DETAILED ACTION
Status of the Claims
This office action is submitted in response to the amendment filed on 7/16/25.
Examiner notes Applicant’s priority date of 5/31/21, which stems from PCT/JP2021/020765.
Examiner further notes that Applicant filed a preliminary amendment on 9/8/23.
Claims 1 and 9-10 have been amended.
Claim 2 has been cancelled.
Therefore, claims 1 and 3-13 are currently pending and have been examined.
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 .
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 and 3-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Independent claims 1, 9, and 10, in part, describe an invention comprising: reproducing and outputting content (ads) based on a predetermined priority, wherein the content is associated with range information; providing an indication as to whether or not the content has been reproduced and output within the range or has been rejected without being reproduced and output; and generating performance information about reproduction output of the content to each ad provider. As such, are directed to the abstract idea of receiving ad content, analyzing and reproducing the ad content, and outputting performance results of the data analysis and output, which, pursuant to MPEP 2106.04(a), is aptly categorized as a method of organizing human activity (i.e., marketing, advertising, and commercial activities). Therefore, under Step 2A, Prong One, the claims recite a judicial exception.
Next, the aforementioned claims recite additional elements that are associated with the judicial exception, including: receiving ad content from a plurality of applications. Examiner understands these limitations to be insignificant extrasolution activity. (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Cf. Diamond v. Diehr, 450 U.S. 175, 191-192 (1981) ("[I]nsignificant post-solution activity will not transform an unpatentable principle in to a patentable process.”).
The aforementioned claims also recite additional elements including a “memory” for storing executable instructions, a “processor” for executing the method, a plurality of “applications” for providing ad content; and a “mobile object” for receiving the output data. These limitations are recited at a high level of generality, and appear to be nothing more than generic computer components. Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110 USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at 1984.
Furthermore, looking at the elements individually and in combination, under Step 2A, Prong Two, the claims as a whole do not integrate the judicial exception into a practical application because they fail to: improve the functioning of a computer or a technical field, apply the judicial exception in the treatment or prophylaxis of a disease, apply the judicial exception with a particular machine, effect a transformation or reduction of a particular article to a different state or thing, or apply the judicial exception beyond generally linking the use of the judicial exception to a particular technological environment. Rather, the claims merely use a computer as a tool to perform the abstract idea(s), and/or add insignificant extra-solution activity to the judicial exception, and/or generally link the use of the judicial exception to a particular technological environment (e.g. a generic computer network).
Next, under Step 2B, the claims do 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 an ordered combination, do not amount to significantly more than the abstract idea. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Simply put, as noted above, there is no indication that the combination of elements improves the functioning of a computer (or any other technology), and their collective functions merely provide conventional computer implementation.
Additionally, pursuant to the requirement under Berkheimer, the following citations are provided to demonstrate that the additional elements, identified as extra-solution activity, amount to activities that are well-understood, routine, and conventional. See MPEP 2106.05(d).
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; 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).
Thus, taken alone and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea), and are ineligible under 35 USC 101.
Claims 3-8 and 11-13 are dependent on the aforementioned independent claims, and include all the limitations contained therein. These claims do not recite any additional technical elements, and simply disclose additional limitations that further limit the abstract idea with details regarding the content, performance data, analyzing the data, calculating the effectiveness of the targeted content, acquiring travel information, identifying a recipient for the content information, and what the content information includes. Thus, the dependent claims merely provide additional non-structural details that fail to meaningfully limit the claims or the abstract idea(s).
Therefore, claims 1 and 3-13 are not drawn to eligible subject matter, as they are directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 9-10, and 12-13 are rejected under 35 USC 103 as being unpatentable over Zavesky (20190362377) in view of So (20210256559).
Claims 1 and 9-10: Zavesky discloses a system, method, and computer-readable medium comprising:
acquiring, using a processor, a plurality of pieces of content information as output target information output to a mobile object from a plurality of applications capable of providing content information (Figs. 1-2; Paragraphs 25 and 27. The content server receives program content and advertising content from various content sources, the content to be delivered to user mobile devices.);
outputting, using the processor, and reproducing a piece of content information that is at least part of the plurality of pieces of content information to a mobile object in accordance with a priority determined based on a predetermined condition (Fig. 2; Paragraphs 27-28, 37, and 39-41. The content is distributed to user devices based on predetermined criteria set forth in a contract regarding the ad placement.);
generating, using the processor, performance information as feedback information to each of the plurality of application from which the content information is acquired, and providing feedback that corresponds to the generated performance information to each of the plurality of applications, the performance information indicating whether or not the content information has been reproduced and output to the mobile object (Paragraph 17. The ads are presented at a user device. The system then provides a notice to a provider of the ad content that verifies the presentation of the ad on the mobile device.);
wherein the generating the performance information process further comprises: generating, using the processor, as the performance information about reproduction output of the plurality of pieces of content information, an information about reproduction output within a range indicated by the range information (Paragraph 17. The system notifies the ad content provider about the ad placement within a period (range) of time.); and
generating information about reproduction output indicating whether the plurality of pieces of content information has been output and reproduced to the mobile object within the range or has been rejected without being output and reproduced to the mobile object within the range, based on the performance information (Fig. 2B; Paragraphs 16-17. The notice that is provided to the content provider verifies the presentation of the ad on a user’s device within a range of time/duration of presentation.).
