DETAILED ACTION
Status of Claims
0. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Accordingly, Applicant's filed response has been entered.
This is a Non-Final office action in response to communication received on 10/24/2025. Claims 21-24, 28-31, 35-38 are pending and examined herein.
Claim Rejections - 35 USC § 101
1. 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 21-24, 28-31, 35-38 are rejected under 35 U.S.C. 101 because 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. Next using the 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter 2019 PEG) will explain his position as set forth below.
Under step 1, per MPEP 2106.03, claims 21-24 are a system; claims 28-31 are a method; and claims 35-38 are a non-transitory CRM. Thus, each claim 21-24, 28-31, 35-38, on its face, is directed to one of the statutory categories (i.e., useful process, machine, manufacture, or composition of matter) of 35 U.S.C. §101. However, the claims are directed to an abstract idea.
Under Step 2A Prong One, per MPEP 2106.04, prong one asks does the claim recite an abstract idea, law of nature, or natural phenomenon? In Prong One examiners evaluate whether the claim recites a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. While the terms "set forth" and "described" are thus both equated with "recite", their different language is intended to indicate that there are two ways in which an exception can be recited in a claim. For instance, the claims in Diehr, 450 U.S. at 178 n. 2, 179 n.5, 191-92, 209 USPQ at 4-5 (1981), clearly stated a mathematical equation in the repetitively calculating step, and the claims in Mayo, 566 U.S. 66, 75-77, 101 USPQ2d 1961, 1967-68 (2012), clearly stated laws of nature in the wherein clause, such that the claims "set forth" an identifiable judicial exception. Alternatively, the claims in Alice Corp., 573 U.S. at 218, 110 USPQ2d at 1982, described the concept of intermediated settlement without ever explicitly using the words "intermediated" or "settlement."
Next, per 2019 PEG, to determine whether a claim recites an abstract idea in Prong One, examiners are now to: (I) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (II) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 PEG. If the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I, analysis should proceed to Prong Two in order to evaluate whether the claim integrates the abstract idea into a practical application.
(I) An abstract idea as recited per claims 21-24, 28-31, 35-38 based on the abstract recitation [i.e. recitation with the exception of additional elements as noted and analyzed under step 2A prong two and step 2B inquiries below, i.e. under step 2A prong one the Examiner considered claim recitation other than the additional elements (which once again are expressly noted below) to be the abstract recitation] (II) is that of organizing timing and placement of an advertisement in a piece of content for a short duration which is certain methods of organizing human activity. The phrase "Certain methods of organizing human activity" applies to fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See MPEP 2106.04(a)(2) II. CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY.
Therefore, the identified limitations fall within the subject matter groupings of abstract ideas enumerated in Section I of 2019 PEG, thus analysis now proceeds to Prong Two in order to evaluate whether the claim integrates the abstract idea into a practical application.
Under Step 2A Prong Two, , per MPEP 2106.04, prong two asks does the claim recite additional elements that integrate the judicial exception into a practical application? In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. If the additional elements in the claim integrate the recited exception into a practical application of the exception, then the claim is not directed to the judicial exception (Step 2A: NO) and thus is eligible at Pathway B. This concludes the eligibility analysis. If, however, the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception (Step 2A: YES), and requires further analysis under Step 2B (where it may still be eligible if it amounts to an ‘‘inventive concept’’).
Next, per 2019 PEG, Prong Two represents a change from prior guidance. The analysis under Prong Two is the same for all claims reciting a judicial exception, whether the exception is an abstract idea, a law of nature, or a natural phenomenon. Examiners evaluate integration into a practical application by: (I) Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (II) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit.
Accordingly, the examiner will evaluate whether the claims recite one or more additional element(s) that integrate the exception into a practical application of that exception by considering them both individually and as a whole.
The claim elements in addition to the abstract idea, i.e. additional elements, as recited in claims 21-24, 28-31, 35-38 at least are a digital content file, database, a server, a digital content server, an ad image server, embedded digital content file, storing the embedded digital content file with metadata in database, client device comprising a display, send/transmitting data, and remaining recitation is considered abstract recitation evaluated under prong one.
