶¶ [0083], [0086] and [0096]). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate wherein the first content item is modified by removing a section of the first content item, as taught by Swaminathan, into the method/system taught by Jain in view of Onda and Swaminathan, which is directed toward providing gaming content to client devices such that the gaming content is offered in an interactive form (e.g., Jain at ¶¶ [0035], [0037], [0041] and [0052]), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143).
Claims 5 and 6 are rejected under 35 U.S.C. 103 of the AIA as being unpatentable over a combination of U.S. Patent Application Publication Nos. 2023/0328323 (“Jain”), 2018/0165700 (“Onda”) and 2014/0040026 (“Swaminathan”), and further in view of U.S. Patent Application Publication No. 2019/0172089 of Tang et al. (hereinafter “Tang”).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda and Swaminathan as applied to Claim 1 above and Jain teaching wherein the first conversion rate is calculated by the one or more machine-learned models based on a performance metric for presenting the first content item in the first time slot of the impression (e.g., “contents …arranged in an optimal order sequence…. a reflection of how receptive the content is” —Jain at ¶¶ [0136] and [0044]; “determine… receptiveness or performance of… content items at every position in the sequence” —Jain at ¶ [0085]; and Jain at ¶¶ [0040], [0044], [0065], [0069]–[0070], [0073]–[0079], [0090] and [0127]), but Jain fails to explicitly teach the performance metric including a cost per impression rate. However, Tang teaches publishers providing content for users to consumer in interactive games with slots for advertisement/sponsored content (e.g., Tang at ¶¶ [0002] and [0042]) wherein a performance metric includes a cost per impression rate (e.g., Tang at ¶ [0045]). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate the performance metric including a cost per impression rate, as taught by Tang, into the method/system taught by Jain in view of Onda and Swaminathan, which is directed toward evaluating performance of content items to determine an optimal content placement/sequence for the content items (e.g., Jain at ¶¶ [0044], [0046], [0065], [0067], [0069], [0073]–[0079], [0082], [0090] and [0127]), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda and Swaminathan as applied to Claim 1 above and Jain teaching wherein the second conversion rate is calculated by the one or more machine-learned models based on a performance metric for presenting the second content item in the second time slot of the impression, but Jain fails to explicitly teach the performance metric including a cost per impression rate. However, Tang teaches publishers providing content for users to consumer in interactive games with slots for advertisement/sponsored content (e.g., Tang at ¶¶ [0002] and [0042]) wherein a performance metric includes a cost per impression rate (e.g., Tang at ¶ [0045]). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate the performance metric including a cost per impression rate, as taught by Tang, into the method/system taught by Jain in view of Onda and Swaminathan, which is directed toward evaluating performance of content items to determine an optimal content placement/sequence for the content items (e.g., Jain at ¶¶ [0044], [0046], [0065], [0067], [0069], [0073]–[0079], [0082], [0090] and [0127]), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143).
Claims 11 and 12 are rejected under 35 U.S.C. 103 of the AIA as being unpatentable over a combination of U.S. Patent Application Publication Nos. 2023/0328323 (“Jain”), 2018/0165700 (“Onda”) and 2014/0040026 (“Swaminathan”), and further in view of U.S. Patent Application Publication No. 2019/0333098 of SOHUM et al. (hereinafter “Sohum”).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda and Swaminathan as applied to Claim 1 above and Jain teaching wherein the first content item includes a first video and a first end card (e.g., “use…a smartphone…to view the content” such as “gaming content” —Jain at ¶¶ [0037] and [0041]; “term ‘content’ may refer to any media content including…‘video content’… ‘gaming content’… any combination of such content offered…” —Jain at ¶ [0035]; and Jain at ¶¶ [0042], [0045], [0067] and [0082]), but Jain fails to explicitly teach wherein the first end card is presented after the first video with a link to install a first mobile application on the client device albeit Onda does teach reward advertisements being presented in a computer gaming environment in which a user earns rewards by installing an application presented by the advertisement (e.g., Onda at ¶¶ [0003], [0047] and [0054]). Nonetheless, Sohum teaches a publisher app including content for playing online games (e.g., Sohum at ¶ [0035]) as well as wherein a first end card is presented after a first video with a link to install a first mobile application on the client device (e.g., “advertisements…for promoting a product…. include… video advertisement… and the like. The…advertisements 148 are displayed in third party applications developed by application developers” —Sohum at ¶ [0036]; “publishers incentivize the users for clicking on links, downloading applications…” —Sohum at ¶ [0002]; “click to install” —Sohum at ¶ [0046]; and Sohum at ¶ [0030] — also see Figure 8C and 8E of prior-art reference Kang (not applied)). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate wherein the first end card is presented after the first video with a link to install a first mobile application on the client device, as taught by Sohum, into the method/system taught by Jain in view of Onda and Swaminathan, which is directed toward providing gaming content to client devices such that the gaming content is offered in an interactive form (e.g., Jain at ¶¶ [0035], [0037], [0041] and [0052]), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Jain in view of Onda, Swaminathan and Sohum as applied to Claim 11 above and Jain teaching the second content item includes a second video and a second end card, wherein the second end card is presented in response to a swipe gesture to the first end card (e.g., Jain at ¶¶ [0045], [0067] and [0082]).
