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
In light of Applicant's submission filed July 24, 2025 the Examiner has maintained and updated the 35 USC § 101 rejection.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1, 4-8, 11-15, 18-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,625,748 Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are generally directed toward similar details related to a method and system for identifying recipients of a reward associated with a conversion. The details of obtaining information about a conversion and generating, deploying, and updating the SAEP would be anticipated by the aforementioned U.S. Patent No. 11,625,748.
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, 18-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claim(s) recite(s) the following limitations that are considered to be abstract ideas:
Claims 1, 8, and 15
receiving, by an advertiser computing system, within a closed-loop blockchain, a public key from one or more entities:
generating, by the advertiser computing system, an operational smart attribution evaluation package (SAEP) on the closed-loop blockchain;
transmitting, by the advertiser computing system, within the closed-loop blockchain, a SAEP key to all of the one or more entities:
receiving, a conversion beacon signal indicating downloading of an application, wherein the downloading of the application is indicative of a conversion associated with an online advertisement or a click on the online advertisement
storing, conversion data related to the conversion associated with the online advertisement;
obtaining, , information about a conversion associated with an advertisement;
updating, in response to the conversion beacon signal the SAEP with the conversion associated with the online advertisement;
receiving, within the time-out period, based on the first and second keys an indication that none of the one or more entities is associated with the conversion;
Based on the indication, triggering by modifying at least one of the time-out period and the reward.
Updating the database of the advertiser computing system with the indication that none of the one more entities is associated with the conversion
The limitations of independent claim 1 and 11, 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” because the claims disclose performing advertising, marketing or sales activities or behaviors comprising collecting information, analyzing the information, determining incentives, providing incentives based on satisfying conditions. Accordingly, the claims recite an abstract idea This judicial exception is not integrated into a practical application. In particular the claims recite the additional elements of using an operational smart attribution evaluation package (SAEP), database, closed loop blockchain, computing system, non-transitory computer readable medium, SAEP key, public key, memory and processor. The aforementioned additional generic computing elements perform the steps of the claims at a high level of generality (i.e. As a generic medium performing generic computer function of obtaining, generating, deploying, receiving, updating such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to
amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of a processor to obtaining, generating, deploying, receiving, updating amounts to no more than mere instruction to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of operational smart attribution evaluation package (SAEP), database, closed loop blockchain, computing system, non-transitory computer readable medium, SAEP key, public key, memory and processor amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
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.
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 18-21 appear to merely further limit the abstract and as such, the analysis of dependent claims 4-7, 11-14, and 18-21 results in the claims “reciting” an abstract idea. The claims do not recite additional elements that integrate the exception into a practical application the additional elements do not amount to an inventive concept (significantly more) other than the above-identified judicial exception (the abstract idea). Thus, based on the detailed analysis above, claims 1, 4-8, 11-15, 18-21 are not patent eligible.
Potentially Allowable Subject Matter
Claims 1, 4-8, 11-15, 18-21 would be allowable if the applicant were to be able to overcome the Double Patenting and 35 USC 101 rejections above.
The following is a statement of reasons for the indication of allowable subject matter: In regards to claims 1, 4-8, 11-15, 18-21, the closest prior art found by the examiner is the prior art of Kniaz (US 2008/0010143) which discloses, “obtaining, by an advertiser computing system, information about a conversion associated with an advertisement”; “storing the information about the conversion in an attribution record”; “receiving, within the time-out period, an indication that none of the one or more entities is associated with the conversion” and “updating the attribution record”. However, the Examiner was unable to find prior art for the limitations of claims 1, 8 and 15 that states, “generating, with respect to the conversion, an operational smart attribution evaluation package (SAEP) including a time-out period and a reward; deploying the SAEP on a blockchain to allow one or more entities that displayed the advertisement to claim an association with the conversion; updating the SAEP by modifying at least one of the time-out period and the reward.” Thus claims 1, 4-8, 11-15, 18-20 would be allowable over the prior art.
