DETAILED ACTION
Status of Claims
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Accordingly, Applicant's filed response has been entered.
This is a Non-Final office action in response to communication received on April 07, 2025. Claims 21-23, 25-26, and 28-40 are pending examined herein.
Claim Rejections - 35 USC § 101
2. 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 21-23, 25-26, and 28-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Next using the 2019 Revised Patent Subject Matter Eligibility Guidances (hereinafter 2019 PEG) the rejection as follows has been applied.
Under step 1, analysis is based on MPEP 2106.03, Claims 21-23 and 25-26 are a method; claims 28-34 are a method; and claims 35-40 are a system. Thus, each claim 21-23, 25-26, and 28-40, on its face, is directed to one of the statutory categories (i.e., useful process, machine, manufacture, or composition of matter) of 35 U.S.C. §101.
Under Step 2A Prong One, per MPEP 2106.04, prong one asks does the claim recite an abstract idea, law of nature, or natural phenomenon? In Prong One examiners evaluate whether the claim recites a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. While the terms "set forth" and "described" are thus both equated with "recite", their different language is intended to indicate that there are two ways in which an exception can be recited in a claim. For instance, the claims in Diehr, 450 U.S. at 178 n. 2, 179 n.5, 191-92, 209 USPQ at 4-5 (1981), clearly stated a mathematical equation in the repetitively calculating step, and the claims in Mayo, 566 U.S. 66, 75-77, 101 USPQ2d 1961, 1967-68 (2012), clearly stated laws of nature in the wherein clause, such that the claims "set forth" an identifiable judicial exception. Alternatively, the claims in Alice Corp., 573 U.S. at 218, 110 USPQ2d at 1982, described the concept of intermediated settlement without ever explicitly using the words "intermediated" or "settlement."
Next, per 2019 PEG, to determine whether a claim recites an abstract idea in Prong One, examiners are now to: (I) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (II) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 PEG. If the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I, analysis should proceed to Prong Two in order to evaluate whether the claim integrates the abstract idea into a practical application.
(I) An abstract idea as recited per abstract recitation of claims 21-23, 25-26, and 28-40 [i.e. recitation with the exception of additional elements as noted and analyzed under step 2A prong two and step 2B inquiries below, i.e. under step 2A prong one the Examiner considered claim recitation other than the additional elements (which once again are expressly noted below) to be the abstract recitation] (II) is that of providing customized advertisements (in a technical, network environment, such as the Internet, on one or more websites comprising one or more webpages, see at least as-filed spec. para. [0035]-[0036], which will be discussed under step 2A prong two and step 2B inquiries) by utilizing one or more identifiers and coordinating activities among entities such as management entity, bidding process provider, and a client to fulfill an advertisement call or request which originates from client visiting a publisher which is certain method of organizing human activity.
The phrase "Certain methods of organizing human activity" applies to fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Here legal obligation based on contractual agreement between entity and the management company; and the entity would be required to contact the management company so that tailored or customized advertisement can be provided to a client visiting the entity that is associated with the management company. Further, see MPEP 2106.04(a)(2) II. A-C.
Therefore, the identified limitations fall within the subject matter groupings of abstract ideas enumerated in Section I of 2019 PEG, thus analysis now proceeds to Prong Two in order to evaluate whether the claim integrates the abstract idea into a practical application.
Under Step 2A Prong Two, per MPEP 2106.04, prong two asks does the claim recite additional elements that integrate the judicial exception into a practical application? In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. If the additional elements in the claim integrate the recited exception into a practical application of the exception, then the claim is not directed to the judicial exception (Step 2A: NO) and thus is eligible at Pathway B. This concludes the eligibility analysis. If, however, the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception (Step 2A: YES), and requires further analysis under Step 2B (where it may still be eligible if it amounts to an ‘‘inventive concept’’).
Next, per 2019 PEG, Prong Two represents a change from prior guidance. The analysis under Prong Two is the same for all claims reciting a judicial exception, whether the exception is an abstract idea, a law of nature, or a natural phenomenon. Examiners evaluate integration into a practical application by: (I) Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (II) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit.
Accordingly, the examiner will evaluate whether the claims recite one or more additional element(s) that integrate the exception into a practical application of that exception by considering them both individually and as a whole.
