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
The amendment filed on February 2, 2026 cancelled no claims. Claims 1-3, 8, and 15 were amended and no new claims were added. Thus, the currently pending claims addressed below are claims 1-20.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 8-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per the “Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications” issued on January 21, 2011 and MPEP 2161.01, the first paragraph of § 112 contains a written description requirement that is separate and distinct from the enablement requirement. To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. The written description requirement of § 112, ¶ 1 applies to all claims including original claims that are part of the disclosure as filed. Claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function.
Independent claim 8 is a computer program product claim comprising one or more computer readable storage media and program instructions collectively stored on the one or more computer readable storage media. Thus, the claim is broad enough to encompass a single computer program product comprising a single computer readable storage media storing program instruction. Independent claim 8, as currently amended, recites that the program instructions navigate to a second website; obtain the targeted content from the content server; determine applications executing on the device; determine whether an application is sharing content; prevent the targeted content from being provided; and determine a period of time for providing a content category of the targeted content. Based on the applicant’s disclosure each of these steps is performed by the client device. Independent claim 8, as currently amended, recite that the program instructions also determine targeted content to be provided by a device with content of the second website, wherein the targeted content is determined by a content server. As such, the program instructions also include steps that must be performed by the content server. This means that the computer program product comprising a single computer readable media includes program instructions executable by the client device and program instructions executable by the client server. The specification does not describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of an invention of a computer program product comprising a single computer readable media includes program instructions executable by the client device and program instructions executable by the client server.
According to paragraphs 85-86, the single computer readable media can collectively include a single storage device which includes the machine-readable code for performing computer operations specified in a given computer program product claim. Thus, the applicant’s disclosure does have support for the broad genus claimed, wherein a single storage device includes code executed by two different devices. However, these limitations are functional limitations describing a genus embodiment of the client device and the content server executing instructions on a single storage device to perform the claimed operations. The examiner has reviewed the applicant’s specification and has not been able to find a single species of the applicant’s invention performing the claimed operations of the client device and the content server executing instructions on a single storage device. There is no disclosure of the processor of the client device executing program instructions stored on a remote storage device. There is no disclosure of the processor of the client server executing program instructions stored on a remote storage device. Without a single example describing either the processor of the client device or the processor of the client server executing program instructions store on a remote storage device, there can be no species of the claim genus in the applicant’s disclosure. Paragraphs 87 and 90 of the applicant’s specification discloses computer readable instructions loaded onto computer 401 to cause a series of operational steps. However, computer 401 is the claimed content server because it contains target content processing code 450. This is a different device than the end user device (i.e., the client device) 403. Likewise, paragraphs 55-59 disclose the content server providing targeted content to a browser of the user device. In these instances, the content server contains instructions stored on a storage device of the content server which are executed to perform providing targeted content. There is no disclosure of the processor of client device 403 executing the computer readable instructions loaded on computer 401. Additionally, paragraphs 60-82 disclose the client device navigating to a second website; obtaining the targeted content from the content server; determining applications executing on the device; determining whether an application is sharing content; preventing the targeted content from being provided; and determining a period of time for providing a content category of the targeted content. However, in paragraphs 60-82, there is no disclosure of the processor of the client device executing instructions stored on a remote storage device to perform these actions. Paragraphs 102-104 of the applicant’s specification disclose the client device comprising a storage component that stores software related to the operation of the device. Thus, the applicant’s specification describe a species of invention the client device executes instructions stored on the client device to perform the steps of navigating to a second website; obtaining the targeted content from the content server; determining applications executing on the device; determining whether an application is sharing content; preventing the targeted content from being provided; and determining a period of time for providing a content category of the targeted content. There is no disclosure of the processor of the client server executing instructions stored on the client device to perform the step of determining targeted content. Paragraph 98 discloses remote server 404. However, remote server 404 is not claimed in the invention and is only used to collect and store helpful and useful data for use by other computers, such as computer 401. Thus, even if added to the claim limitations, would not support the client device and/or the content server executing instructions stored on the remote server to perform operations. Paragraphs 99-101 disclose a public cloud and a private cloud. However, the claims recite neither a public cloud nor a private cloud. Even if the claims were amended to include the public cloud and/or private cloud, there is no support in paragraphs 99-101 for the processor of the client device or the processor of the content server executing instructions stored on the public cloud or private cloud. As such, the only species of performing the claimed steps that can be found in the applicant’s disclosure is one in which a computer program product is loaded onto a computer readable storage medium of the content server which when executed by the processor of the content server performs the step of determining targeted content; and a second computer program product loaded onto a computer readable medium of the client device which when executed by the processor of the client device performs the steps of navigating to a second website; obtaining the targeted content from the content server; determining applications executing on the device; determining whether an application is sharing content; preventing the targeted content from being provided; and determining a period of time for providing a content category of the targeted content. It might be hypothetically possible, assuming the cloud orchestration module 441 is intended to by a hypervisor, for the applicant’s disclosure to support a computer program product stored on a computer-readable medium of a public cloud server which when executed by the processor of the public cloud server performs the steps of: generating a first virtual computing environment and a second virtual computing environment, wherein the first virtual computing environment is a virtual content server and the second virtual computing environment is a virtual client device; transmitting the first virtual computing environment to the content server and the second virtual computing environment to the client device; a processor of the content server executing the received first virtual computing environment; and a processor of the client device executing the second virtual computing environment. Such, an arrangement could be claimed in such a