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
This Office Action is in response to the Amendment filed on 03/02/2026.
Claims 1, 10-11, 13-16, and 20 are currently amended.
Claims 1-20 are currently pending and examined below.
Claim Objections
Claim 6 is objected to because of the following informalities: Claim 6 recites the limitation “wherein the controller further: is further configured to.” Appropriate correction is required.
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 1-20 is/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 nature phenomenon, or an abstract idea) without significantly more.
Step 1:
Claims 1-20 is/are directed towards a statutory category (i.e., a process, machine, manufacture, or composition of matter) (Step 1, Yes).
Step 2A Prong One:
Claim 1 recites (additional elements underlined):
A marketplace server comprising:
a communication interface configured to receive advertisement sale information including personal information, advertisement area information, and advertisement use information from a user device that displays advertisements, the advertisement sale information representing an offer to display a plurality of advertisements on the user device on an indicated advertisement space;
a database configured to store the advertisement sale information; and
a controller configured to:
receive an advertisement purchase request for the advertisement sale information from an advertisement buyer based on the advertisement sale information through an advertiser service server, the advertisement purchase request representing an acceptance of the advertisement sale information to display the plurality of advertisements on the user device on the indicated advertisement space, and
transmit advertisement purchase confirmation information including a user reward to the user device according to the received advertisement purchase request.
The limitations outlined above also describe or set forth an advertising/marketing activity. Advertising/marketing fall within the certain method of organizing human activity enumerated grouping of abstract ideas. The limitations outlined above also describe or set forth a fundamental economic principle or practice because advertising/marketing is related to commerce and economy. The limitations outlined above also describe or set forth a commercial interaction (e.g., advertising, marketing or sales activities or behaviors, business relations). The limitations outlined above also describe or set forth the managing of personal behavior or relationships or interactions between people. Therefore, the claim recites a certain method of organizing human activity (Step 2A Prong One, Yes).
Step 2A Prong Two:
In Step 2A Prong Two, the additional element(s) outlined above are recited at a high level of generality, and under the broadest reasonable interpretation, are generic computer(s) and/or generic computer component(s) that perform generic computer functions. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional element(s) amount adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computer(s) and/or generic computer component(s) does not integrate the judicial exception similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. The Examiner notes that “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter" (see pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use (e.g., in a computer environment). The courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. There is no indication that the combination of elements improves the functioning of a computer, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claims as a whole is more than a drafting effort designed to monopolize the exception. Their collective functions merely provide generic computer implementation (Step 2A Prong Two, No).
Step 2B:
In Step 2B, the additional elements also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong Two. The Examiner notes that revised Step 2A Prong Two overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Their collective functions merely provide generic computer implementation (Step 2B, No).
Claims 2-9 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 1 (i.e., certain methods of organizing human activities).
Claim 2 recites the additional elements “wherein the controller is further configured to”, “from the advertiser service server,” and “devices”. Claim 3 recites the additional elements “wherein the controller is further configured to” and “advertiser service server.” Claim 4 recites the additional element “wherein the controller is further configured to.” Claim 6 recites the additional elements “wherein the user device and the marketplace server are connected through a blockchain network, wherein the marketplace server and the advertiser server are connected through the blockchain network, and wherein the controller further: is further configured to,” “automatically”, “device”, and “though a smart contract.” Claim 7 “wherein the controller is further configured to”, a human non-fungible token (NFT),” and “from the user device.” Claim 8 recites the additional element “of the user device on a screen of the user device.” However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claim 5 recites the additional elements “wherein the controller is further configured to”, “transmit a control signal to an advertisement distribution platform server to”, and “device”. However, in Step 2A Prong Two, these additional element also does not integrate the judicial exception into a practical application because it amounts to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use. The additional element “transmit a control signal to an advertisement distribution platform server to” also amounts to adding insignificant extra-solution activity. In Step 2B, the additional element “transmit a control signal to an advertisement distribution platform server to” also does not amount to significantly more because it amounts to simply appending well-understood, routine, and conventional activity as evidenced by at least MPEP 2106.05(d)(II) (e.g., receiving or transmitting data over a network, using the Internet to gather data, using an intermediary computer to forward information, sending messages over a network, computer receives and sends information over a network). With regard to the remaining additional elements, they also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong Two. The Examiner notes that revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. The additional elements amount no more than a mere instruction to apply the abstract idea using generic computer(s) and/or generic computer component(s) (Step 2B, No).