The claim elements in addition to the abstract idea, i.e. additional elements, as recited in claims 21-23, 25-26, and 28-40 at least are a management computing system (user data gatherer that partners with advertisers and provides custom ads based on user data); one or more client computing devices comprising a web browser utilized for HTTP request which is fulfilled by providing a HTML document or a webpage hosted by a third party web server, HTTP request comprising identifiers such as log-in and visitor identifier e.g. cookie, computer footprint, etc.; network such as the Internet, to send, receive or transmit requests and fulfilling request by transmitting customized advertisements of a winning bidder (advertiser/entity associated with management) of an auction conducted by a remote advertisement server which routes the ad call to management to retrieve a custom ad from the management entity in real-time.
As would be apparent to a person with ordinary skill, the foregoing additional elements are generic. They are simply utilized as generic tools to implement the abstract idea or plan as "apply it" instructions (see MPEP 2106.05(f)). The additional elements are generic as they are described at a high level of generality, see at least as-filed spec. para. [0036]-[0047], [0063], and [0076]-[0087]. Further, the claims appear to be implementing a commercial solution to a commercial problem of providing customized ads, see at least as-filed spec. para. [0002]-[0003]; [0040]; [0043]-[0044]; [0047] - not a technical one.
Here, the management entity receives data when user visits management entity's website such as log-in and visitor identifier. This collected information is utilized by the management entity such that when an entity partnered/associated with management entity has a visitor, management entity is able to provide customized ads based on the target client/user's data i.e. tailoring content based on information about the user (Int. Ventures v. Cap One Bank ‘382 patent) to implement an abstract idea in a technical environment. However, this is a business arrangement among entities performing their assigned roles in a technical environment such as network based environment e.g. Internet. Thus, the abstract idea is intended to be carried out in a technical environment to coordinate activities among different entities connected via a network such as the Internet, however the additional elements fail to go beyond generally linking the use of an abstract idea to a particular technological environment (see MPEP 2106.05(h)), note receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network) - similarly here HTTP requests are received and custom ads are transmitted across a network such as the Internet.
Viewed as a whole, these additional claim element(s) do not one or more additional elements (prong two) to integrate the abstract idea (prong one) into a practical application. Thus they fail to provide any an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field; an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim; an additional element effects a transformation or reduction of a particular article to a different state or thing; and an additional element applies or uses 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.
Thus, as it applies to claims 21-23, 25-26, and 28-40, the abstract idea of providing customized advertisements by utilizing one or more identifiers and coordinating activities among entities such as management entity, publisher, and a client to fulfill an advertisement call or request which originates from client visiting a publisher, which is certain method of organizing human activity - fails to integrate the additional elements when considered both individually and as a combination or as a whole, into a practical solution.
Therefore, the additional elements do not integrate the abstract idea into a practical application, accordingly the claims are directed to the abstract idea, and require further analysis under Step 2B.
Under step 2B, per MPEP 2106.05, as it applies to claims 21-23, 25-26, and 28-40, the Examiner will evaluate whether the foregoing additional elements analyzed under prong two, when considered both individually and as a whole provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). The abstract idea of providing customized advertisements by utilizing one or more identifiers and coordinating activities among entities such as management entity, publisher, and a client to fulfill an advertisement call or request which originates from client visiting a publisher, which is certain method of organizing human activity - has not been applied in an eligible manner. The claim elements in addition to the abstract idea are generic as they are described at a high level of generality (Id. or note step 2A prong two). As such, the abstract idea is intended to be merely carried out in a technical environment, however fail to contain meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.