Response to Arguments
Applicant’s arguments in the Amendment filed on October 14, 2025, have been fully considered and are not persuasive. Examiner notes further citations above to U.S. Patent Application Publication Nos. 2023/0328323 (“Jain”) and 2014/0040026 (“Swaminathan”) in an effort to assist Applicant given Applicant’s amendments and arguments in “Amendment”.
Applicant's Arguments in the Amendment
(Pages 8-12) Applicant asserts that the pending claims, as currently amended, are drawn to eligible subject matter under 35 U.S.C. § 101.
(Pages 13-15) Applicant asserts that independent Claims 1, 17 and 20, as currently amended, are patentable over a combination of U.S. Patent Application Publication Nos. 2023/0328323 (“Jain”), 2018/0165700 (“Onda”), and 2014/0040026 (“Swaminathan”).
(Page 15) Applicant asserts that Claims 2-8, 10-16 and 21-22 as well as Claim 18, which depend from respective independent Claims 1 and 17 and include respective limitations therein, are patentably distinguishable over Jain in view of Onda based on at least the same reasons provided with respect to independent Claims 1 and 17.
Examiner’s Response to Applicant's Arguments
Regarding § 101, Examiner respectfully disagrees. Please see updated § 101 rejections above regarding examined claims being drawn to ineligible subject matter in view of considering all relevant factors including amended portions of the independent claims.
Regarding “machine learning” concepts recited in Applicant’s pending claims, Examiner directs Applicant’s attention to a Federal Circuit decision: Recentive Analytics, Inc. v. Fox Corp., Case No. 2023-2437 (Fed. Cir. Apr. 18, 2025), which was decided on April 18, 2025, by the US Court of Appeals for the Federal Circuit (CAFC).
On pages 9-14 of Applicant’s Amendment filed in October 2024, Applicant generally argued that the pending claims as well as “claim 1 provides a significant improvement to a technical field such as processor usage, memory usage, and network bandwidth usage. Thus, any abstract idea recited in claim 1 is integrated via use of the "machine-learned model" with such technical fields of processor usage, memory usage, and network bandwidth usage technologies. Such integrations provides for an improvement in content selection and therefore not only significantly improves a technological field (e.g., processor usage, memory usage, and network bandwidth usage) but also provides for a significant improvement in user retention”. On page 14 of Applicant’s Amendment filed in October 2024, Applicant generally argued “claim 1 as a whole…integrates any alleged abstract idea into a practical application to improve the technical fields of disease detection and abatement”. However, Applicant's alleged improvements in October 2024 were no more than a desired or intended result that are not required to be performed or achieved based on the language previously recited in each of Applicant’s claims in October 2024. Thus, none of Applicant’s pending claims were required to improve any computer related technology, to improve upon the functioning of the computer itself, or to improve the technical fields of disease detection and abatement. In addition, Examiner noted that Applicant's recited use or usage of “one or more machine-learned models”, as recited in Claims 1-2, 5-10 and 17-20, appeared as a high-level black box with no detail about the machine learning algorithm itself or any machine learning processes, such as how Applicant's model operates on input data to produce outputs, such as Applicant’s selection of 1st and 2nd content items for respective 1st and 2nd slots. In addition, Examiner noted that Applicant's disclosure fails to provide any detail of any training algorithm and, therefore, no specific way of training the algorithm/model exists within Applicant's recited use of machine model that has been already “learned”. Consequently, Applicant's mere recitation to "machine-learned models" was not sufficient by itself to amount to a practical application under Step 2A, Prong 2 of SME analysis. Consequently, Applicant's arguments in October 2024 constituted no more than a general allegation that the pending claims provides a plurality of improvements under § 101.
