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 .
DETAILED ACTION
Status of the Application
This action is in response to the Amendment filed on 5/11/2026, and is a Final Office Action. Claims 1-24 are pending in the application.
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 1-24 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.
Claim 1 is directed towards a method, thus meeting the Step 1 eligibility criterion. Claim 1 does recite the abstract concept of a commercial interaction, including advertising activities/behaviors, business relations, sales activities, and a fundamental economic practice, which represent methods of organizing human activity and have been identified as an abstract ideas – see MPEP § 2106. The relevant claimed limitations include: receiving a request for a first episode of content, wherein the first episode of content comprises a first portion of the first episode, a second portion of the first episode, and a third portion of the first episode / determining, based on the request for the first episode of the content, a second episode of the content, wherein the second episode is more recent than the first episode and comprises a first portion of the second episode, a second portion of the second episode, and a third portion of the second episode / sending the first portion of the first episode / sending based on timing metadata of the first episode, the second portion of the second episode / sending based on timing metadata of the second episode, the third portion of the first episode. Applicant’s Spec. provides further context to the claimed invention as pertaining to the commercial interaction realm: “The current method of playing a specific advertisement when providing content is dynamic advertisement insertion, meaning that the specific advertisement is separated from content and can be inserted into content by one or more advertisement channels. However, dynamic advertisement insertion can be cumbersome to manage. There is a need for more sophisticated methods and systems for playing a specific advertisement in any content according to content with the specific advertisement already inserted”, “
As an example, the first break point can comprise a start point for a portion (e.g., an advertisement) in the first content. The second break point can comprise a start point for a portion (e.g., an advertisement) in the second content”, “In an aspect, a plurality of content (e.g., first content, second content, etc.) can be stored in a content management system, and each of the stored content can comprise a plurality of advertisements at different break points. In an aspect, the second content can be more recent in time than the first content. When the first content is provided, one or more advertisements in the second content can be played in lieu of one or more advertisements in the first content. Specifically, a processor in the content management system can be configured to determine one or more break points in the first content and second content and which advertisement is more recent, and selectively provide either the first content or the second content based on the break points and temporal data of the break points. By implementing the disclosed methods and systems, a specific advertisement from a more recent content can be played in place of an advertisement in older content”, “ metadata for the break points can comprise temporal data for the start point and end point of an advertisement in the content, duration of the advertisement, type of the advertisement (e.g., local advertisement, non-local advertisement), release date of an advertisement, and the like”, “first content (e.g., the first episode of a television program) can comprise a first portion (e.g., an advertisement) and second content (e.g., the second episode of a television program) can comprise a second portion (e.g., an advertisement). In an aspect, a portion can be an advertisement, or it can be an alternative scene (e.g., alternative ending, alternative rating scene, and the like)”, “the second portion can be a local advertisement designed to target local viewers or listeners, whereas the first portion may be a generic or national/regional advertisement. For example, when a local viewer or listener is requesting a specific content, the content provider may intend for the second portion to be played.” Claim 1 also recites the abstract concept of a mental concept- i.e. mental process that can be performed in the human mind or using pen/paper, including an observation/evaluation/judgment, which has been identified as an abstract idea by the MPEP: receiving a request for a first episode of content, wherein the first episode of content comprises a first portion of the first episode, a second portion of the first episode, and a third portion of the first episode / determining, based on the request for the first episode of the content, a second episode of the content, wherein the second episode is more recent than the first episode and comprises a first portion of the second episode, a second portion of the second episode, and a third portion of the second episode. These claimed limitations, under their broadest reasonable interpretation, cover performance in the human mind but for the recitation of generic computing elements – see below, thus still being in the mental process category.
This judicial exception is not integrated into a practical application. Claim 1 includes the additional elements of a user device / computing device , which represent generic computing elements. The additional elements do not improve the functioning of the computing device or another technology/technical field, nor do they apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. The claim is directed to an abstract idea.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because as noted above, the claimed computing elements represent generic computing elements; they are recited at a high level of generality. The additional elements do not, alone or in combination, improve the functioning of the computing device or another technology/technical field, nor do they apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. Therefore, Claim 1 does not amount to significantly more than the abstract idea itself. The claim is not patent eligible.
Independent claims 7, 13, 19 are directed to a system, method and system, respectively, for performing similar claimed limitations to those of claim 1, thus meeting the Step 1 eligibility criterion; they recite the same abstract idea as Claim 1. Claims 7, 13, 19 perform the method of claim 1 using only generic components of a networked computer system. Therefore, claims 7, 13, 19 are directed to an abstract idea without significantly more for the reasons given in the discussion of claim 1.
