pre-AIA
Detailed Action
This Office Action replies to amended claims filed 1/29/26
Amended 30 48 49
Canceled 1-29
New none
Claims 30-49 examined.
Parent Data18297707 filed 04/10/2023 is CON of 17443517, filed 07/27/2021, now U.S. Patent # 11720916
17443517 is CON of 14321385 , filed 07/01/2014, now U.S. Patent # 11107116
14321385 is CON of 13221851 , filed 08/30/2011, now U.S. Patent # 8768770
13221851 Claims Priority from Provisional Application 61378299, filed 08/30/2010
Response to Remarks
Applicant response fully considered but unfortunately not fully persuasive.
Examiner thanks Applicant for the amendment to advance prosecution, and for pointing out where in the Spec the support for those amendments may be found.
101
Amendment 1) mere extra-solution activity MPEP 2106.05g.
As to applicant argument that
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Examiner
The claims as a whole, as presently written, remain targeted marketing, albeit computer implemented. The claims don’t render an improvement (remarks p12 top) but simply invoke a computer as a tool to take the idea and ‘apply it’. The claims are similar to a case Electric Power Group (CAFC 2016)(precedential)(holding ineligible collecting data, analyzing it, displaying certain results).
During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention. The claim places the public on notice of the scope of the patentee’s right to exclude. See, e.g., Johnson & Johnston Assoc. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1052, 62 USPQ2d 1225, 1228 (Fed. Cir. 2002) (en banc). As stated in Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (CAFC 2008):
“We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation”
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 30-49 are rejected per 35 USC 101 as directed to non-statutory subject matter, an abstract idea. The invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements individually and in combination, do not amount to significantly more than an abstract idea.
STEP 1
The claims fall w/i one of the four 101 statutory categories (30-47 process, 48 apparatus, 49 article).
PRONG 1
Applicant claims Certain Methods of Organizing Human Behavior.
Claim 30 (and similar 48, 49) -- except the bracketed additional elements which present little more than the idea -- is directed to an abstract idea.
US Ser 18297707
Electric Power Grp (CAFC 2016)
30 A [computer-implemented] method of attributing transaction events to streamed media instances, the method comprising:
automatically aggregating and validating data feeds for each of a plurality of streamed media instances
determining, by a processor for each media instance of the plurality of streamed media instances, a first demographic profile of a plurality of viewers of the streamed media instance
determining, by the processor for each transaction event among a plurality of transaction events, a second demographic profile of a customer of the transaction event
training, [ by the processor, a neural network ] to determine pairing probabilities by correlating past responses and past streamed media instances to determine one or more attributes for predicting future pairing probabilities , the one or more attributes including distance, viewership, and time differences between responses and streamed media instances
determining, by the [ processor ], for each transaction event,whether each transaction event is attributed to a streamed media instance or an unknown media instance based on one or more attributes of each first demographic profile and each second demographic profile , the attributes including a geographic location, time of response, and demographics
attributing, by the neural network, the transaction event to the streamed media instance based on a determined probability being above a predetermined threshold , or to the unknown media instance based on discrepancies between the first demographic and the second demographic profile
generating a report including a plurality of transaction events that are attributable to one or more streamed events
targeting a future streamed media instance not among the plurality of streamed media instances based on the probability that each transaction event is attributed to a streamed media instance among the plurality of streamed media instances
italics – abstract idea [ generic additional element ]
Collecting info
Analyzing
It
Displaying
Certain
Results
The claim contains data labels, but patent eligibility does not turn on labeling of data.
Media instance data label
First demographic profile data label
Second demographic profile data label
Transaction event data label
Demographic data data label
Unknown media instance data label
The language -- probability that the transaction event is attributed to a streamed media instance among the plurality of streamed media instances is … is descriptive, MPEP 2111.04.
One of ordinary skill in the art would understand that the claim is directed to a math operation on data (with this or that label) for targeted marketing. The claims are directed to attribution and targeted advertising and organizing and manipulating information through mathematical correlations.
The independent claim under its broadest reasonable interpretation covers performance of the limitation in the mind, but for the recitation of generic computer components. Other than reciting ‘processor’, ‘memory’, ‘medium’, ‘computer’, nothing in the claim precludes the steps from being performed in the mind. For example, but for the computer, the mathematical relationship in the context of this claim encompasses user manually calculating, mental calculating using or do so with the aid of pen/paper simulation.
The claim is generally applied (see e.g. Specification ¶ 38-40, 49-51, 74, 224-231)
This abstract idea is not integrated into a practical application. In particular, the claim recites additional element – processor, memory, medium to perform the claim steps. The processor in both steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of providing an interface and detecting a user selection of an option) 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. Applicant uses math to solve the math problem of targeting an advertisement. The steps are computer-implemented, but one could do the calculations with pen and paper, abacus, slide-rule etc and hand someone an advertisement. The additional elements present only a particular technological environment. The additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to a ‘computer implemented’, computer, processor, database -- generic elements for generally applying the idea.
Using a computer to do math does not transform an abstract idea into an inventive concept (SAP America v InvestPic (CAFC 2018), p.12-13 slip opinion. The additional elements are not sufficient to amount to significantly more than the judicial exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. Additionally, the claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions. The limitations (those beyond the abstract idea) do not improve the technical field that the abstract idea limitations invoke. Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers" (citing Bilski 561 US at 610).
Recitation of generic computer components in a claim does not preclude that claim from reciting an abstract idea. The problem solved: track effect to cause and targeted ads based on math (future).
Because the claims are drawn to an abstract idea not integrated into a practical application, the independent claims are ineligible.
The claims 30, 48, 49 are directed to the same abstract idea.