way that the processor of the public cloud server could perform all of the claimed functions. However, these virtual computing environments are typically sandboxed from accessing data or any other information associated with the devices upon which they are executed and the applicant’s disclosure provides no indication that the virtual computing environments can access data local to either the client device or the content server. Thus, the claim public cloud server to include the claimed repository and the claimed dataset, as it could not be included on the client server. It would also require the first virtual environment to determine the target content and not the content server as currently claimed. Additionally, each of the claimed steps being performed by the client device would need to occur within the second virtual environment including, but not limited to, the browser being executed, the obtaining of the targeted content, the displaying of content being shared, the determination of whether the content is being shared; and the providing of the targeted content. Given, the typically sandboxed nature of a virtual computing environment, the first and second virtual computing environments would not be aware of nor be able access data stored on the content server itself, a browser executing on the client device itself or which sites it visits, any data obtained by the client device itself, any applications executing on the client device itself that might be sharing information displayed on the client device itself, or the providing of information for display on the client device itself. As such, hypothetically speaking, there could be a species of invention in which a single computer with a single computer readable media executing a single processor could perform all of the claimed steps but is would require such a significant amendment to the claims that it would likely be restrictable by original presentation. Therefore, it is clear, the specification does not describe the invention in sufficient detail to enable one of ordinary skill in the art to recognize that the inventor invented what is claimed in claim 8.
The test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. A description that merely renders the invention obvious does not satisfy the requirement, Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir. 1997). To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. The written description requirement of § 112, ¶ 1 applies to all claims including original claims that are part of the disclosure as filed. Claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus. The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Computer-implemented inventions are often disclosed and claimed in terms of their functionality. This is because writing computer programming code for software to perform specific functions is normally within the skill of the art once those functions have been adequately disclosed. Nevertheless, for computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into both the sufficiency of the disclosed hardware as well as the disclosed software due to the interrelationship and interdependence of computer hardware and software. When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. Specifically, if one skilled in the art would know how to program the disclosed computer to perform the necessary steps described in the specification to achieve the claimed function and the inventor was in possession of that knowledge, the written description requirement would be satisfied. If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under § 112, ¶ 1 for lack of written description must be made. In the instant case, the claimed invention fails to satisfy the written description requirement because the invention is a genus claim and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function because genus claims that use functional language to define the boundaries of the claimed genus. The claims simply claim a desired result, and does so without describing a species that achieve that result. There is no indication in the specification that demonstrates that the applicant invented species sufficient to support a claim to the functionally-defined genus. There is no disclosure in the applicant’s specification of the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. The examiner has not been able to find a single supported species of the claimed genus where two different client devices with two different processor execute instructions stored on a single computer-readable storage media, wherein each of the client devices performs distinct and different functions. A thorough examination of the specification reveals no complete species of the claimed invention that would allow one of ordinary skill in the art to program the disclosed computers to perform the necessary steps described in the specification to achieve the claimed function or that the inventor was in possession of that knowledge. There are no specific examples of how the claimed genus described using functional language would be used to obtain the desired result. There are no algorithms or flow charts that describe the specific details necessary for implementation of the claimed invention using a single species of the claimed genus. Hence, it is clear that the specification fails to satisfy the written description because it does not sufficiently identify how the invention achieves the claimed functions. An adequate written description of a claimed genus requires more than the generic statement of the inventions boundaries as presented in the applicant’s claim 8. As such, claim 8 is rejected for failing to comply with the written description requirement.
Dependent claims 9-14 fail to correct the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claim 1, as currently amended, requires displaying first content in a browser of the device the browser navigates to a first website and when the browser of the device visits a second website, the content server determines targeted content to be provided to the device with second content of the second website. However, the claim then requires “providing, by the content server, the first content of the first website as the targeted content”. One of ordinary skill in the art would not be able to determine how the applicant’s invention is expected to perform this providing step.
The claimed “the targeted content” has antecedent basis to the determined targeted content. However, neither “the targeted content” claimed, nor the determined targeted content have antecedent basis to the first content of the first website. No where in the claim, is it disclosed how the targeted content is determined such that it is intended to be the first content of the first website that was displayed in the browser. The claim as currently written imposes no restrictions on the manner in which the targeted content is determined. As such, the claim is broad enough to encompass determining targeted content based on any criteria. Given this breadth of determining targeted content, it is impossible for one of ordinary skill in the art to determine how the targeted content provided by the server could possibly be the first content of the first website. As such, claim 1 is indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Dependent claims 2-7 fail to correct the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claims 1, 8, and 20, as currently amended, recite: “wherein the content server includes a repository that stores information regarding uniform resource locators (URLs) that are associated with different targeted content, and wherein the content server includes datasets that include different targeted content that is based on different browsing history”; “wherein the content server includes a repository that stores information regarding websites that are associated with different targeted content, wherein the content server includes datasets that include different targeted content that is based on different browsing history, and wherein the content server includes data store that identifies websites that have been accessed by the device”; and “wherein the content server includes a repository that stores information regarding websites that are associated with different targeted content, wherein the content server includes datasets that include different targeted content that is based on different browsing history, and wherein the content server includes a data store that identifies websites that have been accessed by the device”, respectively. It is impossible for one of ordinary skill in the art to determine the metes and bounds of these limitations.
