DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment filed on August 6, 2025 cancelled no claims. Claims 1, 8, and 15, were amended and no new claims were added. Thus, the currently pending claims addressed below are claims 1, 4-8, 11-15, and 18-26.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-8, 11-15, and 18-26 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1, 8, and 15 have been amended to recite “and optimizing network traffic for the multimedia network based on the output”. The examiner can find no support in the applicant’s specification for performing the active step of “optimizing network traffic” or “optimizing network traffic based on the output”, wherein the output comprises stored simulated impressions, simulated household reach data, and simulated daily budget data. The closest support is found in paragraphs 43 and 73, where it is disclosed that the output from the simulations can be used to determine the optimal reach for supplemental media content so that the supplemental media content can be distributed over the multimedia network to achieve maximum reach. Distributing data in this manner is expected to optimize multimedia network traffic. However, there is no disclosure of using the output comprising stored simulated impressions, simulated household reach data, and simulated daily budget data to actually optimize multimedia network traffic. Based on paragraphs 15-17, a multimedia network is, for example, a television network or streaming network that offers up time-slots in their multimedia programming to third-parties interested in displaying their supplemental media content in those time slots, wherein third-parties can purchase time slots for a fixed cost or participate in an auction for purchasing time slots. Based on paragraphs 40-44, the one computer performing the simulation can be a content server, or a system server, wherein a content server transmits the requested content to the streaming module on the user media device, and the system server operate to support the end user media devices. Thus, a content server can be a computer executing the streaming server, or a computer executed by one of a plurality of third-party supplemental content providers. Thus, the network traffic can be traffic between the television or streaming network and its end users that view can the streaming content with supplemental content inserted into time slots, the traffic comprised of interactions between the various-third parties and said television or streaming network, or a combination of the two. In respect to the network traffic between the television or streaming network and its end users, the applicant’s disclosure does not disclose how the output from the simulations could be utilized by a television or streaming network to optimize network traffic. Based on the applicant’s disclosure, it would appear that a computer of the television or streaming network executing the simulation to determine which of a plurality of supplemental content received from a plurality of third-party computers to insert into a time slot based on the optimum reach, still results in a supplemental content being inserted into to time slot and transmitted to the end user device. Thus, the network traffic between the television or streaming network and the end user device does not appear to change when the computer of the television or streaming network performs the reach simulation. Additionally, the applicant’s specification provides no indication simulation output performed by single third-party supplemental content provider can be used to optimize network traffic between a plurality of third-party supplemental providers and the television or streaming network. At best, the applicant’s specification supports a third-party supplemental content provider, using an output from the simulation to determine whether to transmit a request to purchase or bid-on a content slot and/or determining which supplemental content of a plurality of supplemental content of the third-party to transmit for inclusion in the time slot. While it is true that determining to transmit a bid or purchase request or supplemental content from a single third-party supplemental content provider to a television or streaming network will take more network than deciding not to transmit such information to the television or streaming network, this cannot be considered optimizing network traffic. The amount of traffic from every other third-party supplemental content provider to the television or streaming network does not appear to be affected by the decision of one third-party supplemental content provider to transmit a purchase, bid or piece of supplemental content to the television or streaming network. The applicant’s specification provides no indication as to how such a single third-party supplemental content provider using the output from the simulation can be used to optimize the network traffic between all the third-party supplemental content providers and the television or streaming network. Based on the applicant’s disclosure in figure 4 and paragraphs 40-44 and 55-75, a determination of whether or not to transmit data such as a purchase, bid, or piece of supplemental content from a third party-content supplemental content provider based on the output of the simulation has the intended result of optimizing network traffic. However, the applicant’s disclosure does not have support for actively optimizing network traffic as currently claimed. As such, it is clear that independent claims 1, 8, and 15, as currently amended, fail to comply with the written description requirement.
Dependent claims 4-7, 11-14, and 18-26 fail to cure the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
For the purpose of prosecuting the claims, the examiner is going to interpret the limitations as is they recited a step the applicant’s disclosure supports as being performed that result in the intended result of optimizing network traffic. Thus, the limitation “optimizing network traffic for the multimedia network based on the output” will be interpreted as “determining, based on the output, whether or not to transmit data comprising at least one of a bid and supplemental content in response to receiving bid request, wherein the determination is expected to result in optimizing network traffic”.