Next, in view of compact prosecution only further analysis per the Berkheimer Memo dated April 19, 2018 is being conducted as the additional elements here would be readily apparent as generic to a person having ordinary skill in the art (hereinafter PHOSITA), in other words analysis is similar to Berkheimer claim 1 and not claims 4-7 where there was "a genuine issue of material fact in light of the specification," nevertheless the Examiner finds the additional elements when considered both individually and as a combination to be well-understood, routine or conventional and expressly supports in writing as follows:
(A) The Examiner also provides citation to publications that demonstrate well-understood, routine, conventional nature of internet based tracking of a user across the web or internet by hashing and associating identifiers with the user, which aids in user specific data gathering or indexing to provide customized or personalized content as follows:
(i) Network such as Internet based tracking technology to gather user data:
(a) The Examiner relies on a NPL Titled "Web Search - Multidisciplinary Perspectives" by Amanda Spink and M. Zimmer, hereinafter Zimmer, to demonstrate that the additional elements are widely prevalent or in common use in the relevant field to again establish the well-understood, routine, conventional nature of the additional element(s) - see Zimmer Tables 6.1, 6.2, and pages 84-91 further note:
- pgs. 86-87 note "...Attaining such perfect recall requires search engine providers to collect as much information about their users as possible. To accomplish this, Google, like most Web search engines, relies on three technical strategies in order to capture the personal information necessary to fuel the perfect recall: the maintenance of server logs, the use of persistent Web cookies, and the encouragement of user registration.
Maintained by nearly all Websites, server logs help Website owners gain an understanding of who is visiting their site, the path visitors take through the Website’s pages, which elements (links, icons, menu items, etc.) a visitor clicks, how much time visitors spend on each page, and from what page visitors are leaving the site. In other words, a Website owner aims to collect enough data to reconstruct the entire “episode” of a user’s visit to the Website (Tec-Ed 1999). Google maintains detailed server logs recording each of the 100 million search requests processed each day (Google 2005c). While the exact contents are not publicly known, Google has provided an example of a “typical log entry” for a user who searched for the term “cars” (Google 2005b):
123.45.67.89 - 25/Mar/2003 10:15:32 - http://www.google.com/search?q=cars - Firefox
1.0.7; Windows NT 5.1 - 740674ce2123e969
In this sample entry, 123.45.67.89 is the IP address4 assigned to the user by the
user’s Internet service provider, 25/Mar/2003 10:15:32 is the date and time of the query, http://www.google.com/search?q=cars is the requested page, which also happens to identify the search query, “cars,” Firefox 1.0.7; Windows NT 5.1 is the browser and operating system being used, and 740674ce2123a969 is the unique cookie ID5 assigned to this particular browser the first time it visited Google.";
- pg. 88-90 note "Even in the absence of such privacy-protecting measures, cookies and IP addresses are linked only to a particular Web browser or computer, not necessarily a particular user. Neither the browser passing the cookie nor the Web server receiving it can know who is actually using the computer, or whether multiple users are using the same machine. Reliance on IP addresses and cookies might not provide necessary differentiation between users, limiting the extent of the “perfect recall” necessary for Google to deliver the most relevant results and advertising.
To overcome such limitations, Website owners frequently urge users to register with the Website and login when using the services (Ho 2005: 660–661; Tec-Ed 1999). When a user supplies a unique login identity to a Web server, that information, along with the current cookie ID is stored in each log file record for that user’s subsequent activity at the site. By tying aspects of the site’s functionality to being logged in, the user is compelled to accept the Web cookie for that session. Even if the user deletes the cookie or changes her IP address at the end of the session, by logging in again at the next visit, a consistent record for the user in the server log can be maintained. Logging in with a unique user name similarly reduces the variability of multiple or shielded IP addresses. Further, any personally identifiable information provided during the registration process, such as age, gender, zip code, or occupation, can be associated with the user’s account and server log history, providing a more detailed profile of the user.
In early 2004, Google started experimenting with products and services that required users to register and login, including personalized search results, e-mail alerts when sites about a particular topic of interest are added to Google’s index (Kopytoff 2004). Soon afterward, Google introduced products and services that required the creation of a Google Account, such as Gmail, Google Calendar, and the Reader service to organize news feeds. Other Google services can be partially used without a Google Account, but users are encouraged to create an account in order to maximize its benefits or access certain features. Examples include Google Video, with a Google Account required for certain premium content, and Book Search, in which a Google Account helps control access to copyright -protected text. When Google acquires external products and services with their own login protocols, migration to Google Accounts is typical, as the case with Blogger or Dodgeball. Internally developed products that previously utilized unique logins such as Orkut have also migrated to the universal Google Account.
