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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on July 17, 2026 has been entered.
Response to Amendment
In light of Applicant's submission filed July 17, 2026, the Examiner has maintained the 35 USC § 101 rejection.
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 abstract idea without significantly more. The claim(s) recite(s) the following limitations that are considered to be abstract ideas:
Claims 1 and 11
performing an ad proxy service at an ad proxy server, including:
receiving a content playing indicator from a client device indicating that the client device is playing content;
in response to the content playing indicator, establishing an ad queue data structure associated with a content stream being played by the client device;
negotiating a plurality of advertisements with one or more ad servers by obtaining ad metadata to fill the ad queue, wherein filling the ad queue comprises obtaining ad metadata until a queue threshold is satisfied, the queue threshold including at least one of a minimum aggregate advertisement duration or a minimum number of advertisements stored in the ad queue;
receiving an ad break indicator from the client device requesting ad metadata for an upcoming ad break in content playing at the client device;
providing the client device with first ad metadata corresponding to a subset of the plurality of advertisements selected from the ad queue to fill the ad break, wherein the first ad metadata is selected from the ad queue in response to the ad break indicator without negotiating additional advertisements with the one or more ad servers for the upcoming ad break; and
automatically refilling the ad queue as advertisements are consumed, including determining that the queue threshold is no longer satisfied and, responsive thereto, obtaining additional ad metadata from the one or more ad servers to restore satisfaction of the queue threshold.Claim 17
obtaining, at a client device from an ad proxy service, advertisements for display during ad breaks in content playing at the client device, including:
sending a content playing indicator to the ad proxy service indicating that the client device has begun playing content;
prior to each ad break, sending a fetch request to the ad proxy service directing the ad proxy service to provide ad metadata corresponding to an advertisement for the upcoming ad break to the client device, wherein the ad metadata is selected by the ad proxy service from an ad queue data structure maintained at the ad proxy service and populated before receipt of the fetch request;
obtaining the advertisement from an ad server based on the ad metadata; and
displaying the advertisement during the upcoming ad break, wherein negotiation of advertisements with the ad server is performed by the ad proxy service independently of timing of the upcoming ad break, and wherein the fetch request retrieves previously negotiated advertisement metadata from the ad queue. The limitations of independent claim 1, 11, and 17 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 receiving content, negotiating a plurality of advertisements, receiving an ad break, providing advertisements and refilling the ad queue as advertisements are consumed. 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 proxy server, client device, memory device, 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 receiving, establishing, negotiating, providing, determining, and refilling (claims 1 and 11) (claim 17), obtaining, sending and displaying) 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 proxy server, ad server, ad queue, client device, memory device, and processor to receiving, establishing, negotiating, providing, determining, and refilling (claims 1 and 11) (claim 17), obtaining, sending and displaying 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. 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).
The dependent claims 2-10, 12-16, and 18-20 appear to merely further limit the abstract and as such, the analysis of dependent claims 2-10, 12-16, and 18-20 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 1-20 are not patent eligible.
Potentially Allowable Subject Matter
Claims 1-20 would be allowable if the applicant were to be able to overcome the, 35 USC 101.
The following is a statement of reasons for the indication of allowable subject matter: In regards to claims 1-20, the closest prior art found by the examiner is the prior art of Ma et al. (US 2014/0150019) which discloses, “A method is provided for performing targeted ad insertion in over-the-top delivery of content by detecting ad replacement opportunities in a live content stream and preparing the content for seamless replacement with segmented HTTP adaptive streaming delivery. The method includes provisions for multi-stage proxy-based segment replacement for targeted ad delivery. The method provided works transparently with standard HTTP adaptive streaming clients. A system is also specified for implementing a client and server content delivery infrastructure in accordance with the provisions of the method.”. However, the Examiner was unable to find prior art for the limitations of claims 1, 11, and 17 that states, the ad queue, wherein filling the ad queue comprises obtaining ad metadata until a queue threshold is satisfied, the queue threshold including at least one of a minimum aggregate advertisement duration or a minimum number of advertisements stored in the ad queue; wherein the first ad metadata is selected from the ad queue in response to the ad break indicator without negotiating additional advertisements with the one or more ad servers for the upcoming ad break; and automatically refilling the ad queue as advertisements are consumed, including determining that the queue threshold is no longer satisfied and, responsive thereto obtaining additional ad metadata from the one or more ad servers to restore satisfaction of the queue threshold..;” Thus claims 1-20 would be allowable over the prior art.
Response to Arguments
Applicant's arguments filed July 17, 2026 have been fully considered but they are not persuasive. The applicant argues in regards to the 101 rejection (Step 2A, Prong 1) by arguing that the claims are not directed to merely providing advertising. The Examiner respectfully disagrees for example the claims recite negotiating advertisements, obtaining advertisement metadata, selecting advertisements for an upcoming advertisement break, and providing advertisement metadata to a client. The summarized limitations still are directed to certain methods of organizing human activity of commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). The Examiner has performed a 101 analysis in view of the recently submitted amendments, therefore being consistent and in alignment with the Examiner’s previously affirmed board decision, the applicant’s claims still recite an abstract idea. Specifically, the Board previously determined that negotiating advertisements and filling an advertisement queue to fill an advertisement break recites elements of an abstract idea. The amendments have not persuasively established a different result than the previously decided Board decision.
