DETAILED ACTION
The following is a FINAL office action upon examination of the application number 18/230971. Claims 1-20 are pending in the application and have been examined on the merits discussed below.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/10/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
Claims 1, 6, 8, 13, and 15 have been amended.
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 1-20 are 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.
Claims 1, 8, and 15 have been amended to recite retrieve, from a second server associated with at least one product terminals of the product terminals, one or more characteristics associated with the at least one product terminals. Paragraphs 12, 13, 14, and 27 describes the output of digital content in accordance with characteristics of product terminals ([0012] …The method includes retrieving, by a first server, digital content from a content management system and formatting, by the first server, the digital content to be output by at least one product terminal of a plurality of product terminals in accordance with one or more characteristics of the at least one product terminal [0027] …The first server formats the digital content to be output by at least one product terminal of a plurality of product terminals in accordance with one or more characteristics of the at least one product terminal). Paragraphs 66 and 67 describe the formatting of digital content in accordance with characteristics of product terminals ([0066] …CMS content 114 may include digital content, such as advertising content. CMS content 114 may be configured to be output on a particular device once it is formatted in accordance with the specifications and characteristics of the particular device. [0067] In step 304,server 101 formats the digital content in accordance with characteristics of product terminals, such that it can be output by the product terminals. The product terminals may be terminal 106 of pump 107. In some embodiments, terminal 106 may be part of self-serving kiosks located at banks, electric charging stations, airports, hotels, restaurants, etc. The characteristics of the product terminal may include device type, supported file types, size, shape, software version, etc.) However, Examiner cannot find any description/disclosure of retrieving product terminal characteristics from a server. Therefore, Examiner finds that the claims contain subject matter that was not described in the specification in a way to reasonably convey that the inventor had possession of the claimed invention. Appropriate correction/clarification is required. The dependent claims inherit the deficiencies from their respective parent claims.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because 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.
(Step 1) Claims 1-7 are directed to a method; thus these claims are directed to a process, which is one of the statutory categories of invention. Claims 8-14 are directed to a system comprising a processor; thus the system comprises a device or set of devices, and therefore, is directed to a machine which is a statutory category of invention. Claims 15-20 are directed to a non-transitory computer readable medium, which is a manufacture, and this a statutory category of invention.
(Step 2A) The claims recite an abstract idea instructing how to use reference data to retrieve content for display, which is described by claim limitations reciting:
retrieving … content …;
retrieving … one or more characteristics associated with the at least one product terminal;
formatting … the …content to be output … in accordance with the one or more characteristics associated with the at least one product terminal, wherein each product terminal of the plurality of product terminals is disposed in a location remote… ;
identifying … the at least one product terminal from the plurality of product terminals to output the formatted … content;
sending … reference data corresponding to the formatted … content, wherein the reference data is smaller than the formatted … content referenced thereby; and
causing output … of the formatted … content… responsive to … pulling each formatted … content … using the reference data.
The identified limitations in the claims describing using reference data to retrieve content for display (i.e., the abstract idea) fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, which covers marketing activities or, alternatively, the “Mental Processes” grouping of abstract ideas since the identified limitations can be performed by a human, mentally or with pen and paper. Dependent claims 2, 9, and 16, recite limitations that further describe/narrow the abstract idea; therefore, these claims are also found to recite an abstract idea.
This judicial exception is not integrated into a practical application because additional elements such as the first server; second server, content management system, and at least one product terminal of a plurality of product terminals in claim 1; the memory, processor coupled to the memory, first server remote from the product terminals, second server associated with the at least one product terminal, content management system, and at least one product terminal of a plurality of product terminals in claim 8; and the non-transitory computer readable medium storing instructions that when executed by a processor cause the processor to execute operations, content management system, first sever remove from a plurality of product terminals, second server associated with at least one product terminal, and at least one product terminal of a plurality of product terminals in claim 15, do not add a meaningful limitation to the abstract idea since these elements are only broadly applied to the abstract ideas at a high level of generality; thus, none of recited hardware offers a meaningful limitation beyond generally linking the abstract idea to a particular technological environment, in this case, implementation via a computer/processor.