However, the additional elements as noted above are simply utilized as tools to implement the abstract idea or plan as "apply it" instructions (see MPEP 2106.05(f)). The additional elements are described at a high level of generality, see at least as-filed spec. page 5 of 21 line 25-page 6 line 29; page 13 of 21 line 14-page 15 of 21 line 22. Further, the claims appear to be implementing a commercial solution to a commercial problem of selecting and delivering content with advertisements to raise brand awareness by organizing ads in a way that minimizes user irritation user by associating a time parameter with displaying of ads, see at least as-filed spec. page 1 of 21 line 25- page 2 of 21 line 24; page 5 of 21 lines 3-18; page 15 of 21 line 24-page 16 of 21 line 25.
The abstract idea is intended to be carried out in technical environments e.g. digital and network based communication environment e.g. Internet which allows for receiving/transmitting data/content, however fail to contain meaningful limitations beyond generally linking the use of an abstract idea to such particular technological environments. See MPEP 2106.05(h) concerning generally linking use of a judicial exception to a particular technological environment or field of use, including a discussion of the exemplars provided herein, which are based on Bilski, 561 U.S. at 612, and Flook, 437 U.S. at 588-90. Thus, the mere application of an abstract idea which falls in certain methods of organizing human activity grouping and generally linking use of a judicial exception to a particular technological environment or field of use, for instance that stores and retrieves information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93 (similarly here content and associated advertisement are electronically stored with identifying information, i.e. metadata, and are also retrieved, also note obtaining and comparing intangible data (CyberSource), and parsing and comparing data (Berkheimer)), i.e. fails to contain one or more additional elements that applies or uses the judicial exception, again, 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.
Accordingly, viewed as a whole, these additional claim element(s) do not provide any additional element that integrates the abstract idea (prong one), into a practical application (prong two) upon considering the additional elements both individually and as a combination or as a whole as they fail to provide: an additional element that reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field; or an additional element that implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim; or an additional element that effects a transformation or reduction of a particular article to a different state or thing; or an additional element that applies or uses the judicial exception, again, 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 as explained above.
Thus, the abstract idea of organizing timing and placement of an advertisement in a piece of content for a short duration which is certain methods of organizing human activity (prong one) is not integrated into a practical application upon consideration of the additional element(s) both individually and as a combination (prong two).
Therefore, under step 2A, the claims are directed to the abstract idea, and require further analysis under Step 2B.
Under step 2B, per MPEP 2106.05, as it applies to claims 21-24, 28-31, 35-38, the Examiner will evaluate whether the foregoing additional elements analyzed under prong two, when considered both individually and as a whole provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). The abstract idea of organizing timing and placement of an advertisement in a piece of content for a short duration which is certain methods of organizing human activity - has not been applied in an eligible manner. The claim elements in addition to the abstract idea are described at a high level of generality (Id. or note step 2A prong two). As, such the abstract idea is intended to be merely carried out in a technical environment, however fail to contain meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.
Next, in view of compact prosecution only further analysis per the Berkheimer Memo dated April 19, 2018 is being conducted as the additional elements here would be readily apparent as generic to a person having ordinary skill in the art (hereinafter PHOSITA), in other words analysis is similar to Berkheimer claim 1 and not claims 4-7 where there was "a genuine issue of material fact in light of the specification," nevertheless the Examiner finds the additional elements when considered both individually and as a combination to be well-understood, routine or conventional and expressly supports in writing as follows:
The Examiner provides citation to one or more of the court decisions as noting the well-understood, routine, conventional nature of the additional element(s):
i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network) [similarly here request for an advertisement is being sent over a network and content associated with ads is provided in response to request];
ii. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93 (similarly here content and associated advertisement are electronically stored with identifying information, i.e. metadata, and are also retrieved); and
iii. also as noted in precedential Affinity v DirecTV ruling - "See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (adding a “computer aided” limitation is insufficient to constitute a specific application where “[t]he claims are silent as to how a computer aids the method, the extent to which a computer aids the method, or the significance of a computer to the performance of the method”)."; "The claims in TLI were not directed to an improvement in computer functionality, but were directed to “the use of conventional or generic technology in a nascent but well-known environment.” Id. The court explained that the specification “does not describe a new telephone, a new server, or a new physical combination of the two,” but instead “describes the system and methods in purely functional terms.” Id. Thus, the court concluded, the claims “are not directed to a solution to a ‘technological problem.’” Id. at 613."; "The court rejected the argument that the computer components recited in the claims constituted an “inventive concept.” It held that the claims added “only generic computer components such as an ‘interface,’ ‘network,’ and ‘database,’” and that “recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” Id. at 1324-25 (citations omitted). The court noted that nothing in the asserted claims purported to improve the functioning of the computer itself or “effect an improvement in any other technology or technical field.” Mortgage Grader, 811 F.3d at 1325 (quoting Alice, 134 S. Ct. at 2359)."; and "Focusing on the additional limitations in the claims, the court held that most of them simply described “the abstract idea of showing an advertisement before deliver-ing free content.” Id. As for the remaining limitations, the court ruled that “the addition of merely novel or nonroutine components to the claimed idea [does not] necessarily turn[] an abstraction into something concrete.” Rather, the court explained, “any novelty in implementation of the idea is a factor to be considered only in the second step of the Alice analysis.” Id."