The applicant also argues in regards to the 101 rejection that,” These claimed operations are directed to management of a specialized queue data structure and coordinated interactions among networked systems rather than merely to advertising itself.” The Examiner respectfully disagrees while the applicant has labeled the queue data structure as “specialized”, the claims do not recite a technological improvement to the structure or the functionality of the computer itself. It appears that the applicant only labels it as specialized based by the data it contains (e.g. advertisement metadata) and the rules used to determine the filling of said queue data structure. The applicant further argues the 101 rejection (Step 2A, Prong 2), that the claims integrate any alleged exception into a practical application. The applicant states that the claims now define a particular technical solution implemented using a particular data structure and that the claims provide to the technical field of digital advertisement delivery. The Examiner respectfully disagrees 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) An important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome. McRO, 837 F.3d at 1314-15, 120 USPQ2d at 1102-03; DDR Holdings, 773 F.3d at 1259, 113 USPQ2d at 1107. In this respect, the improvement consideration overlaps with other considerations, specifically the particular machine consideration (see MPEP § 2106.05(b)), and the mere instructions to apply an exception consideration (see MPEP § 2106.05(f)). Thus, evaluation of those other considerations may assist examiners in making a determination of whether a claim satisfies the improvement consideration.
It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)). Thus, it is important for examiners to analyze the claim as a whole when determining whether the claim provides an improvement to the functioning of computers or an improvement to other technology or technical field. The Examiner was unable to find in the applicant’s specification that disclose a technical problem and explains the details of an unconventional technical solution. The applicant has merely stated, “these recitations define a particular technical solution implemented using a particular data structure.”, however this is a bare assertion and is insufficient. A claim merely reciting the desired result without the mechanism for accomplishing it does not establish an improvement. The applicant also has not provided any citation to the specification that discloses a technical problem, nor has the applicant provided a citation to the specification that discloses the details of an unconventional technical solution. It is unclear how the asserted “particular data structure” is unconventional technical solution. MPEP2106.05 gives an example of improvement to computer functionality that involved a specific data structure. “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 169”
Therefore, the applicant’s claimed operations of technical solution, technological mechanism, specific operational architecture, and an improvement to digital delivery architecture, does not establish an improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a) Applicant asserts that the claims improve the operation of the advertising delivery infrastructure itself by introducing a persistent queue structure, threshold monitoring, and asynchronous replenishment behavior, the Examiner respectfully disagrees for the reasons stated above. Furthermore, it is not enough to merely have technological components or the claimed arrangement individually and as a whole provides an advantage to advertising delivery infrastructure. But whether the claim reflects an improvement to the functioning of the computer itself, another technology or technical field. The amendment merely further defined when advertisement information is obtained, how much advertisement information maintained, when said information is provided and when additional information is obtained. However, as stated above the claims do not recite a specific improvement in functioning of the computer, technology or technical field.
The applicant further argues the 101 rejection that the claims recite significantly more than any alleged abstract idea, the Examiner respectfully disagrees under Step 2B the additional elements are considered individually and as a ordered combination to determine whether they amount to significantly more than the judicial exception. (SEE MPEP 2106.05 - Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Because this approach considers all claim elements, the Supreme Court has noted that "it is consistent with the general rule that patent claims ‘must be considered as a whole.’" Alice Corp., 573 U.S. at 218 n.3, 110 USPQ2d at 1981 (quoting Diamond v. Diehr, 450 U.S. 175, 188, 209 USPQ 1, 8-9 (1981)). Consideration of the elements in combination is particularly important, because even if an additional element does not amount to significantly more on its own, it can still amount to significantly more when considered in combination with the other elements of the claim. See, e.g., Rapid Litig. Mgmt. v. CellzDirect, 827 F.3d 1042, 1051, 119 USPQ2d 1370, 1375 (Fed. Cir. 2016) (process reciting combination of individually well-known freezing and thawing steps was "far from routine and conventional" and thus eligible); BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) (inventive concept may be found in the non-conventional and non-generic arrangement of components that are individually well-known and conventional) The applicant’s specific arrangement of components and operations that include creation of a queue data structure associated with a content stream; threshold-based management of advertisement metadata entries; servicing of ad-break requests using previously negotiated metadata stored in the queue; replenishment of the queue when threshold conditions are violated; and stream-specific queue replacement when content streams change are not significantly more because its merely provides the details of advertisement delivery and does not improve the functioning of the computer, other technology or technical field. As previously determined by the Board, negotiating advertisements and filling an advertisement queue and providing advertisements from the advertisement queue to fill and advertisement break form part of the recited advertising activity and do not provide an inventive concept. The applicant’s dependent claims8, 16, and 19 merely further define the operation and content of the queue but does not improve the functioning of the computer, other technology or technical field.
Therefore considering the additional elements both individually and as ordered combination, the claims do not recite an inventive concept sufficient to transform the judicial exception into patent eligible subject matter. MPEP 2106.05(a) states 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.
To further clarify if the limitations are not integrated into a practical application and are not considered significantly more that the judicial exception, then the additional elements are considered generic computing components.
Limitations that are indicative of integration into a practical application:
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
The applicant claims do not appear to have any limitations that are indicative of integration into a practical application and thus the 35 U.S.C 101 rejection is maintained.
Conclusion
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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/D.A.P/Examiner, Art Unit 3622
/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622
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