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, 4-8, 11-15, and 18-26 are directed to a method, a computer program product, and a system which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 1, 4-8, 11-15, and 18-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claim(s) 1, 8, and 15 recite(s) the following abstract idea: (Examiner Note: The multimedia network and graphical user interface have been included as part of the abstract idea because they are outside the scope of the claimed invention and, as such, cannot be considered an “additional element” of the claimed invention)
selecting a sample of historic content data for a number of households by randomly sampling the historic content data, where the historic content data includes bid requests for available time slots in a multimedia network, bid responses made in response to one or more of the bid requests for outputting supplemental media content in the available time slots, and an indication for each of the bid responses that the respective bid response was won;
selecting a sample of bid response data from the historic content data by randomly sampling the historic content data, wherein the bid response data includes one or more of the bid responses together with an indication for each bid response of the one or more bid responses that the respective bid response was won;
determining an estimated win rate by dividing a number of the bid responses won in the sample of bid response data by a total number of the bid responses in the sample of the bid response data;
performing, for each bid request of each household of the number of households in the sample from the historic content data, a Monte Carlo simulation using the estimated win rate, thereby outputting a corresponding prediction that the respective bid request would be won;
generating, for each prediction output by the Monte Carlo simulation indicating a respective bid request would be won, a simulated impression of the supplemental media content;
aggregating each simulated impression into a group of simulated impressions; and
performing a reach simulation using the group of simulated impressions to determine a reach for distributing the supplemental media content, wherein performing the reach simulation comprises:
determining a daily budget for the reach simulation;
determining, for each simulated impression in the group of simulated impressions, that the reach simulation has any available days to perform the reach simulation such that the reach simulation is active;
performing the following steps based on determining that the reach simulation is active:
determining, for an available day of the reach simulation, that the simulated impression is available to be shown to a household,
determining, based on determining that the simulated impression is available to be shown to the household, that there is an available daily budget for the available day to simulate a bid response for the simulated impression,
determining, based on determining that there is the available daily budget to simulate the bid response for the simulated impression, for the household, that the simulated impression is frequency capped for the household for the available day,
performing, based on determining that the simulated impression of the supplemental media content is frequency capped for the household the following steps for a further simulated impression in the group of simulated impressions:
determining, for an available day of the reach simulation, that the simulated impression is available to be shown to a household,
determining, based on determining that the simulated impression is available to be shown to the household, that there is an available daily budget for the available day to simulate a bid response for the simulated impression, and
determining, based on determining that there is the available daily budget to simulate the bid response for the simulated impression, for the household, that the simulated impression is frequency capped for the household for the available day,
subtracting, based on determining that the simulated impression is not frequency capped for the household, an amount from the daily budget to simulate an acquisition of the simulated impression for the household,
storing the simulated impression for output to a graphical user interface (GUI) when it is determined that the reach simulation is no longer active,
performing the following steps for a further simulated impression in the group of simulated impressions until it is determined that the reach simulation does not have any available days such that the reach simulation is no longer active:
determining, for an available day of the reach simulation, that the simulated impression is available to be shown to a household,
determining, based on determining that the simulated impression is available to be shown to the household, that there is an available daily budget for the available day to simulate a bid response for the simulated impression, and
determining, based on determining that there is the available daily budget to simulate the bid response for the simulated impression, for the household, that the simulated impression is frequency capped for the household for the available day
generating, based on determining that the reach simulation is not or no longer active, the output, wherein the output comprises: stored simulated impressions, simulated household reach data, and simulated daily budget spend data;
outputting the output to the GUI for display, wherein the GUI displays the stored simulated impressions as a list or in table format listing which simulated impressions are to be shown, the simulated household reach data showing projected reach of the simulated impressions based on targeting criteria, and the simulated daily spend data indicating how much of the daily budget was used in making bid responses; and
determining, based on the output, whether or not to transmit data comprising at least one of a bid and supplemental content in response to receiving bid request, wherein the determination is expected to result in optimizing network traffic.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely advertising, marketing, or sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e., “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of a computer comprising at least one processor and one or more memories executing instructions (e.g., a general-purpose computer).
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing (e.g., storing), communicating (e.g., transmitting and receiving), and displaying:
storing the simulated impression for output when it is determined that the reach simulation is no longer active (storing data); and
outputting the output to the GUI for display, wherein the GUI displays the stored simulated impressions as a list or in table format listing which simulated impressions are to be shown, the simulated household reach data showing projected reach of the simulated impressions based on targeting criteria, and the simulated daily spend data indicating how much of the daily budget was used in making bid responses (transmitting and displaying data).