First, Independent claim 1 requires navigating to a first website and a second website using a browser of a device, and determining targeted content to be provided to the device with content of the second website. The claim URLs do not have antecedent basis to any URL that the first website or second website would be inherently required to have. Additionally, the different targeted content associated with the claimed URLs does not have antecedent basis to the targeted content determined to be provided by the device. As such, one of ordinary skill in the art would not be able to determine whether the applicant intends determined targeted content to be provided by the device with the second content of the second website is intended to be one of the plurality of different targeted content associated with the uniform resource locators or whether, instead, the applicant intend the second website (with its inherent URL) to not be one of the claimed uniform resource locators and the different targeted content to exclude the determined targeted content. Likewise, does the applicant intend the first website (with its inherent URL) to be one of the plurality of URLs associated with different targeted content or does the applicant intend the first website (with its inherent URL) to be excluded from the information regarding the plurality of URLs associated with different targeted content? These same issues arise with the datasets that include different targeted content that is based on different browsing history. The second claimed “different targeted content” does not have antecedent basis to the determined targeted content or the first claimed different targeted content. Thus, does the applicant intend that this claimed “different targeted content” be different than the determined targeted content and/or different from the first claimed different targeted content? Must the determined targeted content not be associated with the stored URLs and not be associated with stored dataset? Must the URLs associated with the first different targeted content not include any targeted content that might be in the dataset, and vice versa? Furthermore, a browsing history is typically a list of URL hyperlinks that a browser has previously visited. Does the applicant intend to require that none of the URLs in the browsing history be included in the URLs that are associated with the first claimed different targeted content? Perhaps, the applicant intends that the determined targeted content be determine from either the different targeted contents associated with the URLs or the different targeted content based on different browsing history, but that the different targeted content associated with the URLs must be different from the different targeted content associated with the different browsing history? Perhaps the applicant instead intends them all to have antecedent basis with each other? Likewise, “the different browsing history” does not have antecedent basis to the first website visited by the browser or the second website visited by the browser. As such, one of ordinary skill in the art would not be able to determine whether the navigation to the first website and/or the navigation to the second website is supposed to be a first browsing history and the dataset must exclude targeted content based on this first browsing history or whether the applicant intends the claimed different browsing history to include such navigations. As such, it is clear that claim 1 is indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Independent claim 8 only compounds the above with regard to claim 1. Claim 8 also requires navigating to a first website before navigating to a second website and to determine targeted content. Instead of storing information regarding URLs, claim 8 requires storing websites associated with different targeted content. However, the claimed “websites” do not have antecedent basis to the first website or the second website that are required to be navigated to, and the different targeted content does not have antecedent basis to the determined targeted content. As such, each of the identified issue regarding the URLs of claim 1 is present with the websites of claim 8. Likewise, each of the identified issues regarding the second claimed different targeted content based on different browsing history is present with the limitations in claim 8. However, claim 8, introduces a new limitation regarding “a data store that identifies websites that have been accessed by the device”. The “websites” of this limitation do not have antecedent basis to the first website navigated to or the second website navigated to. Does the applicant intend such antecedent basis to exist? If so, why did the applicant use the term “navigate” and/or “navigating” when describing the first and second website but use a different term of “accessed” when describing the data store? What difference is scope does the applicant intend between the claimed “different browsing history” that the different targeted content in the dataset is based upon and the claimed websites that have been accessed by the device? Both would appear to be a type of browsing history. Does the applicant intend the websites accessed and different browsing history to be the same thing, exclusive of one another, or some combination of the two. The list of websites that have been accessed do not appear to have any association with the first claimed different targeted content, the second claimed different targeted content, nor the first website navigated to or the second website navigated to? Without any type of association, one of ordinary skill in the art would not be able to determine the purpose of storing any of this information. The determining of targeted content is not limited to any type of criterion or any type of stored data. Thus, what is the purpose of this stored data and what type of association does the applicant intend it to have with regards to determining targeted content. As such, it is clear that claim 8 is indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 15 does not require that any navigation occur prior to the determination of targeted content. However, the first claimed “different targeted content” does not have antecedent basis to the determined targeted content and the second claimed “different targeted content” does not have antecedent basis to the determined targeted content or the first claimed “different targeted content”. One of ordinary skill in the art would not be able to determine whether the applicant intends there to be some type of association between these three apparently different claim elements or whether these three different claim elements are intended to be mutually exclusive of one another. If an association is intended to exist, what is it? If they are mutually exclusive of one another, then the determined targeted content cannot be one of the first claimed different targeted content associated with websites, or the second claimed different targeted content in the datasets. How does the applicant’s invention determine targeted content to ensure that is different from the first claimed different targeted content or the second claimed different targeted content? Likewise, one of ordinary skill in the art would not be able to determine the intended metes and bound between “different browsing history” and “websites that have been accessed”. The terms do not have any type of antecedent basis or clear association between each other. However, when one access a website it is traditionally done using a browser and, as such, one of ordinary skill would expect such an access to be considered a browsing history. Does the applicant intend for websites to be accessed in a different manner such that it is different from the claimed “different browsing history”? Perhaps, the applicant expects the accessing to also be a browsing history and the “different browsing history” be separate and distinct form the accesses in some way? If so, how is such a distinction being made in the applicant’s invention? Finally, the determining of the targeted content does not appear to be limited in any way. It appears that the content server could randomly determine targeted content and then, arguably, provide it to the client device (since, such providing is not explicitly recited in the claim). If this is indeed the case, then what metes and bounds are intended by the limitation ““wherein the content server includes a repository that stores information regarding websites that are associated with different targeted content, wherein the content server includes datasets that include different targeted content that is based on different browsing history, and wherein the content server includes a data store that identifies websites that have been accessed by the device”? Is it intended to limit the scope of the claim in any manner? Is it intended to be non-functional descriptive matter that does not limit the scope of the claimed invention? As currently claimed, it would appear that the entire limitation is non-functional descriptive material that does not limit the scope of the claim because it is not used by the content server to determine the targeted content. However, given the detail used to describe this stored data, one of ordinary skill in the art would expect that the applicant intends it to have some type of function with regards to the content server determining the targeted content but it is impossible to tell what function might be intended by the claim as currently written. As such, it is clear that claim 15 is indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Dependent claims 2-7, 9-14, and 16-20 fail to correct the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
Given, the slightly different scope of each of the dependent claims and the plethora indefinite limitations, it is nearly impossible to determine the intended metes and bounds of independent claims 1, 8, and 18. However, in order to determine whether prior art exists that teach the limitations of the claims, the examiner must at least assign some sort of interpretation that is, at least somewhat, consistent with the limitations of the claims as currently presented. Thus, for the purpose of applying prior art, the examiner is going to interpret claims 1, 8, and 15 as if they recited a computer-implemented method, a computer program product, and a system, respectively, performing the steps of:
navigating to a first website, using a browser of a device, to display a first webpage of the first website;
receiving, by the content server, a copy of the first webpage;
storing, by the content server, the copy of the first webpage in a datastore;
navigating to a second website, using the browser of the device, to display a second webpage of the second website;
accessing, by the content server, the copy of the first webpage;
selecting, by the content server, the copy of the first webpage in the datastore as targeted content;
transmitting, by the content server, the targeted content to the device for display with the second webpage of the second website;
determining, by the device, whether content, on a display of the device, is being shared with one or more additional devices;
determining, by the device, a period of time for providing a content category of the targeted content;
determining, by the device, whether a particular time is included in the period of time based on determining whether the content is being shared; and
selectively providing, by the device, the targeted content based on determining whether the particular time is included in the period of time, wherein selectively providing the targeted content included: providing, by the device, the targeted content when the particular time is included in the period of time, and preventing the targeted content from being provided when the particular time is not included in the period of time.
(The examiner notes that the above interpretation does not appear to have support in the applicant’s disclosure. However, it is only interpretation that can be made for a single invention that embodies the majority of limitation present in each of the independent claims, given that claim 1 requires the first content (e.g., first webpage) of the first website be the targeted content, and that the datastore of claims 8 and 15 storing of copy of the webpage accessed would appear to be the only way in which such a thing could be done.)
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 1-7 are directed to a method which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claim(s) 1 recite(s) the following abstract idea: (Examiner’s note: the one or more additional devices have been included as part of the abstract idea because they are outside the scope of the applicant’s invention and, as such, cannot be considered “additional elements” of the claimed invention)
navigating, by a user, to a first website to display first content of the first website;
navigating, by the user, to a second website;
determining, by a content provider, targeted content to be provided to the user with second content of the second website
storing, by the content provider, information regarding uniform resource locators (URLs) that are associated with different targeted content, datasets that include different targeted content that is based on different browsing history;
providing, by the content provider, the first content of the first web as the targeted content;
determining, by the user, whether content, displayed, is being shared with one or more additional devices
determining, by the user, a period of time for providing a content category of the targeted content;
determining, by the user, whether a particular time is included in the period of time based on determining whether the content is being shared; and
selectively providing, by the user, the targeted content based on determining whether the particular time is included in the period of time, wherein selectively providing the targeted content includes: providing, by the user, the targeted content when the particular time is included in the period of time, and preventing the targeted content from being provided when the particular time is not included in the period of time.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely the “commercial or legal interactions of advertising, marketing, or sales related 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 because the claim only recites the additional elements of:
a device with a display executing software (e.g., browser) (a general-purpose computer with generic computer components) and
a content server (a general-purpose computer).