Remaining dependent claims 2-6, 8-12, 14-18, 20-24 further recite and narrow the abstract ideas of the independent claims themselves. The claims do not include any other additional elements. Therefore, the claims do not amount to significantly more than the abstract idea itself. The claims are not patent eligible.
Relevant prior art: The prior art of record does not teach neither singly nor in combination the limitations of claims 1-24. Sinha (20130205315 ) describes identifying viewer interaction and/or viewer data; it may present a variant of an advertisement in a next ad pod during presentation of content, based on the identified viewer interaction and/or the identified viewer information. When an identified stored episode of a show is presented, the device may present, in a next ad pod, a new version of an advertisement, where the new version of the advertisement may be associated with a new episode of the show. However , it lacks the combination of claimed elements of the pending independent claims:
receiving, from a user device, a request for a first episode of content, wherein the first episode of content comprises a first portion of the first episode, a second portion of the first episode, and a third portion of the first episode; determining, based on the request for the first episode of the content, a second episode of the content, wherein the second episode is more recent than the first episode and comprises a first portion of the second episode, a second portion of the second episode, and a third portion of the second episode; sending, to the user device and based on the request, the first portion of the first episode; sending, to the user device and based on the request and the second episode being more recent than the first episode, the second portion of the second episode; and sending, to the user device and based on the request, the third portion of the first episode. LaJoie (20070276926) describes allowing a user (e.g., cable or satellite network subscriber) to access content, such as a video program, from a location outside the subscriber's network, with dynamic or adaptive insertion of secondary content (e.g., advertisements or promotions) that are more relevant for that context. In one embodiment, a personal content server streams the content to the subscriber over a network connection from the local e.g., (subscription) network to a remote network upon authorization by a content manager process; secondary content is evaluated and selectively inserted or replaced depending on factors such as the user's remote location, the configuration of their platform, the
date and time of their access request, and/or the subject matter of the primary content. However , it lacks the combination of claimed elements of the pending independent claims: receiving, from a user device, a request for a first episode of content, wherein the first episode of content comprises a first portion of the first episode, a second portion of the first episode, and a third portion of the first episode; determining, based on the request for the first episode of the content, a second episode of the content, wherein the second episode is more recent than the first episode and comprises a first portion of the second episode, a second portion of the second episode, and a third portion of the second episode; sending, to the user device and based on the request, the first portion of the first episode; sending, to the user device and based on the request and the second episode being more recent than the first episode, the second portion of the second episode; and sending, to the user device and based on the request, the third portion of the first episode. When taken as a whole, the claims are not rendered obvious as the available prior art does not suggest or otherwise render obvious the noted features nor does the available prior art suggest or otherwise render obvious further modification of the evidence at hand. Such modifications would require substantial reconstruction relying solely on improper hindsight bias, and thus would not be obvious.
Response to Arguments
Applicant’s arguments have been fully considered; Applicant argues with substance:
The USPTO has failed to demonstrate that claims 1-24 are not patent-eligible under 35 U.S. C. § 101. Applicant submits that although "abstract ideas are 'the basic tools of scientific and technological work ... an invention is not considered to be ineligible for patenting simply because it involves a judicial exception." MPEP § 2106(1), para. 2 ( citing Alice Corp. Pty. Ltd v.CLS Bank Int'l, 573 U.S. 208, 216-17 (2014)). The Federal Circuit has established a streamlined analysis for eligibility, which the MPEP has adopted as a three-path eligibility analysis. See MPEP § 2106; see also Flowchart of MPEP § 2106(111). For instance, claims directed to clear improvements to computer-related technology do not need the full eligibility analysis. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016) (quoting Alice, 573 U.S. at
210). Patent-eligible claims are not required to be "defined by reference to 'physical'
components" and "[t]o hold otherwise risks resurrecting the bright-line machine-ortransformation
test." Id at 1339. Indeed, "a process producing an intangible result" is patenteligible
if "it improved an existing technological process." MPEP § 2106.04(d)(I), para. 5 (citing
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016)). For
example, claims "directed to a specific implementation of a solution to a problem in the software
arts" is patentable "where general-purpose computer components [] added post-hoc to a
fundamental economic practice or mathematical equation" are not. Enfish, 822 F.3d at 1339.
