DETAILED ACTION
This is in reference to communication received 26 January 2026. Claims 1, 4 – 17 and 19 – 23 are pending for examination. 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, 4 – 17 and 19 – 23 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.
Independent claim 1, representative of independent claims 13 and 17, in part is directed toward a statutory category of invention, the claim appears to be directed toward a judicial exception namely an abstract idea. Claim 1 recites invention directed to transmitting a first-content-item with an associated with a content campaign to a first set of client devices of a first group (a test-group), wherein the first content item is associated with a second-bid-value, and tracking first activity associated with the first set of client devices of the first-group (test-group) are tracked by detecting one or more events generated by client devices; subsequent to receiving a request for content for a client-device from a second-group (control-group), a replacement-item (with an associated first-bid-value) that can be provided in lieu of the requested-content is selected, and bid amount is determined by modifying the second-bid-amount to generate a third-bid-value as a bid value for the replacement-item, wherein third-bid-value is closer to the second-bid-value and the generated third-bid-value is used in the bidding process of the auction. The replacement-item is selected as the the winning item based upon its position relative to other bid values and transmitted to the first-client-device of the second-group (control-group). Second-activity associated with the first-client-device that received the received the replacement-item is tracked by detecting one-or-more events generated in response to the transmitted replacement-item, and one or more actions is performed based upon a relationship between (i) the tracked first activity associated with the first set of client devices of the first group and (ii) the tracked second activity associated with the first client device of the second group, which, pursuant to MPEP 2106.04, is aptly categorized as a method of organizing human activity (i.e. advertising). Therefore, under Step 2A, Prong One, the claims recite a judicial exception.
Represented claims 13 and 17, which do recite statutory categories (machine, product of manufacture, for example), the same analysis as above applies to these claims since the method steps are the same. However, the judicial exception is not integrated into a practical application. These claims add the generic computer components (additional elements) of a system comprising one or more hardware processors and a memory (claim 13), and a non-transitory machine-readable medium comprising instructions that when executed by a processor of a machine cause the machine to perform the method addressed above (claim 17).
The processor, memory, and non-transitory machine-readable medium are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
The claims do 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 the processor, memory, and non-transitory machine-readable medium 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. The claims are not patent eligible.
When taken as an ordered combination, nothing is added that is not already present when the elements are taken individually. When viewed as a whole, the marketing activities amount to instructions applied using generic computer components.
As for dependent claims 4 – 12, 14 – 16 and 19 – 23 dependent on the aforementioned independent claims 1, 13 and 17, and include all the limitations contained therein. These claims do not recite any additional technical elements, and simply disclose additional limitations that further limit the abstract idea with details regarding tracking (e.g., archiving the client activity) of activities associated with client in first-group (e.g., test-group) and second-group (e.g. control-group); analyzing the archived to determine whether there are any relationship(s) between the clients in both the groups; making decision based on transmission-control-data-structure (e.g., parameters associated with content-item), providing content-item to second set of client-devices (e.g., client devices in control-group); determine whether the provided content had a conversion; reusing the invention for additional (advertising campaign); consider content-items with lower bid to and modify their bid values, and determine whether the third-bid-value is the highest-bid (winning-bid). Thus, the dependent claims merely provide additional non-structural (and predominantly non-functional) details that fail to meaningfully limit the claims or the abstract idea(s).