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, storing, communicating (e.g., transmitting and receiving), and displaying data and, as such, are insignificant extra-solution activities (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
navigating to a first website, using a browser of a device, to display first content of the first website (transmitting a request for a website; receiving the requested website; and/or displaying the requested website);
navigating to a second website using the browser of the device (transmitting a request for a website; receiving the requested website; and/or displaying the requested website);
storing, by the content server, a repository of information regarding uniform resource locators (URLs) that are associated with different targeted content, and datasets that include different targeted content that is based on different browsing history (storing data);
providing, by the content server, the first content of the first web as the targeted content (transmitting data);
selectively providing, by the device, the targeted content based on determining whether the particular time is included in the period of time, wherein selectively providing the targeted content includes: providing, by the user, the targeted content when the particular time is included in the period of time, and preventing the targeted content from being provided when the particular time is not included in the period of time (displaying and/or not displaying data).
When considered individually, the additional elements amount to no more than two general-purpose computers upon which an abstract idea is merely being applied. When considered in combination the additional elements amount to a first general-purpose computer which is a content server that determines content to select and transmit; and a second general-purpose computer performing the remainder of the steps of an abstract idea. Since the content server only performs steps that are expected of any general-purpose content server, and all other significant steps of abstract idea are performed by the second computer, any purported improvement obtained based on the arrangement of devices would appear to be a result of the second general-purpose computer merely applying the abstract idea. Thus, the combination of “additional elements” amount to no more than performing an abstract idea using two general-purpose computers.
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 processing, communicating (e.g., transmitting and receiving), and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because 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 a device with a display executing software (e.g., browser) and a content server (e.g., two general-purpose computer with generic computer components) to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more generic computer components.
“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 one or more general-purpose computers and/or one or more generic computer components (as evidenced from paragraph 40-42, 55 and 88 of the applicant’s specification; and Clearcode, The History of Digital Advertising Technology, August 12, 2020, https://web.archive.org/web/20200812003126/https:// adtechbook.clearcode.cc/history-advertising-technology/, pages 1-3 which discloses that content servers that select and transmit advertisements such as ad servers and websites such as yahoo, as well as, software for performing ad blocking were both well-known by at least 2008 on page 2, line 44 through page 3, line 11); 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. Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, displaying, storing, and/or transmitting data (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
navigating to a first website, using a browser of a device, to display first content of the first website (transmitting a request for a website; receiving the requested website; and/or displaying the requested website);
navigating to a second website using the browser of the device (transmitting a request for a website; receiving the requested website; and/or displaying the requested website);
storing, by the content server, a repository of information regarding uniform resource locators (URLs) that are associated with different targeted content, and datasets that include different targeted content that is based on different browsing history (storing data);
providing, by the content server, the first content of the first web as the targeted content (transmitting data);
selectively providing, by the device, the targeted content based on determining whether the particular time is included in the period of time, wherein selectively providing the targeted content includes: providing, by the user, the targeted content when the particular time is included in the period of time, and preventing the targeted content from being provided when the particular time is not included in the period of time (displaying and/or not displaying data.
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 2-7 appear to merely further limit the abstract idea by further limiting the determining whether the particular time is included in the period of time which is considered part of the abstract idea (Claim 2), adding a step of preventing the targeted content from being shared which is considered part of the abstract idea (Claim 3); further limiting the determining the period of time associated with providing the content category of the targeted content which is considered part of the abstract idea (Claim 4); further limiting the first content category, the second content category, and the first period of time which are all considered part of the abstract idea (Claim 5); further limiting the determining whether the content is being shared with the one or more additional devices which is considered part of the abstract idea (Claim 6); further limiting the particular time and adding the additional steps of determining a classification associated with the first website, providing time information and event information associated with navigating to the first website and navigating to a first website at a second particular time which are all considered part of the abstract idea (Claim 7), and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claims 1-7 are not patent eligible.
Claims 8-14 are directed to a computer program product which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 8-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claim(s) 8 recite(s) the following abstract idea: (Examiner’s note: the one or more additional devices have been included as part of the abstract idea because they are outside the scope of the applicant’s invention and, as such, cannot be considered “additional elements” of the claimed invention)
navigating, by a user, to a second website after navigating to a first website;
determining, by a content provider, targeted content to be provided with content of the second website;
storing, by the content provider, a repository of information regarding websites that are associated with different targeted content; storing datasets that included different targeted content that is based on different browsing history; and storing a data store that identifies websites that have been accessed by the user;
obtaining, from the content provider, the targeted content;
determining, by the user, applications that are executing
determining, by the user, whether at least one of the applications is sharing content being displayed with one or more additional devices; and
selectively preventing, by the user, the targeted content from being provided when the at least one of the applications is sharing content being displayed with the one or more additional devices, and determining a period of time for providing a content category of the targeted content when the at least one of the applications is not sharing content with one or more additional devices.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely the commercial or legal interactions of advertising, marketing, or sales related 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 because the claim only recites the additional elements of:
a device with a display executing software (e.g., browser) (a general-purpose computer with generic computer components) and
a content server (a general-purpose computer).
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, storing, communicating (e.g., transmitting and receiving), and displaying data and, as such, are insignificant extra-solution activities (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
navigating, by a user, to a second website after navigating to a first website (transmitting, receiving and/or displaying data);
storing, by the content provider, a repository of information regarding websites that are associated with different targeted content; storing datasets that included different targeted content that is based on different browsing history; and storing a data store that identifies websites that have been accessed by the user (storing data);
obtaining, from the content provider, the targeted content (receiving data); and
selectively preventing, by the user, the targeted content from being provided when the at least one of the applications is sharing content being displayed with the one or more additional devices (displaying and/or not displaying data).