A. The claims are directed to one of the four statutory categories
First, the instant claims are within one of the four statutory categories described in
35 U.S.C. § 101. For example, Congress deemed appropriate patents containing processes or
"'actions' (i.e., inventions that consist of a series of steps or acts to be performed)." MPEP
§ 2106(1). Claim 1 provides a series of steps (e.g., "receiving ... determining ... sending .. .
sending ... sending." Claim 13 also provides a series of steps (e.g., "sending ... receiving .. .
receiving ... receiving ." For this reason, claims 1 and 13, at least, fall within the statutory
category of processes. Claims 7 and 19 recite a system comprising multiple devices and
therefore, are directed to the statutory class of machines.
B. The claims are not directed to a judicial exception
The instant claims qualify as patent-eligible subject matter in that they are not directed to
a judicial exception, and to the extent that the claims are directed to a judicial exception, the
claims each include additional limitations that are significantly more than the exception-as
required by the MPEP. See MPEP § 2106(1), para. 2. That is, "the exception is integrated into a
practical application." MPEP § 2106(II)(A), para. 1.
1. The claims are not directed to an abstract idea
The Patent Office alleges that claims 1-24 are directed to an abstract idea because the
claims recite the abstract concepts of a commercial interaction that can be performed in the
human mind Office Action, pp. 2-4. Applicant disagrees.
a. The elements recited in claims 1-24 could not be performed in the human
mind and are, therefore, not mental processes
Applicant asserts that the elements of claims 1-24 cannot be performed in the human
mind and to the extent that it could be performed in the human mind, the human mind is not
equipped to perform the steps provided.
For example, the Patent Office does not construe "receiving, by a computing device and
from a user device, ... a request for a first episode of content," "determining ... a second episode
of the content, wherein the second episode is more recent than the first episode," "sending, to the
user device, the first portion of the first episode," "sending, to the user device and based on
timing metadata of the first episode, ... the second portion of the second episode," or "sending,
to the user device and based on timing metadata of the first episode, the third portion of the first
episode," in claim 1 or "sending, by a user device, ... a request for a first episode of content,"
"receiving, by the user device ... the first portion of the first episode," "receiving, by the user
device and based on timing metadata of the first episode, ... a second portion of a second episode
of the content," and "receiving, by the user device and based on timing metadata of the second
episode, ... the third portion of the first episode," of claim 13 in a way that indicates it can be
performed by "thinking" as required by the MPEP. MPEP § 2106.04(a)(2)(111). Indeed, the
Patent Office has not provided how one could "receiv[ e ], by a computing device and from a user
device, ... a request for a first episode of content," "determin[e] ... a second episode of the
content, wherein the second episode is more recent than the first episode," "send, to the user
device, the first portion of the first episode," "send, to the user device and based on timing
metadata of the first episode, ... the second portion of the second episode," or "send, to the user
device and based on the timing metadata of the second episode, the third portion of the first
episode," in claim 1 or "send, by a user device, ... a request for a first episode of content,"
"receiv[ e ], by the user device ... the first portion of the first episode," "receiv[ e ], by the user
device and based on timing metadata of the first episode, ... a second portion of a second episode
of the content," and "receiv[ e ], by the user device and based on timing metadata of the second
episode, ... the third portion of the first episode," of claim 13 using only their mind (e.g.,
"thinking") as required by the MPEP. Id Further, the Patent Office does not provide why the
human mind is equipped to "receiv[e], by a computing device and from a user device, ... a
request for a first episode of content," "determin[e] ... a second episode of the content, wherein
the second episode is more recent than the first episode," "send, to the user device, the first
portion of the first episode," "send, to the user device and based on timing metadata of the first
episode, ... the second portion of the second episode," or "send, to the user device and based on
the timing metadata of the second episode, the third portion of the first episode," in claim 1 or
"send, by a user device, ... a request for a first episode of content," "receiv[ e ], by the user device
... the first portion of the first episode," "receiv[ e ], by the user device and based on timing
metadata of the first episode, ... a second portion of a second episode of the content," and
"receiv[ e ], by the user device and based on timing metadata of the second episode, ... the third
portion of the first episode," of claim 13.
There is no doubt that the human mind provides unparalleled elasticity. For example, one
could envision "building a house" in their own mind, but these types of mental gymnastics are
not what the MPEP and courts have sought to prevent through § 101. The MPEP and courts are
explicit to that end in that"' [a]t some level, all inventions embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas,' and has cautioned 'to tread carefully
in construing this exclusionary principle lest it swallow all of patent law."' MPEP
§ 2106(II)(A)(l), para. 2 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336-37, 118
USPQ2d 1684, 1689-90 (Fed. Cir. 2016)).