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of processing, communicating (e.g., transmitting and receiving), and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e., “PEG” Revised Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using at least one processor and one or more memories executing instructions (e.g., a general-purpose computer) to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more generic computer components.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires one or more general-purpose computers and/or one or more generic computer components (as evidenced from Figure 7 and paragraphs 91 and 94 of the applicant’s specification); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, storing and/or transmitting data:
storing the simulated impression for output when it is determined that the reach simulation is no longer active (storing data); and
outputting the output to the GUI for display, wherein the GUI displays the stored simulated impressions as a list or in table format listing which simulated impressions are to be shown, the simulated household reach data showing projected reach of the simulated impressions based on targeting criteria, and the simulated daily spend data indicating how much of the daily budget was used in making bid responses (transmitting and displaying data).
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e., “PEG” Step 2B=No).
The dependent claims 4-7; 11-14; and 18-26 appear to merely further limit the abstract idea by adding the steps of determining an estimated reach based on combining the output with historical reach data, and outputting the combined output to the GUI for display which is considered part of the abstract idea (Claims 4, 11, and 18); adding an additional step of, based on a determination, repeating previous steps for a next available day which is considered part of the abstract idea (Claims 5, 12, and 19); and adding additional steps of, based on a determination, estimating the daily budget remaining; repeating steps for a next available days and/or one or more percentages of the daily budget which is considered part of the abstract idea (Claims 6-7, 13-14, and 20), further limiting the daily budget which is considered part of the abstract idea (Claims 21, 23, and 25); and adding an additional step of repeating steps (a)-(c) for a percentage of the daily budget which is considered part of the abstract idea (Claims 22, 24, and 26) and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No)..
Thus, based on the detailed analysis above, claims 1, 4-8, 11-15, and 18-26 are not patent eligible.
Possible Allowable Subject Matter
Claims 1, 4-8, 11-15, and 18-26 contain subject matter that would be allowable if the applicant were to be able to overcome the 35 USC 112(a) rejections and the 35 USC 101 rejections above.
The following is a statement of reasons for the indication of allowable subject matter: The examiner has found prior art (see Peris et al. - PGPUB: 2021/0035163; Jalali et al. - PGPUB: 2015/0134463; and Banerjee -PGPUB: 2015/0262253) that discloses:
one or more memories; and at least one processor each coupled to at least one of the memories and configured to perform operations comprising:
selecting a sample of historic content data for a number of households by randomly sampling the historic content data, where the historic content data includes bid requests for available time slots in a multimedia network, bid responses made in response to one or more of the bid requests for outputting supplemental media content in the available time slots, and an indication for each of the bid responses that the respective bid response was won;
selecting a sample of bid response data from the historic content data by randomly sampling the historic content data, wherein the bid response data includes one or more of the bid responses together with an indication for each bid response of the one or more bid responses that the respective bid response was won;
determining an estimated win rate by dividing a number of the bid responses won in the sample of bid response data by a total number of the bid responses in the sample of the bid response data;
performing, for each bid request of each household of the number of households in the sample from the historic content data, a Monte Carlo simulation using the estimated win rate, thereby outputting a corresponding prediction that the respective bid request would be won;
generating, for each prediction output by the Monte Carlo simulation indicating a respective bid request would be won, a simulated impression of the supplemental media content;
aggregating each simulated impression into a group of simulated impressions; and
performing a reach simulation using the group of simulated impressions to determine a reach for distributing the supplemental media content;
determining a daily budget for the reach simulation; and
for each simulated impression in the group of simulated impressions,
determining that the reach simulation has any available days to perform the reach simulation such that the reach simulation is active.
The examiner has determined that it would not have been obvious to one of ordinary skill in the art to combine additional references with the prior art of Peris et al, Jalali et al., and Banerjee to teach each and every one of the following limitations without using the applicant’s claims as a roadmap and thus apply impermissible hindsight reasoning:
if determined that the reach simulation is active, for an available day of the reach simulation, determining that the simulated impression is available to be shown to a household,
if determined that the simulated impression is available to be shown to the household, determining that there is an available daily budget for the available day to simulate a bid response for the simulated impression, and
if determined that there is an available daily budget to simulate the bid response for the simulated impression, determining, for the household, that the simulated impression is frequency capped for the household for the available day, and
if determined that the simulated impression of the supplemental media content is frequency capped for the household, performing (b)-(d) for a further simulated impression in the group of simulated impressions, and
if determined that the simulated impression is not frequency capped for the household, subtracting an amount from the daily budget to simulate an acquisition of the simulated impression for the household, storing the simulated impression for output to a graphical user interface (GUI), and performing (b)-(d) for a further simulated impression in the group of simulated impressions.