When considered individually, the additional elements amount to no more than two general-purpose computers upon which an abstract idea is merely being applied. When considered in combination the additional elements amount to a first general-purpose computer which is a content server that determines content to select and transmit; and a second general-purpose computer performing the remainder of the steps of an abstract idea. Since the content server only performs steps that are expected of any general-purpose content server, and all other significant steps of abstract idea are performed by the second computer, any purported improvement obtained based on the arrangement of devices would appear to be a result of the second general-purpose computer merely applying the abstract idea. Thus, the combination of “additional elements” amount to no more than performing an abstract idea using two general-purpose computers.
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 processing, communicating (e.g., transmitting and receiving), and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because 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 a device with a display executing software (e.g., browser) and a content server (e.g., two general-purpose computer with generic computer components) to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more generic computer components.
“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 one or more general-purpose computers and/or one or more generic computer components (as evidenced from paragraph 40-42, 55 and 88 of the applicant’s specification; and Clearcode, The History of Digital Advertising Technology, August 12, 2020, https://web.archive.org/web/20200812003126/https:// adtechbook.clearcode.cc/history-advertising-technology/, pages 1-3 which discloses that content servers that select and transmit advertisements such as ad servers and websites such as yahoo, as well as, software for performing ad blocking were both well-known by at least 2008 on page 2, line 44 through page 3, line 11); 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. Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, displaying, storing, and/or transmitting data (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
navigating, by a user, to a second website after navigating to a first website (transmitting, receiving and/or displaying data);
storing, by the content provider, a repository of information regarding websites that are associated with different targeted content; storing datasets that included different targeted content that is based on different browsing history; and storing a data store that identifies websites that have been accessed by the user (storing data);
obtaining, from the content provider, the targeted content (receiving data); and
selectively preventing, by the user, the targeted content from being provided when the at least one of the applications is sharing content being displayed with the one or more additional devices (displaying and/or not displaying data).
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 9-14 appear to merely further limit the abstract idea by adding the additional steps of determining that the at least one application is not sharing content, determining the period of time associated with providing the content category, determining whether a current time is included and/or is not include in the time period, and selectively providing and/or preventing the providing the target content which are all considered part of the abstract idea (Claims 9-11); adding additional steps of navigating to a website and receiving a request to provide content which are considered part of the abstract idea (Claim 12); further limiting the determining the period of time associated with providing the content category of the targeted content which is considered part of the abstract idea (Claim 13), adding a additional step of obtaining information regarding different content, determining the first and second content category, and determining the first and second period of time which are all considered part of the abstract idea (Claim 14), and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No)..
Thus, based on the detailed analysis above, claims 8-14 are not patent eligible.
Claims 15-20 are directed to a system which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 15-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claim(s) 15 recite(s) the following abstract idea: (Examiner’s note: the one or more additional devices have been included as part of the abstract idea because they are outside the scope of the applicant’s invention and, as such, cannot be considered “additional elements” of the claimed invention)
determine, by a content provider, targeted content to be provided for display;
storing, by the content provider, a repository of information regarding websites that are associated with different targeted content, datasets that include different targeted content that is based on different browsing history, and a data store that identifies websites that have been accessed by the user;
determine, by a user, applications currently being executed;
determine, by a user, whether at least one application of the applications is an application is sharing displayed content with one or more additional devices, and
selectively preventing, by the user, the targeted content from being provided for display when the at least one application is sharing displayed content with the one or more additional devices, and determine a period of time for providing a content category of the targeted content when the at least one application is not sharing displayed content with the one or more additional devices.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely the commercial or legal interactions of advertising, marketing, or sales related 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 because the claim only recites the additional elements of:
a device with a display executing software (e.g., browser) (a general-purpose computer with generic computer components) and
a content server (a general-purpose computer).
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, storing, communicating (e.g., transmitting and receiving), and displaying data and, as such, are insignificant extra-solution activities (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
storing, by the content provider, a repository of information regarding websites that are associated with different targeted content, datasets that include different targeted content that is based on different browsing history, and a data store that identifies websites that have been accessed by the user (storing data);
selectively preventing, by the user, the targeted content from being provided for display when the at least one application is sharing displayed content with the one or more additional devices, and determine a period of time for providing a content category of the targeted content when the at least one application is not sharing displayed content with the one or more additional devices (not displaying and/or displaying data).
When considered individually, the additional elements amount to no more than two general-purpose computers upon which an abstract idea is merely being applied. When considered in combination the additional elements amount to a first general-purpose computer which is a content server that determines content to select and transmit; and a second general-purpose computer performing the remainder of the steps of an abstract idea. Since the content server only performs steps that are expected of any general-purpose content server, and all other significant steps of abstract idea are performed by the second computer, any purported improvement obtained based on the arrangement of devices would appear to be a result of the second general-purpose computer merely applying the abstract idea. Thus, the combination of “additional elements” amount to no more than performing an abstract idea using two general-purpose computers.