The MPEP provides the bounds of mental processes along with the cases cited herein by
Applicant. For example, the mental processes in the MPEP are those that" ... are the equivalent
of human mental work, are unpatentable abstract ideas [ and] the 'basic tools of scientific and
technological work' that are open to all."' Indeed, the MPEP provides examples of such mental
processes as they "include observations, evaluations, judgments, and opinions." Id ( emphasis
added). The Patent Office does not suggest that the claim elements meet any of these categories
and Applicants assert that such is not the case.
The Patent Office has not provided how the human mind could practically perform the
elements of "receiv[ e ], by a computing device and from a user device, ... a request for a first
episode of content," "determin[e] ... a second episode of the content, wherein the second episode
is more recent than the first episode," "send, to the user device, the first portion of the first
episode," "send, to the user device and based on timing metadata of the first episode, ... the
second portion of the second episode," or "send, to the user device and based on the timing
metadata of the second episode, the third portion of the first episode," in claim 1 or "send, by a
user device, ... a request for a first episode of content," "receiv[ e ], by the user device ... the first
portion of the first episode," "receiv[ e ], by the user device and based on timing metadata of the
first episode, ... a second portion of a second episode of the content," and "receiv[ e ], by the user
device and based on timing metadata of the second episode, ... the third portion of the first
episode," of claim 13 and the MPEP requires office actions to provide such information. MPEP
§ 2106.04(a)(2) (11l)(A) ("A claim with limitation(s) that cannot practically be performed in the
human mind does not recite a mental process.") ( emphasis added). This requirement is based on
recent case law from the Federal Circuit. Indeed, the Federal Circuit has held that it must be
proffered how the human mind is equipped to perform the steps provided. SRI Int'l, Inc. v. Cisco
Sys., 930 F.3d 1295, 1304 (Fed. Cir. 2019) ("[Defendant submits] that the asserted claims ...
encompass steps that people can 'go through in their minds," allegedly confirming that they are
directed to an abstract concept .... [the Court] disagree[s] ... the human mind is not equipped
to detect suspicious activity by using network monitors .... ") ( emphasis added).
The above-referenced elements of claims 1-24 encompass the same sentiment. The Patent
Office has not provided any basis for how the human mind could "receiv[ e ], by a computing
device and from a user device, ... a request for a first episode of content," "determin[e] ... a
second episode of the content, wherein the second episode is more recent than the first episode,"
"send, to the user device, the first portion of the first episode," "send, to the user device and
based on timing metadata of the first episode, ... the second portion of the second episode," or
"send, to the user device and based on the timing metadata of the second episode, the third
portion of the first episode," in claim 1 or "send, by a user device, ... a request for a first episode
of content," "receiv[ e ], by the user device ... the first portion of the first episode," "receiv[ e ], by
the user device and based on timing metadata of the first episode, ... a second portion of a
second episode of the content," and "receiv[ e ], by the user device and based on timing metadata
of the second episode, ... the third portion of the first episode," in claim 13. And further, even if
the human mind could-by some stretch of the imagination-perform these steps, the Patent
Office has not provided any basis for why the human mind would perform these steps. That is,
the human mind is not equipped to "receiv[e], by a computing device and from a user device, ...
a request for a first episode of content," "determin[e] ... a second episode of the content, wherein
the second episode is more recent than the first episode," "send, to the user device, the first
portion of the first episode," "send, to the user device and based on timing metadata of the first
episode, ... the second portion of the second episode," or "send, to the user device and based on
the timing metadata of the second episode, the third portion of the first episode," as recited in
claim 1 or "send, by a user device, ... a request for a first episode of content," "receiv[ e ], by the
user device ... the first portion of the first episode," "receiv[ e ], by the user device and based on
timing metadata of the first episode, ... a second portion of a second episode of the content," and
"receiv[ e ], by the user device and based on timing metadata of the second episode, ... the third
portion of the first episode," as recited in claim 13.
Indeed, the claims at issue here are more akin to the examples in the MPEP that do not
recite mental processes. For example, "a claim to a specific data encryption method for computer
communication involving a several-step manipulation of data;" and "a claim to a method for
rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image
against a blue noise mask" do not recite a mental process. MPEP § 2106(11l)(A) (emphasis
added). Accordingly, the Patent Office fails to show that claims 1 and 13 are directed to the
abstract idea of a mental process. Claims 7 and 19 are directed to system claims that recite
elements similar to claims 1 and 13 respectively and are not directed to the abstract concept of a
mental process for similar reasons.