Google’s encouragement of the creation of Google Accounts, combined with its use of persistent Web cookies, provides the necessary architecture for the creation of detailed server logs of users’ activities across Google’s various products and services, ranging from the simplest of search queries to minute details of their personal lives. While the full extent of the data capturable by Google’s infrastructure is difficult to estimate, Table 6.2 identifies some of the typical forms of personal information potentially stored within Google’s servers," and Table 6.2; and
- pg 91 "The result is a robust infrastructure arming Google with the ability to capture and aggregate a wide array of personal and intellectual information about its users, extending beyond just the keywords for which they search, but also including the news they read, the interests they have, the blogs they follow, the books they enjoy, the stocks in their portfolio, their schedule for the coming week, and perhaps the URL of every Website they visit."
(b) Further, Lim et al. (Patent No.: US 7,660,737), referred to hereinafter as Lim. also describes conventional practice of associating cookie or identifier with user log-in or authentication credentials are indeed well-understood, routine, conventional - see col 11 lines 25-33 note "After creating the new user's account, a cookie may be placed on the user’s computer system with the user's account information to enable automatic login for future sessions. A cookie is a general mechanism that server-side connections (such as common gateway interface scripts) can use to both store and retrieve information on the client-side of the connection. The addition of such a simple, persistent, client-side state significantly extends the capabilities of Web-based client/server applications." and see Lim col 12 line 64-col 13 line 6, note "When a registered user arrives at a Web site offering the present service, the system checks for the presence of a cookie such as that described above. If a cookie is present, the user may be automatically logged on; although, the user’s password may be requested to verify his/her identity. If a cookie is not present, the user is asked to log in. The registration cookie can be a permanent cookie or session cookie according to the user's preferences. Such log in practices for registered users are customary in the Internet services arts and need not be described further herein."
(c) Pub. No.: US 20150161680 [0047] note "The social networking system 140 collects 360 ad performance metrics related to the ad request submitted by an advertiser. Ad performance metrics can include, but are not limited to, auction performance metrics, financial metrics, competitive metrics, and social metrics. Auction performance metrics are collected by the social networking system 140, which monitors the online advertising auction. Social metrics are collected by tracking user activity on client devices 110. User activity on the client devices 110 is tracked using web cookies, tracking pixels, mobile application login events, or other online activity monitoring methods familiar to a person having ordinary skill in the art. Social metrics related to specific users can also be retrieved from databases associated with the social networking system 140.";
(d) see Pub. No.: US 2016/0371748 note [0018] "In some implementations, an ad tag comprises a Uniform Resource Locator (URL) from which an ad will be requested (e.g., a URL for the server system 122), Hypertext Markup Language (HTML) statements and/or JavaScript instructions for retrieving and displaying a creative (e.g., displaying the creative in a 160×600 iframe). The application 125 running on the client device 120 can retrieve content in the user interface 124 (e.g., a web page) through one or more data communication networks 113 such as the Internet, for example, from web servers 130 of a publisher. The ad tag causes the application 125 to send (e.g., through the networks 113) an ad request (“ad call”) to the server system 122. In some implementations, the application 125 sends an ad request to the server system 122 via another advertising server system such as an ad exchange. The ad request can include information about the available ad space 126 (e.g., a size for the ad space, an identifier for the publisher), user information (e.g., an identifier of the user 119, an Internet Protocol or IP address), and system information (e.g., types of the browser and the client device), for example. The ad request can be composed in JavaScript Object Notation (JSON) or Extensible Markup Language (XML) format and transmitted to the server system 122 using Hypertext Transfer Protocol (HTTP) protocol (e.g., using HTTP POST request method). Other ad request formats and transmission methods are possible."; and
(e) see US8165915B1 note "The content page 206 may include the requested content (e.g., the web page for ExamplePetSupplyRetailer) as well as a code snippet 208 associated with an ad. For example, a code snippet may refer to a method used by one device (e.g., a server) to ask another device (e.g., a browser running on a client device) to perform actions after or while downloading information. In some implementations, a code snippet may be in JavaScript® code or may be part of the HTML or other web page markup language or content."
