DETAILED ACTION
This action is responsive to papers filed on 06/04/2025.
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 .
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 1-21 are rejected under 35 U.S.C. 101 because, while the claims herein are directed to a method and/or system, which could be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes), 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.
Regarding claim 1, the claim recites, in part, causing display of a content item to a viewer; receiving information indicating: an environmental characteristic of an environment associated with the viewer; and a biometric characteristic indicating an emotional state, of the viewer during display of the content item; and causing, based on the information, output of another content item; or recording of the content item.
The limitations, as drafted and detailed above, are directed towards targeted content based on emotional state of a viewer, which falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, and more specifically advertising, marketing or sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements of apparatus (claim 8), one or more processors (claim 8), memory (claim 8), and one or more non-transitory computer-readable media (claim 14). Examiner notes that claim 1 contains no additional elements. The additional technical elements above are recited at a high-level of generality (i.e. as a generic processor performing a generic computer function of causing display, receiving, and causing output) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. There are no additional functional limitations to be considered under prong two.
Accordingly, the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the
judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes).
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using apparatus (claim 8), one or more processors (claim 8), memory (claim 8), and one or more non-transitory computer-readable media (claim 14) to perform the claimed functions amounts to no more than mere instructions to apply the exception using a generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent- eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat' l Ass' n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires a general purpose computer (see Applicant specification Paragraphs 0030-0032); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
The dependent claims 2-7, 9-14, 16-21 appear to merely limit information indicating a causal relationship, receiving specific types of data from a device, recording being based on past biometric characteristics (not a required step due to a Markush grouping in claim 1), tracking of eye focus, specifics of the content item, and causing output of an option to view a different content item, and therefore only limit the application of the idea, and not add significantly more than the idea (i.e. “PEG” Step 2B=No).
The apparatus (claim 8), one or more processors (claim 8), memory (claim 8), and one or more non-transitory computer-readable media (claim 14) are each functional generic computer components that perform the generic functions of causing display, receiving, and causing output, all common to electronics and computer systems.
Applicant's specification does not provide any indication that the apparatus (claim 8), one or more processors (claim 8), memory (claim 8), and one or more non-transitory computer-readable media (claim 14) are anything other than generic, off-the-shelf computer components. Therefore, the claims do not amount to significantly more than the abstract idea (i.e. “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claims 1-21 are not patent eligible.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 8-12, and 15-19 are rejected under 35 U.S.C. 102a1 as being anticipated by Garza (U.S. Pub No. 2014/0325540). Garza teaches a system and method of targeted advertising that includes all of the limitations recited in the above claim.
Regarding claims 1, 8, 15, Garza teaches causing display of a content item to a viewer (Paragraphs 0006-0008); receiving information indicating: an environmental characteristic of an environment associated with the viewer (Paragraphs 0084, 0091); and a biometric characteristic indicating an emotional state of the viewer during display of the content item (Paragraph 0090, “Other responses may include a change to a biometric reading”); causing, based on the information: output of another content item or recording of the content item (Paragraphs 0006-0008, 0091, output of another content item, recording of the content item is not required).
Regarding claims 2, 9, 16, Garza teaches the information further indicates a causal relationship between the environmental characteristic and the biometric characteristic (Paragraphs 0090-0091).
Regarding claims 3, 10, 17, Garza teaches receiving, from wearable devices or cameras, data associated with: a posture of the viewer; a facial expression of the viewer; eye focus of the viewer; sound outputs by the viewer; a heart rate of the viewer; breathing characteristics of the viewer; or a temperature of the viewer (Paragraphs 0025, 0090).
Regarding claims 4, 11, 18, this claim further limits the recitation of “recording of the content item”. However, recording of the content item was included in a Markush grouping and not required to be met with prior art.
Regarding claims 5, 12, 19, Garza teaches tracking eye focus of the viewer, wherein the causing recording of the content item is further based on a determination that the eye focus of the viewer is on a display device outputting the content item (Paragraph 0083).
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.
Claims 6, 13, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Garza (U.S. Pub No. 2014/0325540) in view of Archibong (U.S. Pub No. 2014/0067828).
Regarding claims 6, 13, 20, Garza does not appear to specify a menu comprising an option to record the content item. However, Archibong teaches a menu comprising an option to record the content item (Paragraph 0098). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide an option to record content since the claimed invention is merely a combination of old elements and the combination of each element merely would have performed the same function as it did separately and a person of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claims 7, 14, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Garza (U.S. Pub No. 2014/0325540) in view of Alfishawi (U.S. Patent No. 9,712,587).
Regarding claims 7, 14, 21, Garza teaches using multiple biometric characteristics to cause output of content (Paragraph 0090). Garza does not appear to specify causing output of an option to view a different content item. However Alfishawi teaches causing output of an option to view a different content item (Column 3 Line 58 – Column 4 Line 10). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide an option to view suggested content since the claimed invention is merely a combination of old elements and the combination of each element merely would have performed the same function as it did separately and a person of ordinary skill in the art would have recognized that the results of the combination were predictable.
Response to Arguments
Applicant’s arguments are considered to be addressed by the new and amended grounds of rejection above.
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 MICHAEL BEKERMAN whose telephone number is (571)272-3256. The examiner can normally be reached 9PM-3PM EST M, T, TH, F.
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/MICHAEL BEKERMAN/ Primary Examiner, Art Unit 3682
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