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 processing, communicating (e.g., transmitting and receiving), and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because 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 a device with a display executing software (e.g., browser) and a content server (e.g., two general-purpose computers with generic computer components) to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more generic computer components.
“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 one or more general-purpose computers and/or one or more generic computer components ((as evidenced from paragraph 40-42, 55 and 88 of the applicant’s specification; and Clearcode, The History of Digital Advertising Technology, August 12, 2020, https://web.archive.org/web/20200812003126/https:// adtechbook.clearcode.cc/history-advertising-technology/, pages 1-3 which discloses that content servers that select and transmit advertisements such as ad servers and websites such as yahoo, as well as, software for performing ad blocking were both well-known by at least 2008 on page 2, line 44 through page 3, line 11); 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. Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, displaying, storing, and/or transmitting data (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
storing, by the content provider, a repository of information regarding websites that are associated with different targeted content, datasets that include different targeted content that is based on different browsing history, and a data store that identifies websites that have been accessed by the user (storing data);
selectively preventing, by the user, the targeted content from being provided for display when the at least one application is sharing displayed content with the one or more additional devices, and determine a period of time for providing a content category of the targeted content when the at least one application is not sharing displayed content with the one or more additional devices (not displaying and/or displaying data).
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 16-20 appear to merely further limit the abstract idea by adding the additional steps of determining that the at least one application is not sharing content, and determining the period of time which are both considered part of the abstract idea (Claim 16), adding the additional steps of determining whether a current time is included, selectively providing the target content which are both considered part of the abstract idea (Claim 17); further limiting the first period of time and performing the additional steps of determining that the target content is to be provided during a first or second time period based on the content category which are all considered part of the abstract idea (Claim 18); adding an additional step of obtaining information, determining the first and second content category, and determining the first and second period of time which are all considered part of the abstract idea (Claim 19); and further limiting the period of time and adding the additional step of determining that the content is to be provided or is not to be provided during the first and/or second period of time which is considered part of the abstract idea (Claim 20), and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No)..
Thus, based on the detailed analysis above, claims 15-20 are not patent eligible.
Possible Allowable Subject Matter
Claims 1-20, as interpreted in the 112(b) section above, would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 112(a) rejections, the 112(b) rejections and the 35 USC 101 rejection above.
The following is a statement of reasons for the indication of allowable subject matter for claims 1-20: The examiner has found prior art (see Fu: WO2018215690 and Wachtfogel et. al.: US2002/0138831) that discloses a computer implemented method for providing targeted content, the computer implemented method comprising
navigating to a first website, using a browser of a device, to display first content of the first website;
navigating to a second website using the browser of the device;
determining, by a content server, targeted content to be provided by the device with second content of the second website wherein the content server determines the targeted content based on a dataset that include targeted content that is based on browsing history or based on a data store that identifies websites that have been accessed by the device;
obtaining the targeted content;
determining whether content, on a display of the device, is being shared with one or more additional devices;
determining a period of time for providing a content category of the targeted content;
determining whether a particular time is included in the period of time based on determining whether the content is being shared; and
selectively providing the targeted content based on determining whether the particular time is included in the period of time, the targeted content being provided when the particular time is included in the period of time, and the targeted content being prevented from being provided when the particular time is not included in the period of time.
However, the examiner has been unable to find prior art, that would be obvious to combine with the Fu and Wachtfogel references, which discloses that the content server receives a copy of the first webpage, selects the first webpage as targeted content to be displayed with the second webpage of the second website; and the device displaying a second webpage of the second website along with a copy of the first webpage of the first website.
Thus, claims 1-20 contain subject matter that would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 112(a) rejections, the 35 USC 112(b) rejections, and the 35 USC 101 rejections above.
Response to Arguments
Applicant's arguments filed February 2, 2026 have been fully considered but they are not persuasive.