Therefore, claims 8, 11-15, 18-20 and 23-26 contain subject matter that would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 rejection above.
Response to Arguments
Applicant's arguments filed August 6, 2025 have been fully considered but they are not persuasive.
The applicant argues that the claims overcome the 35 USC 101 rejection under Step 2a, Prong 1 because they do not recite a Certain Method of Organizing Human Activity that is a commercial or legal interaction namely an advertising, marketing, or sales activity of behavior because the claimed supplemental media content is by no means limited to ad data only as indicated in paragraph 15 of the applicant’s specification. The examiner disagrees. First, the claimed supplemental media content does not specifically exclude ad data. As such, the claim is broad enough to encompass supplemental content that includes only ad data. Second, the Merriam-Webster online dictionary defines “advertising” as “the action of calling something to the attention of the public, especially by paid announcement”. Whether the supplemental data is an advertisement, a video, an image, an infographic, etc., it is still by definition advertising as it is being included with other content to call attention to the supplemental data which has been inserted into other content based on a payment (bids). Since, the claims are simulating the placement of such advertising (e.g. videos, images, infographics, etc.) to output which simulated impression is to be shown, the projected reach of the simulated impressions, and the simulated daily spend data indicating the amount of daily budget was used in making bid responses the claims, then based on this output deciding whether or not to transmit a bid for inserting the supplemental content and/or the supplemental content itself, the claims are clearly reciting Certain Method of Organizing Human Activity that is a commercial or legal interaction namely an advertising, marketing, or sales activity of behavior. Thus, the rejection has been maintained.
The applicant argues that the claims overcome the 35 USC 101 rejection under Step 2a, Prong 1, because the examiner is using a broad-brush approach in identifying the abstract idea which is overly inclusive similar to the approached used by an examiner in the board decision in appeal 2023-002366. The examiner disagrees. Unlike the claims in the board decision in appeal 2023-002366, where an examiner included “additional elements” as part of the abstract idea itself, the examiner of the instant application has removed all “additional elements” from the claims and considered them under Step 2a, Prong 2 and Step 2b. In the claims of the in the 2023-002366 decision, an examiner erred by including physical elements that were within the scope of invention as part of the identified abstract idea itself and only removed the “at least one tagging unit” for consideration as an “additional element” under Step 2a, Prong 2 and Step 2b. Thus, said examiner considered the first peer-to-peer module, the at least one peer-to-peer network comprising at least one peer-to-peer application, and the registering mean as part of the identified abstract idea, which is improper because based on the applicant’s specification are physical elements of the claimed system. Additionally, said examiner neither identified the at least one tagging tool configured to attach at least one readable code element in the form of a RFID transponder, NFC transponder, a 2D barcode, or 3D barcode to the recyclable material as part of the abstract idea, nor address said tagging tool as an additional element. The tagging unit comprising a tagging tool and peer to peer module should have been considered a first device and not part of the abstract idea; the peer-to-peer network comprising a peer-to-peer application should have been considered a second device. The examiner should have considered this arrangement of devices under Steps 2a, Prong 2 and Step 2b, but no such consideration was performed. Considered in combination the claim recites a tagging unit (computer) comprising a tagging tool executing software (a peer to peer module) and a peer-to-peer network (second computer) executing software (a peer to peer application). The tagging tool actual applies the RFID transponder, NFC transponder, 2D barcode or 3D barcode to the recyclable material element. There is no disclosure of the tagging tool being a printer in the disclosure. As such, the tagging unit comprising the tagging tool is not just a general-purpose computer with generic computing components. Therefore, it does not appear to be just a general-purpose computer upon which the abstract idea is merely being applied. Instead, it appears to be a specialty computing apparatus comprising a specific tool for attaching the readable code element to the recyclable material that when considered in combination the other computing apparatus results in an arrangement of devices that result in an improvement that transforms the abstract idea into a practical application under Step 2a, Prong 2 and/or considered significantly more under Step 2b. Thus, the examiner concurs with the Board Decision in the case. In fact, even if the claim did not include the tagging tool and merely recited to different general-purpose computer with generic computing devices, it would still be possible to overcome a rejection under Step 2a, Prong 2 and/or Step 2b. We know from the claims of the Bascom decision that an arrangement of general-purpose computer each performing specific meaningful steps of an abstract idea can result in an improvement that transforms the abstract idea into a practical application. In contrast, the examiner of the instant case has removed all “additional elements” within the scope of the claims from the abstract idea itself, and only considered claim limitations that recite the abstract idea when identifying the abstract idea. Additionally, the examiner has considered all of the identified “additional elements” for the purpose of Steps 2a, Prong 2 and Steps 2b in the rejection. As such, the claims of the instant invention have not been painted in the same broad brush as the claims in the board decision. Contrary to the appicant’s assertion otherwise, the examiner has not included “additional elements” such as the “computing system” comprising “at least one processor” as part of the abstract idea. The examiner has clearly excluded these items from the abstract idea and considered them additional elements under Step 2a, Prong 2 and Step 2b. Thus, the rejection has been maintained.