The Examiner provides citation to one or more publications as noting the well-understood, routine, conventional nature of organizing by timing and embedding ads, and watermarking content in content as follows:
(i) Pub. No.: US 2004/0167928 [0037] note Even if the document does not include explicitly defined available ad spots, it may be determined that ads can be served in, or in association with (e.g., in a "pop up" window above and covering (i.e., obscuring) content of the document, in a "pop-under" window in the background under the document, in "chrome" of a browser etc.) the document. The ad may partly or totally cover the document, share the screen space with the document, take screen space from the document, be partly or totally covered by the document, etc.;
(ii) Pub. No.: US 2006/0224445 note [0048] The cost adjustment may be made using a user perception estimate, or using one or more factors 320 which may be used in determining such an estimate. The factors may include one or more of ad information (e.g., the type of ad such as text-only, animation, audio, video, image, etc., the size of the ad, the font size of the ad, colors of the ad, etc.), client device information (e.g., browser type and version, display size, display resolution, speaker volume, mute on/off, user input means, etc.), document information (e.g., document type, document size, document age, proportion of ad spots space to content space, user dwell times, etc.), ad serving parameters, ad spot information (e.g., absolute and/or relative position of ad spot, per-spot selection rates, per-spot mouse-overs, per-spot hovers, proximity of ad spot to document content, occlusion of document content by ad spot, obscuring of document content by ad spot, ad spot adjacent to content, ad spot separated from content, ad spot embedded within (e.g., surrounded by) content, ad spot partially or totally occluding or obscuring content (or other ads), ad spot partially or totally occluded or obscured by content (or other ads), etc.), end user information (e.g., user hover information, user ad click information, user dwell time information, user scroll information, user eye movement information, etc.), survey data, focus group data, view-through data (e.g., determined using cookies if someone to which an ad was rendered later visited the Website or Webpage mentioned in the ad), etc. Thus, user perception probability factors 320 may include information providing some indication that the ad(s) will be perceived (e.g., viewed) by users;
(iii) Pub. No.: US 2007/0124789 note [0189] By way of example, sequential placement has an audience member experiencing sponsored content as a temporal interlude between primary content experiences (i.e. the 30 second commercial typically is shown at a "commercial break" of the program currently being watched or listened to). Absent audience member action (e.g. changing the channel, walking away, time shifting utilizing a personal video recorder), all instances of sequential placement result in the audience member seeing or hearing the placed sponsored content (See FIG. 24). Similarly, as shown in FIG. 25, embedded placement result in the audience member seeing and/or hearing the sponsored content at the same time they are hearing and/or seeing the primary content, whether as an ad banner embedded (literally an " overlay") within the televised program screen image, as a voice over, as a overlay web banner, as overlay web paid link, as an overlay as an "pop-up" web advertisement, as an overlay on printed magazine pages, as an overlays on billboards, or otherwise. Each of these embodiments, whether manifesting in audio or video (including static images) sponsored content being put forth interrupts the experience of the primary content. Literally, the audience member has no choice but to experience the sponsored content since it is a visible or audible addition to the primary content. Even web page pop-up ads require the audience member to affirmatively "turn them off" (the "opt-out" model), lest they appear with an inadvertent rollover of a display curser or pointer. To wit, the current market embodiments relating to content brokerage engines relate to these two types of activities (sequential placement and embedded placement). The current invention's content brokerage engine concerns itself with neither of these two scenarios, but instead enables the marketplace pairing of primary content to sponsored content, where the sponsored content is only to be experienced by an audience member who affirmatively acts to receive the such in conjunction with its primary content (there must be an "opt-in" action by the audience member). Examples of such an "opt-in" process by an audience member to experience the sponsored content might include enabling their cellular telephone to receive Bluetooth transmissions from a television playback console, enabling their cellular telephones to capture and decode audio encodings carried over a radio program, ticking a box on a web-page of primary content to allow sponsored content "pop-up" ads to be displayed, or analogous actions taken by the audience member specifically consenting to the presentation of sponsored content at the time primary content is being experienced;