In February 2025, Applicant generally argued on page 11 of Applicant’s amendment filed in February 2025, that the February 2025 claims as well as “claim 1 provides a significant improvement to a technical field such as processor usage, memory usage, and network bandwidth usage. Thus, any abstract idea recited in claim 1 is integrated via use of the "machine-learned model" with such technical fields of processor usage, memory usage, and network bandwidth usage technologies. Such integrations provides for an improvement in content selection and therefore not only significantly improves a technological field (e.g., processor usage, memory usage, and network bandwidth usage) but also provides for a significant improvement in user retention”. On page 12 of Applicant’s amendment filed in February 2025, Applicant generally argued “claim 1 as a whole…integrates any alleged abstract idea into a practical application to improve the technical fields of disease detection and abatement”. However, Applicant's alleged improvements were no more than a desired or intended result that were not required to be performed or achieved based on the language currently recited in each of Applicant’s February 2025 claims. Thus, none of Applicant’s pending claims were required to improve any computer related technology, to improve upon the functioning of the computer itself, or to improve the technical fields of disease detection and abatement. In addition, Examiner noted that Applicant's recited use or usage of “one or more machine-learned models”, as recited in Claims 1-2, 5-8, 10, 17-18 and 20-21, appeared as a high-level black box with no detail about the machine learning algorithm itself or any machine learning processes, such as how Applicant's model operates on input data to produce outputs, such as Applicant’s selection of 1st and 2nd content items for respective 1st and 2nd slots. In addition, Examiner noted that Applicant's disclosure failed to provide any detail of any training algorithm and, therefore, no specific way of training the algorithm/model exists within Applicant's recited use of machine model that has been already “learned”. Consequently, Applicant's mere recitation to "machine-learned models" was not sufficient by itself to amount to a practical application under Step 2A, Prong 2 of SME analysis. Consequently, Applicant's arguments constituted no more than a general allegation that the February 2025 claims provided a plurality of improvements under § 101.
In October 2025, Applicant generally argues on page 11 of Applicant’s Amendment filed in October 2025, that the pending claims as well as “claim 1 provides a significant improvement to a technical field such as processor usage, memory usage, and network bandwidth usage. Thus, any abstract idea recited in claim 1 is integrated via use of the "machine-learned model" with such technical fields of processor usage, memory usage, and network bandwidth usage technologies. Such integrations provides for an improvement in content selection and therefore not only significantly improves a technological field (e.g., processor usage, memory usage, and network bandwidth usage) but also provides for a significant improvement in user retention”. On page 12 of Applicant’s Amendment filed in October 2025, Applicant generally argues “claim 1 as a whole…integrates any alleged abstract idea into a practical application to improve the technical fields of disease detection and abatement” (page 12 of Amendment). However, Applicant's alleged improvements are no more than a desired or intended result that are not required to be performed or achieved based on the language currently recited in each of Applicant’s pending claims. Thus, none of Applicant’s pending claims are required to improve any computer related technology, to improve upon the functioning of the computer itself, or to improve the technical fields of disease detection and abatement. In addition, Examiner notes that Applicant's recited use or usage of “one or more machine-learned models”, as recited in Claims 1-2, 5-8, 10, 17-18 and 20-21, appears as a high-level black box with no detail about the machine learning algorithm itself or any machine learning processes, such as how Applicant's model operates on input data to produce outputs, such as Applicant’s selection of 1st and 2nd content items for respective 1st and 2nd slots. In addition, Examiner notes that Applicant's disclosure fails to provide any detail of any training algorithm and, therefore, no specific way of training the algorithm/model exists within Applicant's recited use of machine model that has been already “learned”. Consequently, Applicant's mere recitation to "machine-learned models" is not sufficient by itself to amount to a practical application under Step 2A, Prong 2 of SME analysis. Consequently, Applicant's arguments constitute no more than a general allegation that the pending claims provides a plurality of improvements under § 101. Please see § 101 rejections above regarding amended portions of the independent claims. In summary, Applicant's arguments constitute no more than a general allegation that the pending claims support a patentable invention under 35 U.S.C. § 101.