Therefore they fail to provide any element or combination of elements that would be considered significantly more and the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Reason(s) for Non-applicability of Art
3. The Examiner finds claims 21-23, 25-26, and 28-40 to be non-obvious over prior art found in the instant round US2006/0253331 “method for transacting an advertisement transfer is disclosed which facilitates expressing the rate structure for the individual advertisement as a function of a profile of the individual potential customer; and which is directed to the creation of a mechanism from the vantage of an Internet site that is being visited. It should be appreciated that this must include the participation of other entities in the Internet (such as distributors, clients, intermediary agencies, etc.). The method is for transacting an advertisement transfer, from an advertisement distributor to a visitor, the method including, upon the occurrence of a visitor visitation at a communications node, the communication node performing the steps of: constructing a visitor profile; broadcasting the profile to at least one distributor; collecting responses from the at least one distributor; selecting a response from the at least one responding distributor; contracting, between the node and the at least one distributor of the selected response, a transference of an advertisement from the distributor to the visitor; and effecting a transfer of the advertisement to the visitor”; and for the reasons noted in the Non-Final Rejection of record 10/06/2020 and the Final Rejection of record 03/26/2021 of the parent application 15/969,277 (U.S. Pub. No.: US2019/0340653A1).
Response to Applicant Remarks
4. The Examiner incorporates herein by reference previous response to the Applicant’s Remarks in the Final Rejection of record 04/24/2025.
Regarding Interview, note Examiner Interview Summary of record 06/09/2025.
Regarding 101, the Applicant argues “Even assuming the claims can reasonably be determined to recite an abstract idea under Prong One of Step 2A, which Applicant does not concede is the case for this application, Applicant respectfully asserts that the claims integrate the alleged abstract idea into a practical application under Step 2A, Prong Two for at least the following reasons.
MPEP 2106.04(d)(I) states that "[l]imitations the courts have found indicative that an additional element (or combination of elements) may have integrated the exception into a practical application include:*An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a)" (emphasis added).
For example, amended claim 21 integrates the alleged abstract idea into a practical application at least because it recites the additional elements of "initiating, by the management computing system, a real-time bidding process for a space on the webpage to be provided to the web browser, the real-time bidding process hosted by a remote third party advertisement server" and "generating, in real-time, by the management computing system, and without further communication with the remote third party advertisement server to conserve the network resources, a customized advertisement.”
As discussed in, paragraph 63 of the specification, “advertisement server 106 may route application 118 to management entity 104” and “[s]uch direct routing between application 118 and management entity 104 allows management entity 104 to serve an advertisement to application 118 in real-time (or near real-time).” The above limitations of claim 21 recite the technical improvements of serving a customized advertisement in real-time by at least “generating, in real-time, by the management computing system, and without further communication with the remote third party advertisement server to conserve the network resources, a customized advertisement.”
Therefore, the technical improvement is expressly reflected in the claims and thus the claims are patent eligible. Applicant respectfully requests that the Examiner reconsider and withdraw this rejection.
The Examiner respectfully disagrees. The claims are given their broadest reasonable interpretation in light of the as-filed specification and the Applicant simply argues broadly and generally in view of some alleged technical improvement, based on truncated and very limited excerpts from as-filed spec para. 63 as noted above. The Examiner reproduces the as-filed spec. para. surrounding that process [0059] At step 310, advertisement server 106 may parse advertisement request to identify one or more identifiers included therein. For example, when application 118 transmits an advertisement request from advertisement server 106, application 118 may include therewith the one or more identifiers included in the HTTP request. In some embodiments, the advertisement request to advertisement server 106 is an HTTP request substantially similar to the HTTP request to web server 110.
[0060] At step 312, advertisement server 106 may identify that the one or more identifiers in the advertisement request includes a visitor identifier 122 of the one or more visitor identifiers 122 transferred from management entity 104. For example, advertisement server 106 may parse one or more identifiers in the HTTP request to identify a visitor identifier 122 among the one or more identifiers included in the HTTP request. Determining that a visitor identifier 122 is included in the advertisement requests notifies advertisement server 106 that management entity 104 would like to participate in a bidding process.