(iv) Pub. No.: US 2007/0136742 note [0019] In general, within the context of video streams and video data, metadata refers to information that describes data in such a way that the data can be catalogued, indexed, archived and/or retrieved at some future date. In the system 10, the encoder 12 embeds or otherwise associates temporal metadata with the advertisement portions of the video stream. In the traditional sense, "temporal metadata" refers or relates to any additional details or information available at the time the data was captured or that can be derived from the data as part of the data capture process. However, for purposes of discussion herein, and for purposes of the system 10, the term "temporal metadata" refers to metadata embedded or otherwise associated with advertisements that provides information that relates to or identifies the time-sensitive nature of the content of the information in the advertisement;
(v) Pub. No.: US 2008/0133311 note [0034] "Artist 305 may create content in compliance with content delivery model 200 using any suitable technique (e.g., at the discretion of artist 305, tools provided by content management system 100 in FIG. 1 may be used). For example, artist 305 may create and/or encode content using an application that embeds content licensing platform 245 within the content. As such, artist 305 may describe the content with a rich codec metadata that provides information about the content. The provided information may include a unique identifier for artist 305, an author, name, episode, and/or subject of the content, a producer of the content (e.g., a producer name and/or company), guest information (e.g., names, companies, roles, related publications, social networks, etc.), playlist information (e.g., songs played during an audio podcast), time-stamps for advertisement insertion (e.g., indicating location and/or duration of commercial breaks), user-provided ratings (e.g., user recommendations, popularity indices, age-appropriateness ratings, etc.), hyperlinks (e.g., to related sites, social networks, etc.), bandwidth streaming requirements, duration, language (e.g., English), location of content origination (e.g., zip code, city, state, etc.), access restrictions, digital rights management keys, expiration date, codes (e.g., for a University code indicating class code, name, credits, etc.), Standard Industrial Classification, North American Industry Classification, social network affiliations, or other information. Those skilled in the art will appreciate that some or all metadata fields may be used as appropriate, and that metadata fields may be added, deleted, updated, or otherwise changed without departing from the scope of the invention."; [0048] note "Moreover, tracking capabilities embedded within content assets and/or advertisements justifies costs of ad-insertion, as the tracking capabilities may demonstrate whether or not an advertising impression occurred, who received the impression, or other information. Further, content assets may include various encoding enhancements, such as time-stamps indicating location breaks for advertisement insertion. Thus, ad-insertion need not be restricted to "bumper ads," which are inserted before and/or after content endpoints, but rather, advertisements may be inserted in various places within the content. For example, the insertion points may be locations deemed appropriate placeholders for advertising (e.g., by content creators). For example, an artist or content producer creating a radio podcast may go to a commercial break during a local broadcast, and the created radio podcast content may be encoded with information indicating the commercial break as an appropriate place to insert an advertisement. Accordingly, more advertisements may be inserted into content, and value of a content asset may be maximized throughout the content's duration.";
(vi) Pub. No.: US 2009/0006375 note [0070] In some implementations, the metadata can specify other types of content provider preferences as well. For example, the metadata can specify whether video advertisements displayed with the video can be skipped or not. As another example, the metadata can also specify one or more target demographics for the video. As a further example, the metadata can specify the time lengths of advertisement placement positions, the maximum allowable advertisement duration, and/or which types of advertisements (e.g., text ads, overlay ads, banner ads, pop-up ads, video ads, etc.) are allowed. In some implementations, the preferences in the metadata include blacklisted keywords or advertisers. An advertisement associated with a blacklisted keyword or advertiser is automatically disqualified from consideration for placement with the video. In some implementations, an advertiser in the blacklist is specified by a name and/or a URL associated with the advertiser;
(vii) Publication No. US 2010/0269030 primary reference Dugonjic note [0051]-[0059] which prove that methodology to embed ad content is indeed well-understood, routine, or conventional (e.g. Flash), and certain programming and scripting languages (e.g. JavaScript and PHP).