As noted above, Zavesky describes a method for outputting content in accordance with a predetermined range (in the form of a time period), but does not appear to explicitly describe a method for outputting content in accordance with a priority and a range (in the form of a time period), but does not explicitly disclose a method wherein the content information is associated with range information indicating a range that includes at least one of a geographical range, a travel distance range of the mobile object, a passing area range of the mobile object, and a speed range of the mobile object for reproduction output to the mobile object.
So, however, discloses a method wherein the content information is associated with range information indicating a range that includes at least one of a geographical range, a travel distance range of the mobile object, a passing area range of the mobile object, and a speed range of the mobile object for reproduction output to the mobile object (Fig. 4; Paragraphs 14, 54, 57, 75, and 84. Advertising content is output to mobile devices (cars) based on a geographical range and/or travel distance.).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to combine this feature of So with those of Zavesky. One would have been motivated to do this in order to target ads to users based on their location.
Claim 12: The Zavesky/So combination discloses those limitations cited above.
So, however, further discloses a method wherein a sensor included in the mobile object is configured to acquire travel information, wherein the process further comprises identifying a recipient mobile object to which the content information is distributed based on the travel information. (Fig. 4; Paragraph 40 and 42-43. A sensor device on the vehicle obtains the position of the vehicle and the current position of other vehicles. Targeted ads with specific preconditions are then sent to the vehicle based on their travel position.).
The rationale for combining So with Zavesky is articulated above and reincorporated herein.
Claim 13: The Zavesky/So combination discloses those limitations cited above. Zavesky, however, further discloses a method wherein the content information includes at least one of tourist information, store guidance and advertisement information. (Paragraphs 16-17. The content that is sent to the mobile units contains ads.)
The rationale for combining So with Cho is articulated above and reincorporated herein.
Claim 3 is rejected under 35 USC 103 as being unpatentable over Zavesky/So in view of Cho (20120075420).
The Zavesky/So combination discloses those limitations cited above, but does not appear to explicitly describe a method wherein when the performance information indicates that the content information has been reproduced and output in the range, information indicating a range in which the content information has been actually reproduced and output, within the ranges, is generated as the output target information.
Cho, however, further discloses a method wherein when the performance information indicates that the content information has been reproduced and output in the range, information indicating a range in which the content information has been actually reproduced and output, within the ranges, is generated as the output target information. (Table 7; Paragraphs 88, 98, 184, and 187. The system confirms that the content has been reproduced and output during a particular time period and/or range. The unit records and displays where within the range the content was produced and output.).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to combine this feature of Cho with those of Zavesky/So. One would have been motivated to do this in order to disclose information about the success of the ad to the content provider.
Claims 4, 6 and 11 are rejected under 35 USC 103 as being unpatentable over Zavesky/So in view of Suyama (10802789).
Claim 4: The Zavesky/So combination discloses those limitations cited above, but does not appear to explicitly describe a method wherein when the performance information indicates that the content information has been rejected without being reproduced and output in the range, based on the performance information corresponding to other content information different from the content information, content information having been reproduced and output in preference to the content information in the range is identified from the other content information, and information indicating an output result about the identified content information is generated as the output target information.
Suyama, however, discloses a method wherein when the performance information indicates that the content information has been rejected without being reproduced and output in the range, based on the performance information corresponding to other content information different from the content information, content information having been reproduced and output in preference to the content information in the range is identified from the other content information, and information indicating an output result about the identified content information is generated as the output target information. (Claim 1. The system generates performance data that identifies the content that is reproducible and is not reproducible based on content management information. There reproducible content is output and displayed, whereas the non-reproducible content is not.).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to combine this feature of Suyama with those of Zavesky/So. One would have been motivated to do this in order to determine which content is being pushed through to the users and which content isn’t.
Claim 6: The Zavesky/So/Suyama combination discloses those limitations cited above. Suyama, however, further discloses a method wherein an information indicating a result of analysis obtained by analyzing a cause of reproduction and output of the identified content information in preference to the content information is generated as the output target information. (Claim 1. The system generates a result of the data analysis of what data was reproducible and output and what data wasn’t).
The rationale for combining Suyama with Cho/So is articulated above and reincorporated herein.
Claim 11: The Cho/So/Suyama combination discloses those limitations cited above. Suyama, however, further discloses a method wherein the information indicating the result of the analysis is generated based on the range information and meta-information associated with the identified content information. (Claim 1. The system analyzes what content is capable of being reproduced and output, and generates the results of the analysis as a list).
The rationale for combining Suyama with Cho/So is articulated above and reincorporated herein.
Claim 5 is rejected under 35 USC 103 as being unpatentable over Zavesky/So/Suyama in view of Cho.