Additional elements such as retrieving, by a first server, digital content from a content management system; retrieving, from a second server associated with at least one product terminal of a plurality of product terminals….; sending, to the second server, reference data…; digital content to be output by at least one product terminal of a plurality of product terminals; and causing output, by the first server of the formatted digital content … by transmitting the formatted digital content to the second server responsive to the second server pulling each formatted digital content from the first server… do not yield an improvement in the functioning of the computer itself, nor do they yield improvements to a technical field or technology; further, these additional elements only add insignificant extra-solution activities (data gathering/transmission and display). Similarly, additional elements in claims 3, 4, 5, 7, 10, 11, 12, 14, 17, 18, 19, and 20 related to output by the at least one product terminal…, and receiving by the first server… do not yield an improvement and only add insignificant extra-solution activities. Additional element in claims 6 and 13 related to energy dispensing station only generally link the abstract idea to a technological environment or field of use and do not provide an improvement to the computer or technology. Accordingly, these additional element do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
(Step 2B) The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to integration of the abstract idea into a practical application, the hardware additional elements amount to no more than mere instructions to apply the exception using a generic computer component (see Spec. [0022]). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Additional elements such as retrieving, by a first server, digital content from a content management system; retrieving, from a second server associated with at least one product terminal of a plurality of product terminals….; sending, to the second server, reference data…; digital content to be output by at least one product terminal of a plurality of product terminals; and causing output, by the first server of the formatted digital content … by transmitting the formatted digital content to the second server responsive to the second server pulling each formatted digital content from the first server… do not yield an improvement in the functioning of the computer itself, nor do they yield improvements to a technical field or technology; further, these additional elements only add insignificant extra-solution activities (data gathering/transmission and display). Similarly, additional elements in claims 3, 4, 5, 7, 10, 11, 12, 14, 17, 18, 19, and 20 related to output by the at least one product terminal…, and receiving by the first server… do not yield an improvement and only add insignificant extra-solution activities. Additional element in claims 6 and 13 related to energy dispensing station only generally link the abstract idea to a technological environment or field of use and do not provide an improvement to the computer or technology. With respect to data gathering/transmission limitations, the courts have recognized the use of computers to receive and transmit data as a well-understood, routine, and conventional, 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). With respect to data display limitations, the courts have found the presentation of data to be a well-understood, routine, conventional activity, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93 (see MPEP 2106.05(d)). In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0093125 (Hradetzky); in view of US 2008/0262929 (Behr); in view of US 2025/0139658 (Zhu).
As per claim 1, Hradetzky teaches: a computer-implemented method for displaying digital content at product terminals, comprising: retrieving, by a first server, digital content from a content management system; ([0021] … The processor 220 may select the advertisement from a plurality of advertisements stored in memory 240 and/or in a remote database (not shown))
formatting, by the first server, the digital content to be output by the at least one product terminal…, wherein each product terminal of the plurality of product terminals is disposed in a location remote from the first server; [0044] FIG. 6 shows an exemplary programming structure 400 of the content and commercials displayed during the fuelling process. It will be appreciated that the illustrated programming structure is illustrative and not limiting. The structure is generated by merging update information (content pieces) with advertising, both according to the customer profile, so that it results in a set of personalized content and advertising. [0004] … Advertising at fuel dispensers offers a significant advantage compared to other digital out-of-home advertising, at least in part because of the higher probability of undivided attention for the displayed content during the "idle" time of the customer while the vehicle refuels. [0005] Currently, point of sale terminals, such as fuel dispensers, provide general advertisements and/or advertisements specific to the products and/or services of the store associated with the point of sale terminal)
identifying, by the first server, the at least one product terminal from the plurality of product terminals to output the formatted digital content; …causing output, by the first server, of the formatted digital content by the at least one product terminal by transmitting the formatted digital content to the second server … ([0021] …It will be appreciated that the advertisement may be selected based on one or more of the determined characteristics, and/or that the processor 220 may place a higher emphasis on one or more of the determined characteristics. Because the advertisement is selected based on the personal characteristics determined for the customer 1, the selected advertisement represents a personalized advertisement. [0029] … processor 220 outputs the selected advertisement to the display 232 and loudspeakers 238 via the respective video interface 236 and audio interface 234. [0034] FIGS. 5A and 5B show a detailed method 300 of an exemplary process of collecting customer data, delivering personalized advertising, and collecting customer feedback to the displayed advertising at a fuel dispenser 10 while fuelling the vehicle 2. [0039] When the customer 1 removes the nozzle 12 (block 329), processor 220 outputs a first block of advertisement content to display 232 (block 330)).