(viii) Pub. No.: US 2012/0311627 note [0030] "Editing and ad insertion are also performed by the media syndication engine 204. The designer can edit videos and metadata (e.g., title, description, tags) and stitch, cut and otherwise edit video, sound and images. Ad insertion can be done by splicing or overlaying ads directly into the content before delivery or controlled by player logic at run -time to switch-out or overlay the content with an in-place ad, post plate or banners at the end user device 124";
(ix) Pub. No.: US 2014/0150029 note [0185] "One or more interstitial advertisements may be displayed at the same time and/or one or more items may be included in a given interstitial advertisement. The interstitial advertisement may be displayed in the video content area, in a pop-up window overlaying/obscuring the video content area, or elsewhere. A given interstitial advertisement may optionally include a user-selectable link or other reference to one or more reviews for an item in the advertisement. Upon detecting that the user has selected the link, the user interface may access (e.g., from a remote server) the corresponding video review of the item in the advertisement, which may then be displayed to the user. The interstitial advertisement may be displayed for a predetermined amount of time if the user does not select the review link in the advertisement. If the predetermined amount of time expires without the user selecting a review link (or optionally one or more other controls included in the advertisement), the video player may automatically begin playing the next review in the original video file. A timer (e.g., a countdown timer) may be provided indicating to the user how long until the next review in the original video file will begin playing. Optionally, the timer may be displayed in association with the name of the reviewer and a title for the next review (e.g., obtained from a tag provided in association with the next review). Optionally, an advertisement skip control may be provided on the advertisement or elsewhere, which when activated by the user causes the next review in the original video file to be displayed prior to the timer counting down to zero. If, however, the user selects a review link in the interstitial advertisement, then a video review for the advertised item may be displayed in the video content area or elsewhere prior to the timer counting down to zero"; and
(x) Regarding well-understood, routine, or conventional nature of ads implanted or embedded with watermark, note as follows:
(a) Pub. No.: US 2002/0087402 [0051] "The user, for example, may desire to see a full commercial message for some advertisers and thus accept a 30-second or 1 minute (or more or less) of an interruption in the programming content periodically. If, however, the user prefers to view the content substantially uninterrupted, he may wish to trade off the interruption time for a longer presentation of a banner advertisement or perhaps an even longer display of a watermark type advertisement. It is contemplated, for example, that a 30-second commercial interruption might be traded off for a longer presentation (e.g. perhaps 5 minutes) of banners or an even longer presentation (e.g. 20 minutes) watermark advertisement. In general, it is contemplated that more intrusive advertisements can be shown for shorter times than more intrusive advertisements. In any case, the user has the option to select the preferred advertising mechanism and perhaps more importantly, to not be bothered with advertisements that are of no interest. Moreover, the service provider is given the flexibility of providing varying types of advertisements for varying lengths of time with perhaps differing charges to the advertiser."
(b) Pub. No.: US 20040128514 [0018]; [0139]; [0242] "The same techniques can be employed to deter unauthorized processing of audio, image, video, or content by media pirates. In one embodiment, a computer's operating system (including peripheral device drivers) monitors various data within the system (e.g., data sent to writeable storage media, or sent via a serial port or network connection, etc.) for data bearing a do-not-copy watermark. "
(c) Pub. No.: US 20070239546 [0048] "combine three advertisements with the content, although it will be clear that any number of ads may be used. The first advertisement, "ad1", is a 30-second advertisement for Buy.com. When the content is selected for playing on the media player, the control script directs ad1 to begin playing and also activates the watermark 230 for display for 30 seconds, the duration of the advertisement"; and
(d) US20120167133 [0011] "Generally, at least one of a digital watermarks and a video fingerprint are referred to herein as a content signature. "; [0022] "In one embodiment, the content signature comprises a digital watermark. Digital watermarking is the process of embedding information into digital content in a way that is difficult to remove. If the digital content is copied, then the information is also carried in the copy. The digital content may carry several different digital watermarks at the same time. In visible watermarking, the information is visible in the picture or video. Typically, the information is text or a logo which identifies the owner of the content. When a television broadcaster adds its logo to the corner of transmitted video, this is an example of a visible watermark. In invisible watermarking, information is added as digital data to audio, a picture or video, but it cannot be perceived as such (although it may be possible to detect that some amount of information is hidden). The digital watermark may be intended for widespread use and is thus made easy to retrieve. In either case, as in visible watermarking, the objective is to attach ownership or other descriptive information to the digital content in a way that is difficult to remove."; [0023] "In an embodiment, the content owner inserts the digital watermark into the content before providing the content to a content distributor (i.e., before broadcast, multicast, unicast, or distribution on optical disks). In an embodiment, the digital watermark identifies the content and/or the content owner. Various digital watermarking techniques are known in the art and no particular implementation is specified herein."