The applicant’s arguments with regard to the 35 USC 101 rejection of the claims under Step 2a, Prong 2 are not convincing. While the examiner agrees that both the client device and the content server are positively recited in the claims, as indicated in the 101 rejection above, the content server merely selects targeted content which is intended to be provided to the client device. This, is the only significant step that the content server is required to perform. A content server selecting content to serve is what every traditional content server normally does. Thus, every other significant step of the abstract idea is being performed by the client device. As such, any purported improvement, obtained by practicing the claimed invention is not rooted in the arrangement of devices, but instead is rooted in the parts of the abstract idea which are merely being applied by the client device. Improvements of this nature are improvements to an abstract idea which is merely applied using a general-purpose computer (i.e., the client device), which are improvements in ineligible subject matter (see SAP v. Investpic decision: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract; as well as: MPEP 2106.05(a) which states “It is important to note, the judicial exception alone cannot provide the improvement” and MPEP 2106.05(a)(II) which states “However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology”. Unlike the claims of BASCOM which positively recited both the client device and the remote ISP server, wherein the client device generating network access requests for each individual controlled access network accounts which required the client device to associate each individual with a specific individual controlled access network account, and provide this information to the remote ISP server along with the access request and the remote ISP server providing Internet-content filtering in a manner that can be customized for the person attempting to access such content. As such, the claims in the BASCOM decision required both the client device and the remote ISP server to perform at least one significant step, and it was the significant steps perform by each device that resulted in the improvement. In contrast the claims of the instant invention do not require the content server to perform a significant step in a manner different from a traditional content server, and the client device performs all significant steps that result in the improvement. Thus, the instant claims are closer to the part of the BASCOM decision where remote ISP filtering was known, when it is confined to an inflexible one-size-fits-all scheme, in that the remote ISP filter merely performs content filtering and, as such, would not have recited an improvement over the way such remote ISP filtering is performed. The instant claims merely require the content server to determined targeted content, which is what content servers typically do. The argued improvements recited in paragraphs 37 and 38 are not based on the arrangement of devices, but instead on the portions of the abstract idea being performed by the client device. After, arguably, receiving the targeted content (since no such receiving step is positively stated in the claims), the claim requires the client device determines that targeted content is not to be displayed and the client device that determines the current time is including in a period of time. As such, it is clear that any purported improvement is rooted solely in the part of the abstract idea that is merely being applied by client device. Any purported improvement with regard to the computing resources of the client device and/or the client device repeatedly and/or successively de-allocating and re-allocating such resources is a function solely of the abstract idea which is merely being applied by the client device. As currently claimed, the targeted content would still be transmitted to the client device for display right after its selection, thus, the server would still consume that same amount of computing resources it normally would when determining targeted content, the network resources would still be the same as the targeted content would still be provided. There is nothing in the claim that prevents the content server from transmitting the targeted content to the client device, the claimed providing of targeted content being performed by client device would occur after the targeted content is received, but before the client device determines to provide it on the display. As such, there is nothing in the claims that could be construed as being an improvement based on the arrangement of the devices. Therefore, any purported technical solution recited in the claims is a technical solution rooted in the abstract idea itself which is merely being applied by the client device, which is an improvement to an abstract idea and, as such, an improvement ineligible subject matter. In order for a technical solution to overcome a 35 USC 101 rejection it must be a technical solution that is rooted in the “additional elements” of the claims in a manner other than merely applying the abstract idea using a general-purpose computer. “Additional elements” are defined as those elements that are not part of the abstract idea itself. Thus, the applicant’s arguments are not convincing and the rejections have been maintained.
The examiner notes that it is the claims as interpreted by the examiner in the 112(b) rejections that are not taught by the prior art. However, the examiner notes that the applicant’s disclosure does not support the claims as interpreted. Thus, it is possible that hypothetical future amendments to the claims that corrects the 35 USC 112(a) issues and the 35 USC 112(b) issues could result in a new 35 USC 103 rejection, should there be prior art that teaches the claims as amended in the future. For example, if the examiner were to consider the “wherein the content server….” limitation of claims 1, 8, and 15 to be non-functional subject matter that does not limit the scope of the claims because it is not used in the determining of the targeted content which is a valid interpretation of the limitations of the claims as currently written, and the applicant would change the limitation of claim 1 such that the first content of the first website is not required to be the targeted content as currently claimed, then the prior art of Fu and Wachtfogel would be usable to reject the claims as indicated in both the statement of reason for indicating allowable subject matter in the Office Action dated October 1, 2025 and the statement of reason for indicating allowable subject matter in the instant rejection, because it would either remove the limitations found to be allowable over the prior art or make those limitation non-limiting to the scope of the invention and, as such, not required to be taught by the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Griffin et al. (US 2010/0223135) which discloses providing work/business-related advertisements (professional content category) during the time of day that the person is at work and home/entertainment-related advertisement.
Weldemariam et al. (US 2020/0090210) which discloses receiving promoted content for display at the primary device; detecting and profiling a primary user on a primary device; detecting and profiling one or more secondary users on one or more secondary devices predicting a user's behavior with respect to the promoted content by estimating the user's context and preferences, using a neural network; and in response to the prediction of the user's behavior, automatically demoting the promoted content, wherein promoted content is intended for display in a content sharing application. The demoted content may have a temporal aspect where the demoted content is not displayed until a determine period of time as passed.
Chatterjee et al. (US 2018/0359207) which discloses suppressing the display of content on user devices based on user device activity such as when the user device is in a screen sharing mode, wherein suppression mode is enabled by detecting that the user device is in a screen sharing mode, wherein suppressed content is later retrieved for display on the user device.
Andersen et al. (US 2008/0133501) which discloses filtering information before displaying it in a collaborative workspace, wherein incoming information is classified into classification and a relevancy of the incoming information is determined. Only incoming information that is deemed to be relevant or related to the content and topics of the workspace are displayed.
Bhayani et al. (US 2023/0117924) which discloses automatically obscuring a portion of a view shared during a real-time screen sharing session, wherein a view displayed by a first user system to a first user is received, a portion of the view not to be shared is identified, and obscuring the portion of the view to generate a shared view.
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 JOHN W VAN BRAMER whose telephone number is (571)272-8198. The examiner can normally be reached Monday-Thursday 5:30 am - 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Spar Ilana can be reached on 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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/John Van Bramer/Primary Examiner, Art Unit 3622
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