Furthermore, claims 1-24 are not directed to a method of organizing human activity. A
claim may fall under the certain methods of organizing human activity grouping of abstract ideas
when it recites, for example, 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)MPEP 2106.04(a).
The present claims, however, do not recite any method of organizing human activity. The
Patent Office points to "commercial interactions" as the alleged method of organizing human
activity. In the MPEP, "commercial interactions include agreements in the form of contracts,
legal obligations, advertising, marketing or sales activities or behaviors, and business relations.")
MPEP 2106.04(a)(2)(II)(B). In Bilski, the Supreme Court held "the contractual relations at issue
constitute a "fundamental economic practice long prevalent in our system of commerce." Bilski
v. Kappas, 561 U.S. 593, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010). In that case, the Court feared
"[a]llowing petitioners to patent risk hedging would preempt use of this approach in all fields,
and would effectively grant a monopoly over an abstract idea." Id
TheMPEP points to Ultramercial v. Hulu, LLC as "an example of a claim reciting
advertising." MPEP 2106.04(a)(2)(II)(B). In that case, the abstract idea was "a method of using
advertising as an exchange or currency." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014). (Emphasis added). Specifically, the "patentee in Ultramercial claimed an
eleven-step method for displaying an advertisement (ad) in exchange for access to copyrighted
media, comprising steps of receiving copyrighted media, selecting an ad, offering the media in
exchange for watching the selected ad, displaying the ad, allowing the consumer access to the
media, and receiving payment from the sponsor of the ad." MPEP 2106.04(a)(2)(II)(B) (See
Ultramercial 772 F.3d. at 715, 112 USPQ2d at 1754). The Ultramercial court found "[t]he
majority of those steps comprise the abstract concept of offering media content in exchange for
viewing an advertisement." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir.
2014).
Thus, the case law andMPEP combine to proscribe against claims directed to
commercial interactions. However, claims 1, 7, 13, and 19 are not directed to a commercial
interaction. Instead, the claims are directed to methods and systems for inserting portions of a
second episode into a first episode of content. Nothing in the insertion process describes or
would provide a monopoly over any type of commercial interaction, as in Bilski, or describe a
quid pro quo commercial interaction, as in Ultramercial. Accordingly, the Patent Office fails to
show that claims 1, 7, 13, and 19 are directed to the abstract idea of a method of organizing
human activity.
For at least these reasons, Applicant asserts that claims 1-24 do not recite an abstract
idea.
2. The pending claims integrate any alleged judicial exception into a practical
application (Prong Two of Step 2A)
As discussed above, if the claim recites a judicial exception, then the analysis moves to
Prong Two of Step 2A. Under Prong Two, the Examiner is to evaluate whether the claim, as a
whole, integrates the recited judicial exception into a practical application of the exception. See
MPEP §2106.04(2)(B). A claim that integrates a judicial exception into a practical application
will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort designed to monopolize
the judicial exception. Id. at §2106.04(d). When the exception is so integrated, then the claim is
not directed to a judicial exception (Step 2A: NO) and is eligible. Determining whether a recited
judicial exception has been integrated into a practical application requires Examiners to (a)
identify whether there are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluate those additional elements individually and in combination to
determine whether they integrate the exception into a practical application. Id. When making this
determination, the Examiner is to ensure that they give weight to all additional elements,
regardless of whether they are conventional. Id.
As discussed above, the pending claims do not recite a judicial exception and are subject
matter eligible on that basis alone. However, even assuming, arguendo, that the pending claims
do recite a judicial exception, they integrate such a judicial exception (the alleged abstract idea of
a mental process and methods of organizing human activity) into a practical application, which is
another reason why the pending claims are eligible under§ 101.
The Patent Office at page 9 asserts that the pending claims would be performed by
generic computers. Applicant asserts that what type of computer completes the recitations of the
claims does not matter. The pending claims reflect an improvement to technology as an
improvement to substitution of digital content. Improving technology is a consideration that
indicates a claim integrates a judicial exception into a practical application and thus imposes a
meaningful limit on the judicial exception, without any further analysis. Id. The present
application explains the problem being solved by the improvement to the substitution of digital
content in that "dynamic advertisement insertion can be cumbersome to manage. There is a need
for more sophisticated methods and systems for playing a specific advertisement in any content
according to content with the specific advertisement already inserted." Application, i]l. The
present application further explains that "a processor in the content management system can be
configured to determine one or more break points in the first content and second content and
which advertisement is more recent, and selectively provide either the first content or the second
content based on the break points and temporal data of the break points." Id. at iJ19.