The claims could be performed without a computer, with pencil and paper, or mentally.
Dependent claims
Claim 31-32 describes the idea -- describing data organized and manipulated (transaction event) to determine a number, presenting features which are part of, not apart from, the idea.
Claim 33 describes the idea -- describing data (media instance) organized and manipulated to determine a number, presenting features which are part of, not apart from, the idea.
Claim 34 describes the idea describing attributing, i.e. organizing and manipulating to determine a number, presenting features which are part of, not apart from, the idea.
Claim 36 describes the idea describing data (media instances) used in organizing and manipulating to determine a number, presenting features which are part of, not apart from, the idea.
Claim 37 describes the idea -- describing data (media instances) used in organizing and manipulating to determine a number, presenting features which are part of, not apart from, the idea.
Claim 38 describes the idea -- describing probabilistic attribution.
Claim 39 describes math – comparing.
Claim 40 describes the idea -- describing data (geo-spatial) used in organizing and manipulating to determine a number, presenting features which are part of, not apart from, the idea.
Claim 41 describes the idea, describing supervised machine learning including an idea from math/logic (regression, neural network, decision tree) used in organizing and manipulating.
Claim 42 describes the idea, describing data (geographic area, population, time) used in organizing and manipulating to determine a number -- features which are part of, not apart from, the idea of an algorithm.
Claim 43 describes the idea, describing the algorithm as not attributing based on a reference (threshold) used in organizing and manipulating to determine a number, presenting features which are part of, not apart from, the idea.
Claim 44 46 describes extra-solution activity (report).
Claim 45 describes the idea as attributing based on a reference (threshold) used in organizing and mathematical manipulating, presenting features which are part of, not apart from, the idea. The feature aggregate statistics merely describes data used in the idea.
Claim 47 adds another abstract idea (monitoring, checks, alert) which is similar to organizing human activity because monitoring and checks corresponds to collecting and analyzing information and alert corresponds to notifying for targeted advertising.
Step 2b
The additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to a ‘computer implemented’, computer, processor, database -- generic elements for generally applying the idea. In claim 1, the idea is computer implemented. Claims 48, 49 add a generic processor for performing the idea, an element (like applicant’s other elements beyond the abstract idea computer, database) which one could find a general technical reference, Wiley Encyclopedia of Computer Science and Engineering (2009) which applicant has been provided already in an earlier action. MPEP 2106.5(d)
What there is in the claim beyond organizing behavior can be found by resort to a simple keyword search of generic technical reference, e.g. Wiley Encyclopedia of Computer Science and Engineering (2009) provided to Application 9/20/2018. See Wiley e.g. database, server p.125, server 610 times (at least e.g. p.1982), processor 639 times (e.g. p. 1242-1243), database 1728 times (e.g. p.1253), storage medium (e.g. p.131), computer (3553 times, e.g. p.283), network (at least p.1700-1707), interface (770 times at least p.1700-1707). Such a basic technical reference is something that can reasonably be expected to be ‘hanging on the walls’ of the person of ordinary skill in the art, or wallpaper of her computer desktop. The additional elements alone or in combination are not sufficient to amount to significantly more than the judicial exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond generic linking use of an abstract idea to a particular technological environment. Additionally, the claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are generic activities previously known to the industry. Moreover, these generic limitations do not lead to an integrated practical application because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers"(citing Bilski 561 US at 610). Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to an integrated practical application. The claim limitations do not improve upon the technical field that the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of the computer itself.
Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers"(citing Bilski 561 US at 610).
Moreover, mere recitation of a machine or medium in the preamble does not make a claim statutory under 35 U.S.C. 101, as seen in the Board of Patent Appeals Informative Opinion Ex Parte Langemyr (Appeal 2008-1495). Moreover, mere mention of a piece of a computer or processing device does not confer patentability. Alice Corporation Pty. Ltd. v CLS Bank International ("Alice Corp") 573 US __ (2014). Incorporating the two-step test espoused in its recent decision in Mayo v. Prometheus 566 U.S. ___ (2012), the Court describes a first inquiry as to whether the claims at issue are directed to a patent-ineligible concept. If so, the Court requires a second inquiry as to whether the elements, individually or in combination, “transform” the nature of the claims into a patent-eligible invention. The Court described this second step as a search for an inventive concept, “i.e., an element or combination sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic elements that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea. The additional element merely instruct that the execution of the abreact idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the computer, processor, medium do something to improved hardware functionality.
Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claim limitations do not improve upon the technical field that the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of the computer itself. Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Here, the claims neither improve the technological infrastructure nor provide particular solutions to challenges. Rather, they spell out the steps of an idea using math implemented with generic technology (computer implemented claim 1, database, processor claim 48-49). In addition to these indisputably generic features, Applicant did not invent any of those features (computer, database, processor), and the claims recite them in a manner that produces generic use of these known features. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). When viewed as an ordered combination, the proposed claims recite no more than the sort of generic computer components employed in a customary manner that have been held insufficient to transform an abstract idea into a patent-eligible invention. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016).
The claims fail step two as well.
Claims dependent from the independent claims do not cure the deficiencies and are rejected.
CONCLUSION
Pertinent prior art cited but not relied upon
US 20080114624
US20140100945
US20140316883
US20120054021
US8768770
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 BREFFNI X BAGGOT whose telephone number is (571)272-7154. The examiner can normally be reached M-F 8a-10a, 12p-6p.
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, Waseem Ashraf can be reached at 571-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BREFFNI BAGGOT
Primary Examiner
Art Unit 3621
/BREFFNI BAGGOT/Primary Examiner, Art Unit 3621
Prosecution Insights