Regarding § 103, please see citations to U.S. Patent Application Publication Nos. 2023/0328323 (“Jain”) and 2014/0040026 (“Swaminathan”) in the § 103 rejections above regarding amended portions of Applicant’s independent claims. Examiner notes that during patent examination, the pending claims must be “given their broadest reasonable interpretation”. In view of this standard, Examiner asserts § 103 rejections to Applicant’s amended claims, as noted above under § 103. In addition, Examiner notes that patent documents are relevant as prior art for all they contain and that “[a] reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments” —MPEP § 2123.
Please see above § 103 rejections with respect to independent Claims 1 and 17 for at least the same reasons provided with respect to the independent claims that Claims 2-8, 10-16 and 21-22 and Claim 18, depending from respective independent Claims 1 and 17 and including the limitations therein, are not patentable based on dependency from respective independent claims.
Conclusion
The following references are considered pertinent to Applicant's disclosure, and are being made of record albeit the references are not relied upon as a basis for rejection in this Office action:
U.S. Patent No. 11,238,367 issued to Liu et al. (hereinafter “Liu”).
U.S. Patent Application Publication No. 20220198779 of Saraee et al. (hereinafter “Saraee”) for “Convert longer-form video contents into shorter-form contents (e.g. truncating a video from 30 seconds to 3 seconds)” —Saraee at ¶ [0663].
U.S. Patent Application Publication No. 2021/0287118 of Pierce et al. (hereinafter “Pierce”) for “ARTIFICIAL INTELLIGENCE BASED TECHNIQUES FOR GENERATING DYNAMIC CONTENT FOR ONLINE GAMING SYSTEMS” —Title of Pierce; “iterative processes of supervised or unsupervised learning as the system optimizes offer outputs. The system generates statistics describing various relationships and variables used in the constraints. The variables of historical offers that correlate with higher rate of success of the offer as measured by high redemption rate or higher click through rate are added to constraints” —Pierce at ¶ [0114].
U.S. Patent Application Publication No. 2020/0251144 of Doherty et al. (hereinafter “Doherty”) for “generating and distributing digital advertising content includes: accessing a static asset including a set of objects representing advertising content; extracting the set of objects from the static asset; generating a set of frames, an object in the set of objects inserted into each frame in the set of frames; defining an order for presenting the set of frames to a viewer” —Abstract of Doherty.
U.S. Patent Application Publication No. 2018/0178128 of ONDA et al. (hereinafter “Onda ‘128”).
U.S. Patent Application Publication No. 2018/0165701 of ONDA et al. (hereinafter “Onda ‘701”).
U.S. Patent Application Publication No. 2018/0181987 of OMORI et al. (hereinafter “Omori”).
U.S. Patent Application Publication No. 2018/0139295 of Ju et al. (hereinafter “Ju”) for “content represented by an object include… a gaming application achievement” —Ju at ¶ [0020].
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U.S. Patent Application Publication No. 2018/0121953 of Zhang et al. (hereinafter “Zhang”).
U.S. Patent Application Publication No. 2016/0162940 of Kang et al. (hereinafter “Kang”) for “In mobile video advertising, … Advertisers include organizations that pay for advertising services including ads on…games…. Publishers can include developers of…gaming applications” —Kang at ¶ [0024]; and Figure 8C and 8E of Kang.
U.S. Patent Application Publication No. 2014/0173399 of Sorg et al. (hereinafter “Sorg”) for “content represented by an object include… a gaming application achievement” —Sorg at ¶ [0021]; “scores may also be used to determine an order in which the bookmarks are presented to the user” —Sorg at ¶ [0005].
U.S. Patent Application Publication No. 2013/0080264 of Shigeto Umeda (hereinafter “Umeda”).
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/Mathew Syrowik/Primary Examiner, Art Unit 3621