Therefore the claims here fail to contain any element or combination of elements that would be considered significantly more and the claims are rejected under 35 U.S.C. 101 for lacking eligible subject matter.
Reasons for Withdrawal of Prior Art Rejection
2. As per claims 21-24, 28-31, 35-38, they are allowable over prior art because closest reference Pub. No.: US2013/0085866 teaches [0012] "The advertisements are presented to the user at random time intervals or time intervals that are spaced apart at pre-selected or random time periods. The user may disable the floating advertisement feature entirely by setting the preferences menu of the floating advertisement icon program or through the controlling website, and may turn this feature on anytime when the user wants to be informed of advertisements and features available." however fails to teach "where the first time delay is selected at random between the lower time limit and the upper time limit" as claimed. As such a prima facie case of obviousness could not be established.
Response to Remarks/Arguments
3. Per 101 arguments, “The Examiner notes the Applicant's argument "Applicant respectfully submits that in this case, as in Ex parte Desjardins, §§ 102, 103 and 112 are the traditional and appropriate tools to limit patent protection to its proper scope and § 101 is not appropriate." However, the Examiner finds no correlation between the facts in Ex parte Desjardins with the facts of the instant application as the inventions are indeed different. As such, the Examiner maintains that the 35 U.S.C. 101 analysis which is based on 2019 PEG which is now incorporated in the MPEP is the proper way to analyze the claimed invention. Furthermore, the Examiner had also conducted a proper prior art and 101 analysis in the parent application as well, for instance note “Patent Board Decision – Examiner Affirmed” of record 10/21/2019 in the parent application 13/769,515.
Next, the Applicant argues as follows:
"Further, in the AA, the Examiner makes two assertions regarding the§ l 01 argument
provided in the after final response, which is again described below. Assertion #1: The
Examiner asserts that a "novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible." Assertion #2: The Examiner asserts that the "Applicant without
particularly noting any additional element(s), argues that claims now somehow set forth one or
more additional element(s) that is/are not well-understood, routine, or conventional, the
Examiner respectfully maintains the position taken on pages 20-21 of the Final Rejection.
In regard to Assertion #1, the Examiner appears to be suggesting that the Applicant
previously argued that because the step of selecting a first time delay at random was found to be
novel and nonobvious under§§ 102 and 103, the claims cannot be patent-ineligible. As shown
below, this was not and is not the Applicant's argument.
The Applicant's argument was and is that, under Step 2B, the Examiner has to provide
either (1) a citation to one or more decisions or (2) a citation to one or more publications where
the step of selecting a first time delay at random is shown to be well-understood, routine, and
conventional. The Applicant simply noted that (2) could not be the case because the Examiner
admitted so when the step of selecting a first time delay at random was found to be novel and
nonobvious under§§ 102 and 103.
In regard to Assertion #2, the Examiner accused the Applicant of not particularly noting
any additional element(s), that is/are not well-understood, routine, or conventional. The
Applicant respectfully submits that, as shown below, the Applicant clearly pointed out the step of
selecting a first time delay at random was not well-understood, routine, or conventional.
In summary, as described below, the claims are patent eligible under Step 2B because the
Examiner did not show either (1) a citation to one or more decisions or (2) a citation to one or
more publications where the step of selecting a first time delay at random is shown to be well-understood, routine, and conventional", which the Applicant notes as,
"The Applicant respectfully submits that the step of selecting a first time delay at random
as described in amended claims 21, 28, and 35 was not "well-understood, routine, and
conventional activity previously known in the industry." The Applicant further respectfully
submits that the step of selecting a first time delay at random as described in amended claims 21,
28, and 35 is not conceivable as being a mental activity amenable to pen and paper, to be
categorized as ABSTRACT under first prong of Alice abstract analysis."