Response to Arguments
Applicant's arguments filed July 24, 2025 have been fully considered but they are not persuasive. The applicant again argues in regards to the 35 U.S.C 101 rejection by stating, “The office action alleges as drafted, falls within the ‘Certain Method of Organizing Human Activity’ grouping of abstract ideas namely ‘advertising, marketing or sales activities or behaviors’ because the claims disclose performing advertising, marketing or sales activities or behaviors comprising collecting information, analyzing the information, determining incentives, providing incentives based on satisfying conditions.” Applicant respectfully disagrees in view of the claim amendments for at least the following reasons. While the instant application is in the technical field of online advertising, claim 1 recites a protocol scheme of an attribution process (an example shown in FIG. 9), wherein communication between entities involved in the scheme is an encrypted communication within a closed-loop blockchain based on a public key and an SAEP key. Such a protocol scheme does not fall within certain methods of organizing human activities. Thus, claim 1 does not fall within the “Certain Method of Organizing Human Activity” grouping of abstract ideas as alleged by the Office Action.” The Examiner respectfully disagrees having a control scheme does not take it out of Certain Method of Organizing Human Activity, the applicant’s claims use the computer as a tool to perform the abstract idea. Briefly summarizing the applicant’s claims are directed to associating a conversion with the downloading of an application, the conversion is also associated to an advertisement, and associated with a reward. PER MPEP 2106.04(a)(2) An example of a claim reciting advertising is found in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). The patentee in Ultramercial claimed an eleven-step method for displaying an advertisement (ad) in exchange for access to copyrighted media, comprising steps of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad. 772 F.3d. at 715, 112 USPQ2d at 1754. The Federal Circuit determined that the "combination of steps recites an abstraction—an idea, having no particular concrete or tangible form" and thus was directed to an abstract idea, which the court described as "using advertising as an exchange or currency. The aforementioned example is similar in concept (e.g. in exchange for a conversion associating a reward) to the applicant’s claims.
The applicant further argues the 101 rejection that the claimed concepts are integrated into a practical application. The applicant cites [0005, 0045] as a technical problem and unconventional solution, as stated previously “However, the Examiner respectfully disagrees and it appears that the problem stated is a business problem. The problem stated as, “without any supervision or control, to identify the publishers associated with the conversion. Such a process may be configured with a bias to favor certain publishers over others.”, does not disclose a technical problem” The applicant contends that it is not merely a business problem because computer technology is required. However, the cited paragraph just states a business problem and at best uses computer technology to perform the abstract idea. Furthermore, it is not enough to merely require a generic computer or to be implemented via a generic computer does not integrate the abstract idea into a practical application. PER MPEP 2106.05(a) - To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. See MPEP § 2106.05(f) for more information about mere instructions to apply an exception.
The applicant further argues that the recited features improve the technical field of communications among computer entities for evaluating conversions with an online advertisement by using an encrypted communication based on a public key and a SAEP key within a closed loop blockchain. The Examiner respectfully disagrees the applicant has not provided a persuasive argument, nor cited sections of the specification that discloses how the technical field of communications is improved. It appears the applicant merely uses the technical field of communication to use generic computer and generic computer functions to perform the abstract idea. The use of encrypted communications, does not improve the technical field of communication. MPEP 2106.05(f) - (2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. 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). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field
The applicant argues Berkheimer and that the claimed concept described by additional elements in conjunction with the non-additional elements. The 35 USC 101 above explicitly details that the claimed concept, additional element, an ordered combination and as a whole is analyzed/discussed. The applicant also argues that the Office action has failed to properly identify the additional elements, the Examiner respectfully disagrees the additional elements were identified in the 35 USC 101 rejection in alignment with office policy.
The applicant further argues the 101 rejection by stating, “For example, the instant claim as an ordered combination and as a whole does improve computer technology, namely a computer framework (comprising a “closed-loop blockchain” which is a computing element, and an “advertiser computing system” and a “SAEP” implemented on a computer communicating with each other within the closed- loop blockchain using an encrypted communication) for evaluating the sources of conversions associated with different online advertisements (see FIG. 9 as filed as a non-limiting exemplary computer framework). Further, the claim recites, rather than mere generic computer implementation, an unconventional protocol scheme in computer technology - in response to a conversion beacon signal indicating a downloading of an application on a mobile device, an advertiser computing system and a SAEP created by the advertiser computing system communicate with each other within a closed-loop blockchain using an encrypted communication based on a public key and a SAEP key to identify whether any publisher is responsible for the advertisement conversions.” The Examiner respectfully disagrees none of the applicant’s assertions improve the functioning of the computer, another technology or technical field. As stated above the applicant merely uses the computer as tool to perform the abstract idea. Adding 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) Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h) The 35 USC 101 rejection above, identified the following as additional elements - operational smart attribution evaluation package (SAEP), database, closed loop blockchain, computing system, non-transitory computer readable medium, SAEP key, public key, memory and processor. The aforementioned additional elements considered individually and in combination do not appear to improve the functioning of the computer or to any other technology, or technical field. Per MPEP 2106.05(a) - If 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 need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. For example, in McRO, the court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea. McRO, 837 F.3d at 1313-14, 120 USPQ2d at 1100-01. In contrast, the court in Affinity Labs of Tex. v. DirecTV, LLC relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones ineligible. 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016).
For the same reasons above claims 8 and 15 also remain rejected under 35 U.S.C 101. Limitations that are indicative of integration into a practical application are as follows:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
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 Thus for the reasons stated above the 35 U.S.C 101 rejection is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARNELL A POUNCIL whose telephone number is (571)270-3509. The examiner can normally be reached Monday - Friday 10:00 - 6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached at (571) 270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.A.P/Examiner, Art Unit 3622
/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622