The applicant argues that the claims overcome the 35 USC 101 rejection under Step 2a, Prong 2, because the claims result in a technical improvement to computers and multi-media networks that transform the abstract idea into a practical application as indicated in paragraphs 43 and 73-75 of the applicants specification which includes outcomes of “determining how best to allocate resources to distribute data over networks, optimize network traffic and overall data flow over networks, and saving compute resources (processing and storage) because of how simulation data is sampled.. The examiner disagrees. The applicant appears to be misconstruing the meaning of a technical improvement capable of transforming an abstract idea into a practical application and/or capable of being considered significantly more as outlined in MPEP 2106. As disclosed in MPEP 2106, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. Thus, a technical improvement that is obtained by merely practicing an abstract idea that is merely applied by a general-purpose computer is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2, and insufficient to be considered significantly more under Step 2b. Each of the argued technical improvements a rooted solely in the abstract idea which is merely applied using a general-purpose computer. The additional elements of the general-purpose computer with generic computer components remains the same. As such, there does not appear to be any improvement to the computer itself, a technology rooted in the additional elements, or a technological field that is rooted in the additional elements. In order to overcome a 35 USC 101 rejection under Step 2a, Prong 2 the purported improvement must be root in the “additional elements”. In order to overcome a 35 USC 101 rejection under Step 2b, the “additional elements” must be considered significantly more than an abstract idea. “Additional elements” are defined as those elements outside of the identified abstract idea itself. In the instant case, the purported improvements, argued by the applicant, are improvement rooted solely the abstract idea itself which is merely applied using a general-purpose computer. Improvements of this nature are improvement to an abstract idea which are improvements in ineligible subject matter (see SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.). It is true that, hypothetically speaking, a claim encompassing running a simulation and then building an expensive system and/or hardware based on the output of the simulation, would likely overcome a 35 USC 101 rejection. However, this would likely occur because either the simulation and built system do not fall in one of the enumerated categories and subcategories of abstract idea, or because the physical system and/or hardware that is built is an additional element that transforms the abstract idea into a practical application under Step 2a, Prong 2 and/or considered significantly more under Step 2b. The instant claims clearly recite an abstract idea that falls under the Certain Methods of Organizing Human Activity category of abstract idea, and clearly fall under the subcategory of commercial and legal activities namely advertising, marketing, or sales related activities or behaviors. Additionally, the output of the simulation is used for performing said advertising, marketing or sales activity. Thus, the claim does not use the output of the simulation to build any type of physical system and/or hardware. Thus, there is no additional element that is created from said output that would be capable of transforming the abstract idea under Step 2a, Prong 2 or capable of being considered significantly more under Step 2b. Thus, the rejection has been maintained.
The applicant argues that the claims overcome the 35 USC 101 rejection because they are similar to the claims in the board decision in appeal 2019-002160. The examiner disagrees. The claims in the instant case bear no similarity to the claims in the board decision in appeal 2019-002160. The claims in the board decision in appeal 2019-002160 overcame the 35 USC 101 rejection because they did not recite a Mental Process, which was interpreted by the board to be the examiners position, because they cannot be performed in the human mind, and did not fall within one of the other statutory categories of 101. In contrast, the claims of the instant invention fall squarely in the Certain Methods of Organizing Human Activity category or abstract idea. Thus, the rejection has been maintained.
