DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The following Office Action is responsive to the remarks received on January 13, 2026.
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, 3-9, 11, 13-19, and 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
Step 1: Claims 1 and 3-9 are directed towards a method, claims 11 and 13-19 are directed towards a non-transitory computer-readable storage medium, claim 21 is directed towards a system. Thus, these claims, on their face, are directed to one of the statutory categories of 35 U.S.C. § 101.
Step 2A - Prong One: As 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(s) recites a judicial exception; that is, whether the claim(s) set forth or describe a law of nature, natural
phenomenon, or abstract idea. 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." Claim 1 is presented here as a representative claim for specific analysis (The underlined claim terms here are interpreted as additional elements beyond the abstract idea and are further analyzed under Step 2A-Prong Two):
A method for delivering digital components associated with content to a user, comprising:
determining, by one or more processors, declared preferences of a user with respect to a
subject for the content;
determining, by the one or more processors, inferred preferences of the user with respect to
the subject;
merging, by the one or more processors, the declared and inferred preferences of the users into
a merged preference profile, wherein the merging comprises:
determining, by the one or more processors, that there is a conflict between at least one of the
declared preferences and at least one of the inferred preferences with respect to the subject;
selecting, by the one or more processors, the at least one declared preference over the at least
one inferred preference to be included in the merged preference profile to resolve the conflict;
storing, by the one or more processors, the at least one declared preference; and
discarding, by the one or more processors, the at least one inferred preference;
receiving, by the one or more processors, a request for at least one digital component
associated with the subject for displaying on a webpage;
identifying, by the one or more processors, the at least one digital component based on the
merged preference profile; and
selecting, by the one or more processors, at least one digital component for displaying on the webpage.
The claims here are based on the recitation of an abstract idea (i.e. recitation other than the additional elements delineated here with underlining and further addressed per Step 2B - Prong Two). The claims recite the abstract idea of sending and receiving data to perform a marketing/advertising campaign which falls within certain methods 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. Refer to MPEP 2106.04(a)(2) II. A-C.
Additional Independent Claims: The analysis of claim 1 is applicable to the additional independent claims 11 and 21 as these additional claims comprise alternate embodiments that implement the same steps of the method of the claim analyzed above. The additional independent claims recite the additional elements of a non-transitory computer-readable storage medium and a system.
Dependent Claims: Dependent claims 3-9 and 13-19 recite the same additional elements as the parent claim(s) as well as and/or fail to recite any additional elements. Therefore, the identified claims fall within the subject matter groupings of abstract ideas enumerated in MPEP 2106.04(a)(2). Thus, the analysis proceeds to Prong Two to evaluate whether the claim integrates the abstract idea into a practical application.
Step 2A - Prong Two: As per MPEP 2106.04.II.A.2, 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"). Thus, Prong Two thus distinguishes claims that are "directed to" the recited judicial exception from claims that are not "directed to" the recited judicial exception.
The claims offer the additional elements of: a computer-implemented, a non-transitory computer-readable storage medium, a system; and one or more processors, as well as storing and receiving data. It would have been readily apparent to one having ordinary skill in the art (PHOSITA) at the time the invention was filed that the additional elements represent generic computing devices, as well as functions that have been deemed insignificant extra-solution activity per MPEP 2106.05(g). The additional element(s) are simply utilized as generic computing tools to implement the abstract idea, and carrying out generic computing functions. Figure 10 and its related text and Paragraphs 0082 and 0086 of the specification (US Patent Application Publication No. 2025/0061490 A1 - hereinafter Specification and/or disclosure) detail any combination of a generic computer system program to perform the method). Thus, describing generic computer components. Merely adding generic hardware and computer components to perform abstract ideas does not integrate those ideas into a practical application. See Alice Corp., 573 U.S. at 223 (The "mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention."); see also McRO, Inc. V. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) ("The abstract idea exception prevents patenting a result where 'it matters not by what process or machinery the result is accomplished.) (quoting O'Reilly V. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). Therefore, the claims amount to no more than a mere method, system, and/or computer program product to implement the abstract idea on a generic computer system. See MPEP § 2106.05(f). Furthermore, the claims appear to be a solution to a commercial/business problem of detecting fraudulent activity in advertisement systems.
The ordered combination of these additional elements amounts to generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)). The ordered combination offers nothing more than employing a generic configuration of computer devices and computer functions. The claims do not amount to a practical application, similar to how limiting the abstract idea in Flook to petrochemical and oil-refining industries was insufficient. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. (MPEP 2106.05(f) Mere Instructions To Apply An Exception).
