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 following is a FINAL Office action in reply to the Amendments and Arguments received on December 17, 2025.
Status of Claims
Claim 1-3 and 5-10 have been amended.
Claims 11 and 12 have been added.
Claims 1-12 are currently pending and have been examined.
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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 1-12 are drawn to methods. As such, claims 1-10 are drawn to one of the statutory categories of invention (Step 1: YES).
Step 2A - Prong One:
Claim 1 recites the following steps:
A method for conducting a real-time ad auction for a product advertisement of a product available for purchase at a retail environment, said method comprising
in response to receiving, a first deal offer to be presented to a shopper from a manufacturer of a first product via a communications network,
calculating, the server, a first bid as a function of and different from the first deal offer, the first bid to be submitted into the real-time ad auction for placement location of a corresponding first product advertisement relative to other product advertisements, the first deal offer to be provided to the shopper in response to a purchase or acquisition of the first product by a shopper who accesses the first product advertisement and purchases the first product at the retail environment
entering, the first bid associated with the first product advertisement and at least one second bid that is calculated as a function of respective at least one second deal offer, received by the server, associated with respective at least one second product advertisement into the real-time ad auction;
ranking, the first product advertisement amongst the at least one second product advertisement based on results of the real-time ad auction to produce rankings associated with the first and at least one second product advertisement, thereby resulting in a set of ranked product advertisements, the rankings of the set of ranked product advertisements defining placement locations of the ranked product advertisements relative to one another on the display
distributing, the set of ranked product advertisements inclusive of the first product advertisement to the shopper for display relative to one another based on the rankings on the display to enable the shopper to select the first product advertisement for viewing the first deal offer;
in response to the shopper selecting the first product advertisement to view the first deal offer, enabling the first deal offer to be provided to the shopper if the shopper purchases or acquires the first product; and
providing the selected real-time first deal offer to compensate the shopper in response to determining that the shopper selected the first deal offer and purchased or acquired the first product.
These steps, under its broadest reasonable interpretation, describe or set-forth conducting a real time ad auction for a product advertisement of a product available for purchase at a retail environment, which amounts to a “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).” These limitations therefore fall within the "certain methods of organizing human activity" subject matter grouping of abstract ideas.
Alternatively, these steps, under its broadest reasonable interpretation, encompass a human manually (e.g., in their mind, or using paper and pen) conducting a real time ad auction for a product advertisement of a product available for purchase at a retail environment (i.e., one or more concepts performed in the human mind, such as one or more observations, evaluations, judgments, opinions), but for the recitation of generic computer components. If one or more claim limitations, under their broadest reasonable interpretation, covers performance of the limitation(s) in the mind but for the recitation of generic computer components, then it falls within the "mental processes" subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 1 recites an abstract idea (Step 2A - Prong One: YES).
Step 2A - Prong Two:
This judicial exception is not integrated into a practical application. The claim(s) recite the additional elements/limitations of:
a server executing a real-time ad auction
an electronic display of a mobile electronic device of the shopper
a communications network
a computing system
a mobile electronic device
The requirement to execute the claimed steps/functions listed above is equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. This/these limitation(s) do/does not impose any meaningful limits on producing the abstract idea and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claim(s) is/are directed to an abstract idea (Step 2A -Prong Two: NO).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above in "Step 2A - Prong 2", the requirement to execute the claimed steps/functions listed above is equivalent to adding the words "apply it" on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as "significantly more" (see MPEP 2106.05 (f)).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claim(s) amount to significantly more than the abstract idea identified above (Step 2B: NO).
Regarding Dependent Claims:
Dependent claims 3, 4, 6-10, fail to include any additional elements and are further part of the abstract idea as
identified by the Examiner.
Dependent claim 2, 5, 11 and 12 includes additional limitations that are part of the abstract idea except for:
an ad distribution network provider
a communications network
a computing system
server
mobile electronic device
an electronic display of an electronic device
The additional elements of the dependent claims are equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
Prior Art
NAGHDY 2015/0019347 Where the reference discloses “stores can participate in an advertising auction to provide advertisements to users who are viewing a map of the geographic region in which the brick-and-mortar stores are located.”
Response to Arguments
Applicant's arguments filed with respect to the rejection under 35 USC 101 have been fully considered but they are not persuasive.
Applicant Argues: Applicant respectfully submits that the server is meant to receive deal offers that are used to calculate respective bids to be submitted into the real-time ad auction and distribute ranked product advertisements associated with the deal offers for presentation to a shopper.
Examiner respectfully disagrees with Applicant’s argument. As explained in the rejection, the identified feature here is considered to be an “additional element” as it broadly claimed. Such a requirement amounts to a general requirement to perform the “receiving” and “calculating” and “ranking” function (e.g., identifying a simple correlation in data using some basic mathematical approach) to be performed using a general purpose computer. Additional elements are parsed out of the claim language and considered during step 2A prong two and step 2B of the analysis. Parsing out the additional elements during step 2A prong one is proper, and does not mean the Examiner ignored any limitations. “Calculating... is part of the identified abstract idea, which is shown to be an advertising/marketing/sales activity.
Applicant Argues: Moreover, under Step 2A - Prong Two, the claim as a whole provides for a practical
application.
Examiner maintains, in combination, the steps disclose a sequence of operations that include receiving data, calculating a bid for an auction, and distributing the results. The only arguable inventive aspect of this set of steps is the particulars of the information processed. Apart from such particulars as is known of those of ordinary skill , the claimed combination of operations amounts to a generic, routine and conventional sequence of generic, routine and conventional operations of a computer system.
None of the claims (independent or dependent) effects an improvement to another technology or technical field; nor do any of the claims amount to an improvement to the function of a computing system configured to receive bids for an auction.
Furthermore, the Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The Examiner also notes that “both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes (see p. 8 of the October 2019 Update: Subject Matter Eligibility).
These steps can be performed by a human, but for the recitation of generic computing elements. As such the rejection is maintained.
Applicant Argues: Applicant respectfully submits that the claim now recites specific computing and communication devices that are configured to perform specific functions to provide for a practical application such that the method, as a whole, cannot practically be performed in the human mind because executing a real-time ad auction and distribution of advertisements such that placement of the respective advertisements on an electronic display relative to one another based on rankings cannot be performed by a human mind, as provided by Step 2A- Prong One of MPEP 2106.04, subsection II.A 1.
In combination, the steps disclose a sequence of operations that include receiving data; analyze or perform calculations and display the results. The only arguable inventive aspect of this set of steps is the particulars of the information processed. Apart from such particulars as is known of those of ordinary skill , the claimed combination of operations amounts to a generic, routine and conventional sequence of generic, routine and conventional operations of a computer system.
None of the claims (independent or dependent) effects an improvement to another technology or technical field; nor do any of the claims amount to an improvement to the function of a mobile electronic device.
Accordingly, Examiner concludes that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Conclusion
THIS ACTION IS MADE FINAL. 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 RASHIDA R SHORTER whose telephone number is (571)272-9345. The examiner can normally be reached Monday- Friday from 9am- 530pm.
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/RASHIDA R SHORTER/Primary Examiner, Art Unit 3626