The applicant argues that the claims of the instant invention overcome the 35 USC 101 rejection because they are similar to the claims in Abstract Idea Example 38. The examiner disagrees. The claims of the instant invention bear no similarities to Abstract Idea Example 38 which simulated the operation of a physical component (analog circuit) of physical computer and as such did not recite an abstract idea that fell under the buckets of Mathematical Concept, Mental Process, or Certain Methods of Organizing Human Activity under Step 2a, Prong 1. Conversely, the claims of the instant invention merely simulate advertising and, as such, clearly recite an abstract idea under Step 2a, Prong 2. Additionally, and contrary to the applicant’s assertion otherwise, the claims of the instant invention do not simulate network traffic. The claims do not recite gathering historic information regarding the number and/size of data packets transferred to and from a plurality of computers during different periods of time. The claims do perform a simulation that simulates such data packet transfers. The claims to not identify bottlenecks created by the simulated data packet transfers. The claims do not determine an optimal number of packets to transfer during a given time period or an optimum size of such data packets. The claims do not output simulation data that is used to control or inform any of the computers operating on the network of the optimum number and/or size of data packets to transfer during a given time period so that the network traffic is optimized. Additionally, there is no support for such activities in the applicant’s disclosure. Instead, the applicant is merely simulating an advertising process to determine which, if any, insertion slot of a primary content to bid on and/or insert a secondary content such that reach will be optimized given budgetary limitations, and then either transmitting bids and/or supplementary content based on the output or electing not to transmit said bids and/or supplementary content. Thus, said simulation and the operations performed as a result on output from said simulation have been properly been identified as a Certain Method of Organizing Human Activity which is a commercial or legal interaction namely advertising, marketing, or sales activities or behaviors. Thus, the rejection has been maintained.
The applicant asserts that the claims are similar to the McRO decisions and as such should overcome the 35 USC 101 rejection. The examiner disagrees. The claims of the instant invention bear no similarities to the McRO decision. In the McRO decision the court found that the claims did not recite an abstract idea. As such, the claims overcame the 101 rejections under what is now considered Step 2a, Prong 1. Furthermore, even if automated rules-based use of morph targets and delta sets for lip-synchronized three-dimensional animation was an abstract idea, it would be an abstract idea in the sense of a genus. Thus, the automatic rules of the particular type claimed needs to be considered with regard to an improvement to the technology or technological field. Thus, under what is currently considered Step 2a, Prong 2 and/or Step 2b, the particular rules claimed were considered additional elements. The court determined that these additional elements recited an improvement to a technology that overcame the 35 USC 101 rejection, namely an improvement in the way that computer animation could be performed. In contrast, the claims of the instant invention clearly recite an abstract idea that falls under the Certain Method of Organizing Human Activity category, and the only additional elements of the claim are a general-purpose computer upon which the abstract idea is being applied. Thus, any purported improvement is rooted solely in the abstract idea itself, which is an improvement in ineligible subject matter (see SAP v. Investpic decision and/or MPEP 2106.05(a) which states: “It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements”). Thus, the rejection has been maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Cui et al. (PGPUB: 2015/0332317) which discloses determining a plurality of bid values and estimating a corresponding value of advertisement reach for a target audience based on an expected resulted such as at least one successful impression and providing the advertiser with a visual representation of a bid-reach landscape representing the estimated plurality of advertisement reach values as a function of the plurality of bid values.
Kitts et al. (PGPUB: 2018/0108049) which disclose modeling advertisement goals and key performance indicators (KPI) such as bid price, budget, pacing and reach enables advertisers to dynamically adjust their campaign based on the needs of the moment thereby improving controllability, smoothness, as well as avoiding hard stop conditions that plague the constraint-based approaches.
Riordan et al. (PGPUB: 2017/0372352) discloses a native experimentation platform for simulating ad placement to a control group to predict the effectiveness of ads based on historic information associated with previous advertisements such that advertisers can modify targeting parameters, advertisement, or budgets based on the results of media lift experiments including the use of frequency controls.
Geng et al. (Comparison Lift: Bandit-based Experimentation System for Online Advertising, 2021, Proceedings of the AAAI Conference on Artificial Intelligence, 35(17), pgs. 15117-15126) discloses a Monte Carlo based simulation system for online advertising that predicts advertisement lift based on historic information.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN W VAN BRAMER whose telephone number is (571)272-8198. The examiner can normally be reached Monday-Thursday 5:30 am - 4 pm EST.
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/John Van Bramer/Primary Examiner, Art Unit 3622