The Applicant conflates 2019 PEG based 101 analysis, particularly step 2B analysis which is an evaluation of additional element(s) singularly and in combination, with prior art i.e. although the second step in the Alice/Mayo framework is termed a search for an "inventive concept," the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for "an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself." Alice, 134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
Next, indeed the recitation noted by the Applicant, namely "selecting a first time delay at random," for which they are erroneously demanding evidence is abstract concept or recitation and the Examiner had already explained previously that "selecting a first time delay at random" is merely execution of "apply it" instructions by a computing device. As such, mere execution of abstract idea of how long a pop-up ad is programmed to appear over a base content presents nothing that can be considered as significantly more under 101, even if it is novel or non-obvious.
Next, the Examiner notes MPEP 2106.05 Eligibility Step 2B: Whether a Claim Amounts to Significantly More which clearly spells out the analysis to ensure that the record is clear as to what type of additional element(s) would require evidence under step 2B analysis.
(1)
"I. THE SEARCH FOR AN INVENTIVE CONCEPT
The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, 110 USPQ2d 1976, 1981 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72, 101 USPQ2d 1961, 1966 (2012)).
An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016). See also Alice Corp., 573 U.S. at 21-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 78, 101 USPQ2d at 1968 (after determining that a claim is directed to a judicial exception, "we then ask, ‘[w]hat else is there in the claims before us?") (emphasis added)); RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"). Instead, an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 573 U.S. at 27-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966).
Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Because this approach considers all claim elements, the Supreme Court has noted that "it is consistent with the general rule that patent claims ‘must be considered as a whole.’" Alice Corp., 573 U.S. at 218 n.3, 110 USPQ2d at 1981 (quoting Diamond v. Diehr, 450 U.S. 175, 188, 209 USPQ 1, 8-9 (1981)). Consideration of the elements in combination is particularly important, because even if an additional element does not amount to significantly more on its own, it can still amount to significantly more when considered in combination with the other elements of the claim. See, e.g., Rapid Litig. Mgmt. v. CellzDirect, 827 F.3d 1042, 1051, 119 USPQ2d 1370, 1375 (Fed. Cir. 2016) (process reciting combination of individually well-known freezing and thawing steps was "far from routine and conventional" and thus eligible); BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) (inventive concept may be found in the non-conventional and non-generic arrangement of components that are individually well-known and conventional).
Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting "the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101 "). As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty."). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) ("The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101.
(2)
"Step 2B asks: Does the claim recite additional elements that amount to significantly more than the judicial exception? Examiners should answer this question by first identifying whether there are any additional elements (features/limitations/steps) recited in the claim beyond the judicial exception(s), and then evaluating those additional elements individually and in combination to determine whether they contribute an inventive concept (i.e., amount to significantly more than the judicial exception(s)).
This evaluation is made with respect to the considerations that the Supreme Court has identified as relevant to the eligibility analysis, which are introduced generally in Part I.A of this section, and discussed in detail in MPEP § 2106.05(a) through (h). Many of these considerations overlap, and often more than one consideration is relevant to analysis of an additional element. Not all considerations will be relevant to every element, or every claim. Because the evaluation in Step 2B is not a weighing test, it is not important how the elements are characterized or how many considerations apply from this list. It is important to evaluate the significance of the additional elements relative to the invention, and to keep in mind the ultimate question of whether the additional elements encompass an inventive concept.
Although the conclusion of whether a claim is eligible at Step 2B requires that all relevant considerations be evaluated, most of these considerations were already evaluated in Step 2A Prong Two. Thus, in Step 2B, examiners should:
• Carry over their identification of the additional element(s) in the claim from Step 2A Prong Two;
• Carry over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a) - (c), (e) (f) and (h):
• Re-evaluate any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP § 2106.05(g), because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant; and
• Evaluate whether any additional element or combination of elements are other than what is well-understood, routine, conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, per MPEP § 2106.05(d).
In the context of the flowchart in MPEP § 2106, subsection III, Step 2B determines whether:
• The claim as a whole does not amount to significantly more than the exception itself (there is no inventive concept in the claim) (Step 2B: NO) and thus is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis; or
• The claim as a whole does amount to significantly more than the exception (there is an inventive concept in the claim) (Step 2B: YES), and thus is eligible at Pathway C, thereby concluding the eligibility analysis.
Examiners should examine each claim for eligibility separately, based on the particular elements recited therein. Claims should not be judged to automatically stand or fall with similar claims in an application. For instance, one claim may be ineligible because it is directed to a judicial exception without amounting to significantly more, but another claim dependent on the first may be eligible because it recites additional elements that do amount to significantly more.
For more information on how to evaluate claims reciting multiple judicial exceptions, see MPEP § 2106.04, subsection II.B.