Therefore, claims 1, 4 – 17 and 19 – 23 are not drawn to eligible subject matter, as they are directed to an abstract idea without significantly more.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 4 – 17 and 19 – 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 24 of U.S. Patent No. 11,869,033. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
Application 18/407,180
US Patent 11,869,033
transmitting a first content item associated with a content campaign to a first set of client devices of a first group, wherein the first content item is associated with a second bid value;
transmitting, by one or more servers of an online content system, a first content item associated with a content campaign to a first set of client devices of a first group, wherein the first content item is associated with a second bid value;
tracking first activity associated with the first set of client devices of the first group, wherein the tracking first activity comprises detecting one or more machine-observable events generated by client devices in response to transmission of content items;
tracking, by the one or more servers of the online content system, first activity associated with the first set of client devices of the first group;
receiving, via a network interface, a first request for content from a first client device of a second group;
receiving, by the one or more servers of the online content system, a first request for content from a first client device of a second group;
selecting a first bid value associated with a replacement item to be transmitted in place of the first content item to at least one client device of the second group;
based upon a rate of transmission of content to client devices, determining a bid value for each content item of a first plurality of content items, wherein the determining comprises:
wherein analyzing the pixels of the photographic image includes locating background pixels, the background pixels including pixels that represent a background of the photographic image;
modifying, for the replacement item and independently of modifying bid values of other content items and based upon the second bid value associated with the first content item transmitted to the first set of client devices of the first group, the first bid value associated with the replacement item to be transmitted to the at least one client device of the second group in place of the first content item, to generate a third bid value associated with the replacement item, wherein the third bid value is numerically adjusted toward the second bid value such that the third bid value is closer to the second bid value than the first bid value is to the second bid value, wherein the modifying for the replacement item is performed to compensate for exclusion of the first content item from an auction associated with the first client device of the second group,
modifying, by the one or more servers of the online content system and based upon the second bid value associated with the first content item transmitted to the first set of client devices of the first group, the first bid value associated with the replacement item, that comprises the replacement item to be transmitted to the at least one client device of the second group in place of the first content item, to generate a third bid value associated with the replacement item, wherein the third bid value is closer to the second bid value than the first bid value is to the second bid value,
wherein after the generating the third bid value, the third bid value is included in a first plurality of bid values;
wherein after the generating the third bid value, the third bid value is included in a first plurality of bid values associated with the first plurality of content items.
based upon the first request, performing the bidding process of the auction in association with the first plurality of bid values and using the third bid value to control eligibility and selection of content items for transmission to the first client device, wherein the bidding process of the auction processes the replacement item but does not process the first content item;
selecting the replacement item, as a winning item of the auction, based upon a position of the third bid value relative to one or more other bid values of the first plurality of bid values; and
transmitting, over a network, the replacement item to the first client device of the second group based upon the selecting the replacement item;
tracking second activity associated with the first client device of the second group wherein the tracking second activity comprises detecting one or more machine- observable events generated in response to transmission of the replacement item;
performing, by the processor, one or more actions based upon relationship between (i) the tracked first activity associated with the first set of client devices of the first group and (ii) the tracked second activity associated with the first client device of the second group.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent.
Response to Arguments
Applicant's argument that pending claimed amended invention is eligible for patent under 35 USC 101 because the claimed invention is directed to computer-implemented method that improves the operation of a network content-delivery and auction system, is acknowledged and considered.
However, upon further review, it is deemed that the claimed invention is not eligible for patent under 35 USC 101, and have been responded to in Rejection under 35 USC 101 section.
Applicant's argument that pending claimed amended invention is eligible for patent because cited prior art does not teach modifying, for the replacement item and independently of modifying bid values of other content items and based upon the second bid value associated with the first content item transmitted to the first set of client devices of the first group, the first bid value associated with the replacement item to be transmitted to the at least one client device of the second group in place of the first content item, to generate a third bid value associated with the replacement item, wherein the third bid value is numerically adjusted toward the second bid value such that the third bid value is closer to the second bid value than the first bid value is to the second bid value, wherein the modifying for the replacement item is performed to compensate for exclusion of the first content item from an auction associated with the first client device of the second group, wherein after the generating the third bid value, the third bid value is included in a first plurality of bid values for use in a bidding process of the auction; [and] based upon the first request, performing the bidding process of the auction in association with the first plurality of bid values and using the third bid value to control eligibility and selection of content items for transmission to the first client device, wherein the bidding process of the auction processes the replacement item but does not process the first content item as provided for by independent claim(s) is acknowledged and accepted.
Rejection under 35 USC 103 has been removed in this office action. Therefore, applicant’s arguments are mute.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Reforming-Retail published article “Merchants Should be Using The Scientific Method for Everything” teaches that a merchant can run experiments. The point of the experiment is to prove or disprove. the hypothesis, hopefully as quickly and as cheaply as possible. If the hypothesis is proven correct, then the hypothesis is considered less of a guess because there’s now observable data to back up the claim. If the hypothesis is proven incorrect, a new hypothesis is generated, and the process is run again.
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 Naresh Vig whose telephone number is (571)272-6810. The examiner can normally be reached Mon-Fri 06:30a - 04:00p.
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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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/NARESH VIG/Primary Examiner, Art Unit 3622
May 11, 2026
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