Although not explicitly taught by Hradetzky, Behr teaches: retrieving, from a second server associated with at least one product terminal of a plurality of product terminals, one or more characteristics associated with the at least one product terminal; ([0039] … a user profile database 36 for storing data related to each mobile device user 16,18,20 opting into the system 10. The user profile database 36 may include, for example, the caller's name, the caller's telephone number, a unique identifying number associated with the user's mobile device, the type of mobile device (e.g. cellular telephone, PDA, BLUETOOTH, etc.), the operating system used by the mobile device (e.g. HTTP, WMS, WML, WAP, etc.), and the time zone in which the mobile device is operating. [0067] … the content management engine 32 may be configured to receive various parameters relating to the user's mobile device, including a unique number identifying the mobile device, the type of mobile device transmitting the request, the operating platform of the mobile device, and the wireless service provider hosting the mobile device. [0068] … the mobile device has an operating system capable of displaying only still images on the display screen, the engine 32 can be configured to format the advertisement to match the display capabilities of the mobile device as well as that specified by the mobile device user's service provider. Conversely, if the user's mobile device is capable of displaying slideshows containing sequences of images).
formatting, by the first server, the digital content to be output by at least one product terminal of a plurality of product terminals in accordance with one or more characteristics of the at least one product terminal ([0007] …adjust the format of the advertisements and other informational content sent to the user's mobile device based at least in part on the browser capabilities of the mobile device… [0034] … the necessary file conversion and browser interfacing necessary to produce text, still images, moving images, and/or audio in a format suited to the user's particular mobile device [0068] … format the advertisement to match the display capabilities of the mobile device as well as that specified by the mobile device user's service provider. Conversely, if the user's mobile device is capable of displaying slideshows containing sequences of images, the engine 32 can be configured to feed a slideshow to the user's mobile device containing several images provided by the advertiser 24,26,28 and/or third-party entity 40,42,44. [0111] …mobile device user 16,18,20 may receive a formatted electronic advertisement as previously discussed herein. In some instances, the electronic advertisement may be customized based at least in part on the browser capabilities of the mobile device).
It would have been obvious, before the effective filing date of the claimed invention, for one of ordinary skill in the art to have modified the teachings of Hradetzky with the aforementioned teachings of Behr with the motivation of producing content suitable to the device (Behr [0034]). Further, one of ordinary skill in the art would have recognized that applying the teachings of Behr to the system of Hradetzky would have yielded predictable results and doing so would have been recognized by those of ordinary skill in the art as resulting in an improved system that would allow for the formatting of content based on the device.
Although not explicitly taught by Hradetzky, Zhu teaches: sending, to the second server, reference data corresponding to the formatted digital content, wherein the reference data is smaller than the formatted digital content referenced thereby; and ([0051] … The advertisement server searches the advertisement resource pool for advertisement information (for example, an ID, a name, an advertisement type, and a download link of an advertisement material of a target advertisement) of the target advertisement that matches the advertisement request, and returns the advertisement information to the terminal device [0119] The terminal device stores related information in the advertisement information in a lightweight database (SQLite). Because the lightweight database (SQLite) occupies very low resources, SQLite specially configured to store advertisement information may be disposed in the terminal device 11. SQLite may be a db file, and may be stored in a mobile phone system or an app file path. The advertisement information includes an advertisement ID, a download link of an advertisement material, an advertisement slot identifier, an advertisement type, a width of the advertisement material, a height of the advertisement material, and the like).
causing output, by the first server, of the formatted digital content by the at least one product terminal by transmitting the formatted digital content to the second server responsive to the second server pulling each formatted digital content from the first server using the reference data ([0051] … The advertisement server searches the advertisement resource pool for advertisement information (for example, an ID, a name, an advertisement type, and a download link of an advertisement material of a target advertisement) of the target advertisement that matches the advertisement request, and returns the advertisement information to the terminal device … terminal device downloads the advertisement material of the target advertisement based on the download link of the advertisement material in the advertisement information, and then displays the advertisement material of the target advertisement in a display interface of the terminal device. [0117] In the returned information, the terminal device may download from the server based on a link (a URL link) corresponding to the advertisement ID. Advertisement materials in the returned information are corresponding to same advertisement content, and are used to display the same advertisement content).