Accordingly, as discussed above, the pending claims recite methods for improving
substitution of content. Thus, the pending claims provide a specific improvement over prior
systems, resulting in improved digital content substitution and integrating the alleged judicial
exception into a practical application. SRI International, Inc. v. Cisco Systems, Inc., provides further support for correctly concluding that the pending claims integrate the alleged judicial exception into a practical application. See SRI International, 930 F.3d 1295, 1303 (Fed. Cir. 2019). Claim 1 of SRI
International integrates a judicial exception into a practical application by providing "an
improvement in computer technology and not directed to an abstract idea." MPEP
§2106.04(d)(l). The method claimed by claim 1 of SRI International limits the collection of
additional Netflow protocol data to when initially collected data reflects an abnormal condition,
which avoids excess traffic volume and hindrance of network performance. The collected data is
used to analyze the cause of the abnormal condition, providing the specific improvement over
prior systems. See SRI International, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1303 (Fed. Cir.
2019). As such claim 1 of SRI International was found to be directed to a particular improvement
in collecting traffic data. The determination of whether a claim provides an improvement to
technology is determined without reference to what is well-understood, routine, conventional
activity. MPEP §2106.05(d). In applying these considerations outlined in the MPEP to the present claims, it is clear that the pending claims, as a whole, are also directed to a particular improvement in digital
content substitution. Similar to claim 1 of SRI International, the pending claims impose a
meaningful limit on the alleged judicial exception of a mental process and/or a method of
organizing human activity. The pending claims recite a particular improvement to substitution of
content. Similar to how claim 1 of SRI International limits the collection of additional Netflow
protocol data to when collected data reflects an abnormal condition to analyze the cause of the
abnormal condition and improve network monitoring, the pending claims improve content
substitution. Accordingly, the pending claims impose a meaningful limit on the alleged judicial
exception and provide a specific improvement over prior systems, resulting in improved content
substitution. Thus, the claims 1, 7, 13, and 19 are subject matter eligible under Prong Two of Step 2A
of the§ 101 analysis.
3. The claims recite a specific approach not found in the prior art suggesting
significantly more as required by eligibility step 2B
The Patent Office asserts that the claims do not include additional elements sufficient to
amount to significantly more than the judicial exception. Applicant respectfully disagrees.
"Another consideration when determining whether a claim recites significantly more than
a judicial exception is whether the additional element(s) are well-understood, routine,
conventional activities previously known to the industry." MPEP § 2106.05(d), para. 1. Claim 1
provides a series of specific elements that "receiv[ e ], by a computing device and from a user
device, ... a request for a first episode of content," "determin[e] ... a second episode of the
content, wherein the second episode is more recent than the first episode," "send, to the user
device, the first portion of the first episode," "send, to the user device and based on timing
metadata of the first episode, ... the second portion of the second episode," and "send, to the user
device and based on the timing metadata of the second episode, the third portion of the first
episode." Claim 13 provides a series of specific elements that "send, by a user device, ... a
request for a first episode of content," "receiv[ e ], by the user device ... the first portion of the
first episode," "receiv[ e ], by the user device and based on timing metadata of the first episode,
... a second portion of a second episode of the content," and "receiv[ e ], by the user device and
based on timing metadata of the second episode, ... the third portion of the first episode."
As admitted by the Patent Office, these elements are not shown or made obvious in view
of any prior art. Office Action, pp. 5-7. Further, the MPEP provides, "[i]f the additional element
( or combination of elements) is a specific limitation other than what is well-understood, routine
and conventional in the field," the claim is favorable to patent eligibility. Id, para. 2. The Patent
Office has not established that these elements are well-understood, routine or conventional. For
example, the MPEP provides that even "[a]n additional element ... that is known in the art can
still be unconventional or non-routine." MPEP § 2106.05(d)(I)(l). Indeed, the Patent Office must
make a factual determination to support that those additional elements are "well-understood,
routine, conventional activity." MPEP § 2106.05(d)(I)(2). And, "[e]ven if one or more additional
elements are well-understood, routine, conventional activity when considered individually, the
combination of additional elements may [still] amount to an inventive concept." MPEP §
2106.05( d)(I)(3). Applicant asserts that these elements are not "well-understood, routine, [or]
conventional" and therefore recite elements that are significantly more than the alleged abstract
idea of a mental process. Independent claims 7 and 19 recite similar, but not identical elements,
to those discussed here in claims 1 and 13 respectively. For at least these reasons,
reconsideration and withdrawal of the rejection of claims 1-24 is respectfully requested.