The Zavesky/So/Suyama combination discloses those limitations cited above. Cho, however, further describes a method wherein, for the information indicating the output result, identification information capable of identifying an application having provided the identified content information and information indicating a range within the range where the content information has been actually reproduced and output are generated as the output target information. (Table 7; Paragraphs 11, 14, and 71. The reproduction and output of content is confirmed by the system and notifies a provider whether or not the content was inserted into a data stream during a period of time).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the filing data to combine this feature of Cho with those of Zavesky/So/Suyama. One would have been motivated to do this in order to determine which ads were successful in being provided to the user.
Claims 7-8 are rejected under 35 USC 103 as being unpatentable over Zavesky/So in view of Pearch (20050021396).
Claim 7: The Zavesky/So combination discloses those limitations cited above, but does not appear to explicitly describe a method further comprising calculating advertising effectiveness of output of the content information based on action information about a user of an output destination mobile object in which the content information has been reproduced and output, wherein the output target information further comprises information about the calculated advertising effectiveness.
Pearch, however, discloses a method further comprising calculating advertising effectiveness of output of the content information based on action information about a user of an output destination mobile object in which the content information has been reproduced and output, wherein the output target information further comprises information about the calculated advertising effectiveness. (Paragraphs 7-8 and 10. The system determines a rating based on a percentage of the available audience that make up the viewing at a particular time. The system also calculates a score associated with an ad campaign that indicates its effectiveness.).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to combine this feature of Pearch with those of Zavesky/So. One would have been motivated to do this in order to determine the cost effectiveness of an ad campaign (Pearch, Paragraph 8).
Claim 8: The Zavesky/So combination discloses those limitations cited above, but does not appear to explicitly describe a method wherein the advertising effectiveness is calculated for each piece of the content information, and the output target information including comparison information capable of comparing the advertising effectiveness between applications that provide the content information is generated.
Pearch, however, discloses a method wherein the advertising effectiveness is calculated for each piece of the content information, and the output target information including comparison information capable of comparing the advertising effectiveness between applications that provide the content information is generated. (Paragraphs 8 and 10. The system calculates a quality score for the ads and provides metrics assessing different characteristics of the ads from different data sources).
The rationale for combining Pearch with Zavesky/So is articulated above and reincorporated herein.
Other Relevant Prior Art
Though not relied upon in the above rejection, the following references are noted as being relevant to Applicant’s disclosure.
Hirae et al. (10206009), directed to a content processing device and content processing system.
Park et al. (9807360), directed to a method and apparatus for reproducing content.
Park et al. (20150229899), directed to a method and apparatus for reproducing content.
Kobayashi et al. (10795326), directed to an information processing apparatus and method.
Response to Arguments
Applicant’s arguments regarding the sufficiency of the claims under 35 USC 101 remain unpersuasive.
First, Applicant once again attempts to argue that the claims are not directed to an abstract idea. However, as noted above, the amended claims describe a method for acquiring ads; outputting and reproducing the ads to a user’s mobile device according to a range; generating feedback information about whether or not the ads were reproduced and output to users; and providing the feedback to the ad sources. Notwithstanding Applicant’s attempts to portray the claims in a more technical light, the invention is clearly directed to a method of organizing human activity.
Next, Applicant argues that the claims disclose a technical improvement for managing content output in mobile environments to prevent interference. However, none of the claimed features contain any technical features that would indicate how they’re taking place. In fact, the invention appears to be nothing more than the automation of an otherwise manual process. For example, an ad publisher receives a number of ads from ad agencies to publish in a magazine. The publisher decides which ones to publish (based on various criteria), generates feedback on which ads were published, and provides the associated feedback to the respective advertisers who provided the ad content to the publisher.
Furthermore, Applicant points to paragraph 55 of the specification to point to the notion that the claims implement a technical process. Examiner disagrees. The cited section of the specification merely states that the content is output according to a calculated priority based on various factors. This is decidedly not a technical feature and/or improvement.
Thus, contrary to Applicant’s assertions, Examiner finds that the “improvement” to which the Applicant refers is a business improvement rather than an improvement to a technological or technical field. Furthermore, Applicant has not provided any evidence that the programming related to their “improvement” would entail anything atypical from conventional programming. And, as the Federal Circuit clearly stated, “after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1256 (Fed. Cir. 2014).
Furthermore, there is no indication in the specification that any technologically novel or inventive hardware is required to perform the method. See Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016); see also Enfish, 822 F.3d. at 1336 (focusing on whether the claim is “an improvement to [the] computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity”). Simply put, “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359); see also Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d at 1367 (“claiming the improved speed or efficiency inherent with applying the abstract idea on a computer [does not] provide a sufficient inventive concept”). Thus, in sum, “the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.” Elec. Power Grp., 830 F.3d at 1354.
Therefore, for at least these reasons, the rejection under 35 USC 101 is sustained.
Applicant’s arguments regarding the rejections under 35 USC 103 are rendered moot in view of the new grounds of rejection, which were necessitated by the amendments.
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 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 CHRISTOPHER BUSCH whose telephone number is (571)270-7953. The examiner can normally be reached M-F 10-7.
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/CHRISTOPHER C BUSCH/Examiner, Art Unit 3621
/WASEEM ASHRAF/Supervisory Patent Examiner, Art Unit 3621