It would have been obvious, before the effective filing date of the claimed invention, for one of ordinary skill in the art to have modified the teachings of Hradetzky with the aforementioned teachings of Zhu with the motivation of retrieving advertisement content in real time (Zhu [0091]). Further, one of ordinary skill in the art would have recognized that applying the teachings of Zhu to the system of Hradetzky would have yielded predictable results and doing so would have been recognized by those of ordinary skill in the art as resulting in an improved system that would allow for download of advertisement content using reference data.
As per claim 2, Hradetzky teaches: generating, by the first server, the digital content based on … a user at the product terminal ([0041] The collected data is then processed to generate a customer profile (block 337). The creation of the consumer profile can be done in real-time or near real-time, e.g., in the time between the customer 1 removing the nozzle 12 and the output of the first personalized commercial. The customer profile may include any or all of a customer's age, gender, income class, family situation, interest in sport/outdoor activities/water sports, interest in car racing/sports cars, mobile phone carrier, mobile phone brand, mobile phone model, name of vehicle owner, year of manufacture of vehicle 2, market price of vehicle 2, registration address of the vehicle 2, etc. Based on the customer profile, the processor 220 and/or the BO 22 selects one or more personalized advertisements for the customer 1 (block 338). The processor then outputs the selected advertisements to the elements of the output unit 230 in the fuel dispenser 10 for output to the customer 1 (block 339)).
Although not explicitly taught by Hradetzky, Behr teaches: generating, by the first server, the digital content based on information about the product terminal ([0007] …adjust the format of the advertisements and other informational content sent to the user's mobile device based at least in part on the browser capabilities of the mobile device… [0034] … the necessary file conversion and browser interfacing necessary to produce text, still images, moving images, and/or audio in a format suited to the user's particular mobile device [0068] … format the advertisement to match the display capabilities of the mobile device as well as that specified by the mobile device user's service provider. Conversely, if the user's mobile device is capable of displaying slideshows containing sequences of images, the engine 32 can be configured to feed a slideshow to the user's mobile device containing several images provided by the advertiser 24,26,28 and/or third-party entity 40,42,44. [0111] …mobile device user 16,18,20 may receive a formatted electronic advertisement as previously discussed herein. In some instances, the electronic advertisement may be customized based at least in part on the browser capabilities of the mobile device).
It would have been obvious, before the effective filing date of the claimed invention, for one of ordinary skill in the art to have modified the teachings of Hradetzky with the aforementioned teachings of Behr with the motivation of producing content suitable to the device (Behr [0034]). Further, one of ordinary skill in the art would have recognized that applying the teachings of Behr to the system of Hradetzky would have yielded predictable results and doing so would have been recognized by those of ordinary skill in the art as resulting in an improved system that would allow for the formatting of content based on the device.
As per claim 3, Hradetzky teaches: transmitting instructions for outputting the digital content, wherein the digital content is output by the at least one product terminal in accordance with the instructions ([0039] When the customer 1 removes the nozzle 12 (block 329), processor 220 outputs a first block of advertisement content to display 232 (block 330) [0041] …The processor then outputs the selected advertisements to the elements of the output unit 230 in the fuel dispenser 10 for output to the customer 1 (block 339). [0022] The processor outputs the selected advertisement to an output unit 230 comprising any known device capable of presenting an advertisement to a customer 1. For example, output unit 230 may comprise a speaker configured to output an audio advertisement… the output unit 230 may, alternatively, be part of the fuel dispenser 10 separate from the advertising unit 200 [0044] …programming structure 400 of the content and commercials displayed during the fuelling process. It will be appreciated that the illustrated programming structure is illustrative and not limiting. The structure is generated by merging update information (content pieces) with advertising, both according to the customer profile, so that it results in a set of personalized content and advertising.).
As per claim 4, Hradetzky teaches: identifying, by the first server, digital content to be output by the at least one product terminal from the content management system based on metadata associated with the digital content ([0004] …advertisements and/or marketing content to a target audience, i.e., persons or specific classes of persons, believed to have an above-average interest in a certain topic, product category, or brand…advertisements and/or marketing content to a clearly defined geographic area, e.g., in local stores, to test and measure the impact of specific marketing initiatives.)