Applicant’s arguments have been fully considered, but they are not persuasive. The 35 USC 101 rejection is maintained by the Examiner, as noted above. The pending claims do recite an abstract idea, and the additional elements do not, alone or in combination , integrate the recited abstract idea into a practical application, nor do they represent significantly more than the abstract idea itself, as noted above. Claims 1-24 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. Claim 1 is directed towards a method, thus meeting the Step 1 eligibility criterion. Claim 1 does recite the abstract concept of a commercial interaction, including advertising activities/behaviors, business relations, sales activities, and a fundamental economic practice, which represent methods of organizing human activity and have been identified as an abstract ideas – see MPEP § 2106. The relevant claimed limitations include: receiving a request for a first episode of content, wherein the first episode of content comprises a first portion of the first episode, a second portion of the first episode, and a third portion of the first episode / determining, based on the request for the first episode of the content, a second episode of the content, wherein the second episode is more recent than the first episode and comprises a first portion of the second episode, a second portion of the second episode, and a third portion of the second episode / sending the first portion of the first episode / sending based on timing metadata of the first episode, the second portion of the second episode / sending based on timing metadata of the second episode, the third portion of the first episode. Applicant’s Spec. provides further context to the claimed invention as pertaining to the commercial interaction realm: “The current method of playing a specific advertisement when providing content is dynamic advertisement insertion, meaning that the specific advertisement is separated from content and can be inserted into content by one or more advertisement channels. However, dynamic advertisement insertion can be cumbersome to manage. There is a need for more sophisticated methods and systems for playing a specific advertisement in any content according to content with the specific advertisement already inserted”, “As an example, the first break point can comprise a start point for a portion (e.g., an advertisement) in the first content. The second break point can comprise a start point for a portion (e.g., an advertisement) in the second content”, “In an aspect, a plurality of content (e.g., first content, second content, etc.) can be stored in a content management system, and each of the stored content can comprise a plurality of advertisements at different break points. In an aspect, the second content can be more recent in time than the first content. When the first content is provided, one or more advertisements in the second content can be played in lieu of one or more advertisements in the first content. Specifically, a processor in the content management system can be configured to determine one or more break points in the first content and second content and which advertisement is more recent, and selectively provide either the first content or the second content based on the break points and temporal data of the break points. By implementing the disclosed methods and systems, a specific advertisement from a more recent content can be played in place of an advertisement in older content”, “ metadata for the break points can comprise temporal data for the start point and end point of an advertisement in the content, duration of the advertisement, type of the advertisement (e.g., local advertisement, non-local advertisement), release date of an advertisement, and the like”, “first content (e.g., the first episode of a television program) can comprise a first portion (e.g., an advertisement) and second content (e.g., the second episode of a television program) can comprise a second portion (e.g., an advertisement). In an aspect, a portion can be an advertisement, or it can be an alternative scene (e.g., alternative ending, alternative rating scene, and the like)”, “the second portion can be a local advertisement designed to target local viewers or listeners, whereas the first portion may be a generic or national/regional advertisement. For example, when a local viewer or listener is requesting a specific content, the content provider may intend for the second portion to be played.” Claim 1 also recites the abstract concept of a mental concept- i.e. mental process that can be performed in the human mind or using pen/paper, including an observation/evaluation/judgment, which has been identified as an abstract idea by the MPEP: receiving a request for a first episode of content, wherein the first episode of content comprises a first portion of the first episode, a second portion of the first episode, and a third portion of the first episode / determining, based on the request for the first episode of the content, a second episode of the content, wherein the second episode is more recent than the first episode and comprises a first portion of the second episode, a second portion of the second episode, and a third portion of the second episode. These claimed limitations, under their broadest reasonable interpretation, cover performance in the human mind but for the recitation of generic computing elements – see below, thus still being in the mental process category. This judicial exception is not integrated into a practical application. Claim 1 includes the additional elements of a user device / computing device , which represent generic computing elements. The additional elements do not improve the functioning of the computing device or another technology/technical field, nor do they apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. The claim is directed to an abstract idea. Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because as noted above, the claimed computing elements represent generic computing elements; they are recited at a high level of generality. The additional elements do not, alone or in combination, improve the functioning of the computing device or another technology/technical field, nor do they apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. Therefore, Claim 1 does not amount to significantly more than the abstract idea itself. The claim is not patent eligible. Independent claims 7, 13, 19 are directed to a system, method and system, respectively, for performing similar claimed limitations to those of claim 1, thus meeting the Step 1 eligibility criterion; they recite the same abstract idea as Claim 1. Claims 7, 13, 19 perform the method of claim 1 using only generic components of a networked computer system. Therefore, claims 7, 13, 19 are directed to an abstract idea without significantly more for the reasons given in the discussion of claim 1. Remaining dependent claims 2-6, 8-12, 14-18, 20-24 further recite and narrow the abstract ideas of the independent claims themselves. The claims do not include any other additional elements. Therefore, the claims do not amount to significantly more than the abstract idea itself. The claims are not patent eligible. Selecting targeted content based on criteria represents a business practice/goal, not other technology/technical field; thus, improving this practice pertains to a business practice optimization, not to an improvement to other technology/technical field . There is no technical support/technical evidence in the Spec. that the claimed invention, when implemented, improves the functioning of the computing device itself or other technology/technical field. The pending claimed invention and SRI International V Cisco Systems have different fact patterns and claim sets, and thus the two are not analogous. Furthermore, in SRI International V Cisco Systems Inc. it was deemed that that claims integrate the alleged judicial into a practical application by providing an improvement in computer technology- i.e. limits the collection of additional Netflow protocol data to when initially collected data reflects an abnormal condition, which avoids excess traffic volume and hindrance of network performance. Contrary to SRI International V Cisco Systems Inc., the pending claims, when
implemented, do not provide an improvement in computer technology; they do not limit the collection of additional Netflow protocol data to when initially collected data reflects an abnormal condition, which avoids excess traffic volume and hindrance of network performance.
The instant claimed invention and Enfish have different claim sets and different fact patterns, and therefore the two are not analogous. Furthermore, in Enfish, the Courts found that no abstract idea was present, that the claims were directed to a self-referential table for a computer database, and that the claims were directed to an improvement of an existing technology. The Courts further emphasized that the specification taught specific technical benefits over conventional databases. Contrary to Enfish, the instant claimed invention includes an abstract idea (see the 35 USC 101 analysis above), and the claim-set does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as combination do not amount to significantly more than the abstract idea.
With respect to the argument that “the claims recite a specific approach not found in the prior art suggesting significantly more as required by eligibility step 2B”, Examiner notes that the 35 USC 101 analysis and the prior art analyses represent separate and distinct analyses. Examiner further notes that, as per the MPEP, “The Supreme Court’s decisions make it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions. For example, the mathematical formula in Flook, the laws of nature in Mayo, and the isolated DNA in Myriad were all novel or newly discovered, but nonetheless were considered by the Supreme Court to be judicial exceptions because they were “‘basic tools of scientific and technological work’ that lie beyond the domain of patent protection.” Myriad, 569 U.S. 576, 589, 106 USPQ2d at 1976, 1978 (noting that Myriad discovered the BRCA1 and BRCA1 genes and quoting Mayo, 566 U.S. 71, 101 USPQ2d at 1965); Flook, 437 U.S. at 591-92, 198 USPQ2d at 198 (“the novelty of the mathematical algorithm is not a determining factor at all”); Mayo, 566 U.S. 73-74, 78, 101 USPQ2d 1966, 1968 (noting that the claims embody the researcher's discoveries of laws of nature). The Supreme Court’s cited rationale for considering even “just discovered” judicial exceptions as exceptions stems from the concern that “without this exception, there would be considerable danger that the grant of patents would ‘tie up’ the use of such tools and thereby ‘inhibit future innovation premised upon them.’” Myriad, 569 U.S. at 589, 106 USPQ2d at 1978-79 (quoting Mayo, 566 U.S. at 86, 101 USPQ2d at 1971). See also Myriad, 569 U.S. at 591, 106 USPQ2d at 1979 (“Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.”). The Federal Circuit has also applied this principle, for example, when holding a concept of using advertising as an exchange or currency to be an abstract idea, despite the patentee’s arguments that the concept was “new”. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a new abstract idea is still an abstract idea”) (emphasis in original).” – see MPEP 2106. See Office Action above for the detailed, reasoned 35 USC 101 analysis.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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 ALEXANDRU CIRNU whose telephone number is (571)272-7775. The examiner can normally be reached on M-F 9:00am-5pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Ilana Spar 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. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Sincerely,
/Alexandru Cirnu/
Primary Patent Examiner, Art Unit 3622
5/22/2026
Prosecution Insights