Step 2B: As per MPEP 2106.05, the additional elements are analyzed, both individually and in combination, to determine whether an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim, as a whole, amounts to significantly more than the judicial exception itself. The analysis under Step 2B does not consider the elements describing the abstract ideas that are set forth above in Step 2A. Instead, the analysis only assesses the claim limitations other than the invention's use of the ineligible concepts to which the claims are directed. The court's precedent has consistently employed this same approach, and as a matter of law, narrowing or reformulating an abstract idea does not add "significantly more" to it. BSG Tech LLC V. Buyseasons, Inc., 899 F.3d 1281 (Fed. Cir. 2018). Also receiving and transmitting data over a network is a well-known, routine, and conventional computer functionality (Symantec), and processing that data network is a well-known, routine, and conventional computer functionality (Versata Dev. Group, Inc. V. SAP Am), and storing data and electronic recordkeeping is a well-known, routine, and conventional computer functionality (Alice Corp). As the claims do not contain additional elements other than those set forth above in Step 2A, the analysis is complete and the claims are found to be absent additional elements that amount to significantly more than the judicial exception itself.
The dependent claims do not include any additional elements, and only further limit the abstract idea.
Potentially Allowable Subject Matter
Claims 1, 3-9, 11, 13-19, and 21 have not received a prior art rejection. The prior art fails to teach determining both declared and inferred preferences of a user “with respect to a subject for the content” while also merging the declared and inferred preferences, prioritizing the declared over the inferred preferences during the merge. Previously cited reference Zhou teaches using declared and inferred preferences for user contact information, but not for a subject for the content. Xia (CN 103179205) teaches merging declared and inferred user preferences for content, but does not teach discarding inferred data. Mickley et al. (US 2024/0028025) teaches discarding unneeded data prior to storing, to minimize downstream processing. However, it would not have been obvious to one of ordinary skill in the art before the effective filing date to combine these three references, absent hindsight rationale.
Response to Arguments
Applicant's arguments filed January 13, 2026 have been fully considered but they are not persuasive.
Applicant initially argues that the claims are eligible under step 2B, and that the specific ordered combination of detecting a conflict between distinct data types is more than “storing data.” Examiner respectfully disagrees. The distinct data types are merely pieces of information from two different columns of a table, and detecting a conflict is part of the abstract idea of optimizing the data for improved targeting of content. As demonstrated above, storing data is considered insignificant extra-solution activity and is also deemed well-understood, routine, and conventional by the MPEP. Therefore, the storing of data after the conflict has been detected is merely insignificant extra-solution activity after the abstract idea of detecting the conflict occurs.
The examiner notes that in the previous office action, claim limitations were underlined in the abstract idea analysis that corresponded to additional elements. However, the claim amendments were also underlined as they were copied verbatim from the amended claims submitted, which may have led to confusion. The step 2A prong II and 2B analysis clearly identified and addressed the additional elements, and this additional underlined text has been clarified above.
Therefore, as noted above, the step of discarding is not considered an additional element, and therefore does not merit analysis as to whether it is well-understood, routine, and conventional.
Applicant further argues that the claims recite a technical solution to a technical problem. The technical solution identified by the Applicant, discarding, is a part of the abstract idea. Improvements to the abstract idea are still abstract, and cannot be considered a practical application or significantly more than the abstract idea. Even if this element were to be analyzed as additional, Mickley (US 2024/0028025) teaches the benefits of discarding unnecessary data during a merge to reduce downstream processing needs (see paragraph 56). It is therefore not an unconventional or inventive concept to reduce network bandwidth consumption and processor overhead through specific data structure manipulation, as Applicant argues.
The claims are not analogous to those of Finjan because that decision indicated that the specification identified a problem not solved in the prior art, and tied the claim language to that improvement. Because the problem identified in the instant specification is not novel compared to the prior art (see Mickley), Finjan is not applicable.
The claims are also not analogous to those of Enfish because that decision indicated the claims eligible at step 2A prong I, i.e. they did not contain an abstract idea. As the instant claims recite an abstract idea, they are not analogous to those of Enfish.
Applicant’s arguments with reference to the 103 rejections are overcome in light of the potentially allowable subject matter indicated above. However, indicating that the claims overcome the prior art does not automatically mean that the claims are eligible in view of 35 USC 101, see above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ILANA L SPAR/ Supervisory Patent Examiner, Art Unit 3622