As per claim 5, Hradetzky teaches: receiving, by the first server, additional metadata captured by the at least one product terminal, wherein the at least one product terminal captures the additional metadata in response to outputting the digital content; and adding, by the first server, the additional metadata to the metadata associated with the digital content ([0026] Exemplary embodiments may also use the image capturing unit 210 to capture an image of the customer 1 during the output of the selected advertisement, where the captured image is a reaction image assumed to represent the customer's reaction to the selected advertisement (block 145). For example, the image capturing unit 210 may capture a facial expression of the customer 1 and/or a viewing time of the customer 1 [0042] While the display 232 and/or loudspeakers 238 output the selected advertisements, camera C 216 may capture body movements and/or facial expressions, e.g., shaking head, smile, diverted gaze, etc., indicative of an emotional reaction and/or engagement of the customer 1 (block 340). Further, if the customer 1 looks towards the display 232, camera C 216 can capture images used to monitor the customer's viewing time and reaction (block 340). These details provide valuable market research information to advertisers, which may be delivered to the advertisers. Further, these details may be used to select additional personalized advertisements).
As per claim 6, Hradetzky teaches: wherein the second server location is part of an energy dispensing station ([0017] FIGS. 1 and 2 respectively show an exemplary method 100 and advertising unit 200 for displaying personalized advertisements to a customer 1 fuelling a vehicle 2 (FIG. 7) at a fuel dispenser 10 or other point of sale terminal 10. The elements of the advertising unit 200 may cooperate with existing elements of the fuel dispenser 10, such as a built-in processor 220, customer loyalty card reader 14, credit card reader 16, nozzle sensor 20, etc. (FIG. 4). The technical elements of the advertising unit 200 may be integrated in future models of fuel dispensers 10 or may be installed as a separate technical unit, e.g., as a so-called "fuel top/pump top device" (FIG. 7). The technical elements of the advertising unit 200 may also be combined in a way such that they are retrofitted in other ways onto existing fuel dispensers 10).
As per claim 7, Hradetzky teaches: wherein the content management system stores digital content … ([0021] …a plurality of advertisements stored in memory 240 and/or in a remote database (not shown)).
Although not explicitly taught by Hradetzky, Behr teaches: content management system stores digital content that is unformatted for output by the at least one product terminal ([0036] An advertisement database 34 can be provided to permit the storage of advertisements generated by advertisers 24,26,28 within the advertising network 30 along with each advertiser's preferences for receiving notifications, sending advertisements, billing, etc. The data contained in the advertisement database 34 may include any text, still images, moving images, and/or audio clips associated with each advertisement. [0068] … The data received from the advertisement database 34 and/or third party entity 40,42,44 can then be converted into a format suitable for display on the display screen of the user's mobile device, as indicated generally at block 124. If, for example, the mobile device has an operating system capable of displaying only still images on the display screen, the engine 32 can be configured to format the advertisement to match the display capabilities of the mobile device as well as that specified by the mobile device user's service provider. Conversely, if the user's mobile device is capable of displaying slideshows containing sequences of images, the engine 32 can be configured to feed a slideshow to the user's mobile device containing several images provided by the advertiser 24,26,28 and/or third-party entity 40,42,44).
It would have been obvious, before the effective filing date of the claimed invention, for one of ordinary skill in the art to have modified the teachings of Hradetzky with the aforementioned teachings of Behr with the motivation of producing content suitable to the device (Behr [0034]). Further, one of ordinary skill in the art would have recognized that applying the teachings of Behr to the system of Hradetzky would have yielded predictable results and doing so would have been recognized by those of ordinary skill in the art as resulting in an improved system that would allow for the storage of advertisements/content.
As per claims 8 and 15, these claims recite limitations substantially similar to those addressed by the rejection of claim 1; therefore, the same rejection applies.
As per claims 9 and 16, these claims recite limitations substantially similar to those addressed by the rejection of claim 2; therefore, the same rejection applies.
As per claims 10 and 17, these claims recite limitations substantially similar to those addressed by the rejection of claim 3; therefore, the same rejection applies.