If the claim as a whole does recite significantly more than the exception itself, the claim is eligible (Step 2B: YES) at Pathway C, and the eligibility analysis is complete. If there are no meaningful limitations in the claim that transform the exception into a patent-eligible application, such that the claim does not amount to significantly more than the exception itself, the claim is not patent-eligible (Step 2B: NO) and should be rejected under 35 U.S.C. 101. See MPEP § 2106.07 for information on how to formulate an ineligibility rejection."
Thus, the above makes clear that the Examiner's analysis from prong two simply needs to be carried over as the Examiner considered selection of a random time value to be execution of "apply it" instructions [MPEP 2106.05(f)] by an additional element such as a computing device e.g. a computer (for instance as recited in claim 35).
Accordingly, per MPEP based analysis as noted in (1) above, it makes it clear why it is important to first identify additional element(s) with particularity under step 2B, and as noted in (2) above, it makes it clear what gets carried over from prong two and what actually requires evidence.
Therefore, the Examiner respectfully finds the Applicant’s argument in view of abstract recitation, when properly construed in the claim as a whole, under step 2B, which is about evaluating additional element(s) singularly and in combination, unpersuasive - as the abstract recitation is to be executed as “apply it” instruction by an additional element such as a computer.
Conclusion
4. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and all the references on PTO-892 Notice of Reference Cited should be duly noted by the Applicant as they can be subsequently used during prosecution, at least note the following:
*Previously noted:
- Pub. No.: US2018/0288461 see [0149] The advertisement storage (“ad storage”) 425 is a persistent storage device that stores data for playback of an ad. For example, the ad storage 425 stores one or more ads to be displayed before, during or after playback of a video. In one embodiment, the ad storage 425 stores metadata for an ad (e.g., a title, a keyword and a description for the ad), allowing the ad determination module 465 to determine an ad for a video by matching the metadata of the ad against the metadata of the video.
- Pub. No.: US 2009/0177528 see [0009] note "Some implementations submit the content with information regarding at least the selected first advertisement to a location for the presentation of the content in conjunction with the selected first advertisement. The information is for describing the presentation of the first advertisement as either embedded within the content such as, for example, appearing part of the content, or alternatively as appearing in conjunction with the content, but separate from the content. In either of these cases, the first advertisement may be stored separately from the content or may be stored with the content. Once selected, however, the first advertisement is preferably presented in conjunction with the content ( e.g., simultaneously, within, during, pre-roll, mid-roll, post-roll, interstitially, or by another means)"; [0033] note "content producers or network operators choose to augment selected content with implicit or explicit advertising [...] explicit advertisements are inserted conspicuously on the content in a manner that is not implicit or not embedded such that the advertisement is not likely to appear as part of the content"; [0041] note "After the step 128, the process 100 transitions to the step 132, where the user submits the content with embedded advertisements to an appropriate location for presentation of the content. As mentioned above, the advertisements include implicit and/or explicit advertising."; [0065] note "At the step 516, one or more advertising clips are selected for placement, insertion, and/or presentation in conjunction with user generated content. The advertising clips are optionally selected by the system, selected by the user, and/or generated by the user for insertion. When selected by the system, the advertisements are preferably selected based on meta data provided by the producer of the content, and/or based on the contextual information surrounding the generated content. At the step 520, monetization options are presented from which the user may select. Examples of monetization options include ad revenue sharing, pay per click (PPC), and/or pay per impression (PPI). Then, at the step 524, the user directs the selected and/or modified user generated content with the selected advertising to an appropriate location for presentation and/or display. The advertising and content is optionally stored together, such as for embedded advertising, or alternatively, is stored separately. Some embodiments further include and store (separately or together with the content) embedded tracker code that tracks conversion and/or usage activities for the content and/or advertising. Such activities include, for example, the number of clicks, and the click-through rate for the advertising presented in conjunction with the content. At the step 528, activity is tracked and/or monetization is calculated for the user. In some implementations, tracker code uploads information to a system for managing the activities relating to the content, the advertising, and/or the library. The system of these implementations may further compensate one or more users based on the tracking and calculations. After the step 528, the process 500 concludes."; [0077] note "one or more of a server, an engine, and/or storage device(s) that implements a library of shared content and/or advertisements"; [0087]
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/DIPEN M PATEL/Primary Examiner, Art Unit 3621B