[0061] At step 314, advertisement server 106 may begin a real-time bidding process for the advertisement space in the webpage to be provided to application 118. In some embodiments, responsive to identifying that the advertisement request includes a visitor identifier 122, advertisement server 106 may notify management entity 104. Receiving a bidding process notification from advertisement server 106 may signal to management entity 104 that management entity 104 is bidding for advertisement space for a user (e.g., user 101) that has previously visited a webpage hosted by web client application server 112.
[0062] At step 316, advertisement server 106 may identify that management entity 104 won the bidding process. For example, management entity 104 may have entered the highest bid for advertisement space. In another example, management entity 104 may have won the bidding process based off criteria, such as security practices, business relationships, overall monetary contribution, type of business associated with management entity 104, content of the information to be displayed, or any other factor which may determine the desirability of a providing an advertisement.
[0063] At step 318, advertisement server 106 may route application 118 to management entity 104. For example, rather than advertisement server 106 handling the placement of advertisements or forwarding the information to a centralized server, advertisement server 106 may route application 118 to management entity 104. Such direct routing between application 13 118 and management entity 104 allows management entity 104 to serve an advertisement to application 118 in real-time (or near real-time).
[0064] Figure 4 is a flow diagram illustrating a method 400 of generating a personalized advertisement, according to one embodiment. Method 400 may begin at step 402. At step 402, management entity 104 may receive an advertisement request from application 118. For example, upon winning the bidding process, web client application server 112 may receive an advertisement request that includes the visitor identifier from application 118.”
Thus, providing tailored or customizable advertisement is indeed an abstract idea. Further “The abstract idea is simply confined to a technical environment. the management entity receives data when user visits management entity's website such as log-in and visitor identifier. This collected information is utilized by the management entity such that when an entity partnered/associated with management entity has a visitor, management entity is able to provide customized ads based on the target client/user's data i.e. tailoring content based on information about the user (Int. Ventures v. Cap One Bank ‘382 patent) to implement an abstract idea in a technical environment of the management entity has won the auction for a particular ad slot/space in real-time. However, this is a business arrangement among entities performing their assigned roles in a technical environment such as network based environment e.g. Internet which is inherently fast and executes calls in real-time. Thus, the abstract idea is intended to be carried out in a technical environment to coordinate activities among different entities connected via a network such as the Internet, however the additional elements fail to go beyond generally linking the use of an abstract idea to a particular technological environment (see MPEP 2106.05(h)), note receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network) - similarly here HTTP requests are received and custom ads are transmitted across a network such as the Internet.
Viewed as a whole, these additional claim element(s) do not one or more additional elements (prong two) to integrate the abstract idea (prong one) into a practical application. Thus they fail to provide any an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field; an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim; an additional element effects a transformation or reduction of a particular article to a different state or thing; and an additional element applies or uses 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.”
Thus, as it applies to the pending claims, the abstract idea of providing customized advertisements by utilizing one or more identifiers and coordinating activities among entities such as management entity, publisher, and a client to fulfill an advertisement call or request which originates from client visiting a publisher, which is certain method of organizing human activity - fails to integrate the additional elements when considered both individually and as a combination or as a whole, into a practical solution.
Lastly, (i) per Alice ruling note “a computer is a tangible system (in §101 terms, a “machine”), or that many computer-implemented claims are formally addressed to patent-eligible subject matter. But if that were the end of the §101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept. Such a result would make the determination of patent eligibility “depend simply on the draftsman’s art,” Flook, supra, at 593, thereby eviscerating the rule that “‘[l]aws of nature, natural phenomena, and abstract ideas are not patentable,’ ” Myriad, 569 U. S., at ___ (slip op., at 11).” – as such merely carrying out an abstract idea in a technical environment is insufficient; and
(ii) although the scope of subject matter being claimed varies, the Examiner notes the Patent Board Decision of record 08/30/2023 in the parent Application 15/969277.
Thus based on (i) and (ii) above, The Examiner respectfully maintains that the underlying invention is indeed directed to an abstract without significantly more.
Therefore the Examiner respectfully maintains the rejection.
Conclusion
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and all the references on PTO-892 Notice of Reference Cited should be duly noted by the Applicant as they can be subsequently used during prosecution.
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/DIPEN M PATEL/Primary Examiner, Art Unit 3621B