As per claims 11 and 18, these claims recite limitations substantially similar to those addressed by the rejection of claim 4; therefore, the same rejection applies.
As per claims 12 and 19, these claims recite limitations substantially similar to those addressed by the rejection of claim 5; therefore, the same rejection applies.
As per claim 13, this claim recites limitations substantially similar to those addressed by the rejection of claim 6; therefore, the same rejection applies.
As per claims 14 and 20, these claims recite limitations substantially similar to those addressed by the rejection of claim 7; therefore, the same rejection applies.
Response to Arguments
Applicant's arguments filed 9/15/2025 have been fully considered but they are not persuasive.
With respect to the rejection under 35 USC 101, Applicant argues that the claims recite a specific and novel solution.
Examiner respectfully disagrees. 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.”)
With respect to the rejection under 35 USC 101, Applicant argues that the claims are not directed to an abstract idea.
Examiner respectfully disagrees. As per claim 2106.05(a), [i]f it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification does not provide any technical explanation of an improvement to the performance of the computer.
In computer-related technologies, the Examiner should determine whether the claim purports to improve computer capabilities or, instead, invokes computers merely as a tool. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016). In Enfish, the court evaluated the patent eligibility of claims related to a self-referential database. Id. The court concluded the claims were not directed to an abstract idea, but rather an improvement to computer functionality. Id. It was the specification’s discussion of the prior art and how the invention improved the way the computer stores and retrieves data in memory in combination with the specific data structure recited in the claims that demonstrated eligibility. 822 F.3d at 1339, 118 USPQ2d at 1691. The claim was not simply the addition of general purpose computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts. 822 F.3d at 1339, 118 USPQ2d at 1691. In contrast, the present claims only amount to the addition of general purpose computer devices to the abstract idea (i.e., using reference data to retrieve content for display).
With respect to the rejection under 35 USC 101, Applicant argues that the claims are integrated into a practical application.
Examiner respectfully disagrees. Additional elements such as retrieving, by a first server, digital content from a content management system; retrieving, from a second server associated with at least one product terminal of a plurality of product terminals….; sending, to the second server, reference data…; digital content to be output by at least one product terminal of a plurality of product terminals; and causing output, by the first server of the formatted digital content … by transmitting the formatted digital content to the second server responsive to the second server pulling each formatted digital content from the first server… do not yield an improvement in the functioning of the computer itself, nor do they yield improvements to a technical field or technology; further, these additional elements only add insignificant extra-solution activities (data gathering/transmission and display).
With respect to the rejection under 35 USC 101, Applicant argues that the claims amount to significantly more than the abstract idea.
Examiner respectfully disagrees. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).
TLI Communications provides an example of a claim invoking computers and other machinery merely as a tool to perform an existing process. The court stated that the claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner. 823 F.3d at 612, 118 USPQ2d at 1747. The court then turned to the additional elements of performing these functions using a telephone unit and a server and noted that these elements were being used in their ordinary capacity (i.e., the telephone unit is used to make calls and operate as a digital camera including compressing images and transmitting those images, and the server simply receives data, extracts classification information from the received data, and stores the digital images based on the extracted information). 823 F.3d at 612-13, 118 USPQ2d at 1747-48. In other words, the claims invoked the telephone unit and server merely as tools to execute the abstract idea. Thus, the court found that the additional elements did not add significantly more to the abstract idea because they were simply applying the abstract idea on a telephone network without any recitation of details of how to carry out the abstract idea. Similarly, additional elements in the present claims only add high level implementation of abstract steps by a computer/server. The ordered combination adds nothing that is not already present as when the elements are taken individually.
With respect to the rejection under 35 USC 103, Applicant argues that the art of record does not teach the claimed features.
Examiner respectfully disagrees. Applicant’s arguments are directed to newly amended features; additional search has been conducted and the rejection has been updated to address said amendments. See updated Claim Rejections - 35 USC § 103 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2017/0155739 (Ao) – discloses the use of reference data (URL link) to access advertisement content for display ([0018][0036]).
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 ALAN TORRICO-LOPEZ whose telephone number is (571)272-3247. The examiner can normally be reached M-F 10AM-5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Beth Boswell can be reached at (571)272-6737. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALAN TORRICO-LOPEZ/Primary Examiner, Art Unit 3625