Claim 9 does not recite any other additional elements. Therefore, for the same reasons explained above with respect to claim 1, claim 9 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claim 10 recites (additional elements underlined):
A mobile terminal comprising:
a display;
a communication interface configured to communicate with a marketplace server; and
a processor configured to:
display an advertisement service screen with advertisement sale information including personal information of a user using the mobile terminal, advertisement area information indicating an advertisement space on the mobile terminal that displays an advertisement, and advertisement use information indicating an advertisement duration and a reward cost to the user for viewing the advertisement, the advertisement sale information representing an offer to display a plurality of advertisements on the display on an indicated advertisement space,
transmit, via the communication interface, the advertisement sale information to the marketplace server including the personal information, advertisement area information, and advertisement use information input in the displayed advertisement service screen,
receive a targeted advertisement from an advertisement distribution platform server purchased by an advertisement buyer based on the transmitted advertisement sale information,
display, via the display, the received targeted advertisement on the indicated advertisement space of the mobile terminal identified in the advertisement area information, and
receive advertisement purchase confirmation information including a user reward for viewing the received targeted advertisement.
For the same reasons explained above with respect to claim 1, claim 10 also recite an abstract idea in Step 2A Prong One. For the same reasons explained above with respect to claim 1, claim 10 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claims 11-19 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 10 (i.e., certain methods of organizing human activities).
Claim 11 recites the additional elements “on the mobile terminal that displays” and “within an icon displayed on the display.” Claim 12 recites the additional element “wherein the icon is a home screen icon.” Claim 13 recites the additional elements “on the mobile terminal that displays,” “an always-on-display, a home screen display, or another display screen different than the always-on-display screen and the home screen display.” Claim 14 recites the additional elements “advertisement service screen,” “the processor is further configured to: display an initial screen on the display according to execution of an advertisement service application on the mobile terminal, wherein the advertisement service application,” “on the mobile terminal,” after the initial screen is displayed, display a personal information setting screen including,” and “using the mobile terminal.” Claim 15 recites the additional elements “the advertisement screen” and “the processor is further configured to: display an advertisement space selection screen including an always-on-display screen option that displays the advertisement on the always-on-display screen of the mobile terminal, a home screen option that displays the advertisement on the home screen of the mobile terminal, a smart board screen option that displays the advertisement on a smart board screen of the mobile terminal, an additional display option that displays the advertisement on an additional display of the mobile terminal, and a widget screen option that displays the advertisement on the widget screen of the mobile terminal.” Claim 16 recites the additional elements “setting screen includes options configured to share emails, text messages, phone call and GPS locations with the marketplace server configured to.” Claim 17 recites the additional elements “wherein the processor is configured to: display an editing screen,” “an always-on-display screen,” and “editing screen.” Claim 18 recites the additional elements “a banner type, a notification type, and a VOD type.” However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claim 19 does not recite any other additional elements. Therefore, for the same reasons explained above with respect to claim 10, claim 19 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claim 20 recites (additional elements underlined):
A method of operating a marketplace server, the method comprising:
receiving, via the marketplace server, advertisement sale information including personal information, advertisement area information, and advertisement use information input by a user from a user device that displays advertisements, the advertisement sale information representing an offer to display a plurality of advertisements on the user device on an indicated advertisement space;
storing the advertisement sale information in a memory associated with the marketplace server;
receiving, via the marketplace server, an advertisement purchase request for a targeted advertisement for the advertisement sale information from an advertiser service server, the advertisement purchase request representing an acceptance of the advertisement sale information to display the plurality of advertisements on the user device on the indicated advertisement space; and
transmitting, via the marketplace server, advertisement purchase confirmation information including a compensation to the user device according to the received advertisement purchase request.
For the same reasons explained above with respect to claim 1, claim 20 also recites an abstract idea in Step 2A Prong One. For the same reasons explained above with respect to claim 1, claim 20 also does not integrate the judicial exception into a practical application or amount to significantly more.
Prior Art
The Examiner notes that after a comprehensive search on the claims as currently amended, the claims currently overcome prior art. While the prior art teach some of the elements of the claimed invention, one of ordinary skill in the art would not have arrived at Applicant’s claimed invention unless one was using Applicant’s claims and specification as a roadmap, thus using impermissible hindsight. The closest prior art found to date are the following:
Tumen et al. (US 2016/0078490 A1) discloses a user-controlled advertising system including a user data storage including a user profile associated with the user device; a controller in communication with a network interface and a user data storage; memory instructions that cause the controller to: receive a request from the user device identifying content from a content provider; retrieve the content from the content provider; identify first advertising in the content; send an advertising request to the one or more advertiser systems, the advertising request identifying demographic information from the user profile; receive, from the one or more advertiser systems, a set of prospective advertisements, wherein each prospective advertisement is associated with a rate; select an advertisement from the set of prospective advertisements associated with a highest rate; when the selected advertisement exceeds a reserve rate defined by the user profile; replace the first advertising with the selected advertising; and provide the content to the user device. However, Tumen does not receive advertisement sale information including personal information, advertisement area information, and advertisement use information from a user device that displays advertisements, the advertisement sale information representing an offer to display a plurality of advertisements on the user device on an indicated advertisement space; receive an advertisement purchase request for the advertisement sale information from an advertisement buyer based on the advertisement sale information through an advertiser service server, the advertisement purchase request representing an acceptance of the advertisement sale information to display the plurality of advertisements on the user device on the indicated advertisement space; and transmit advertisement purchase confirmation information including a user reward to the user device according to the received advertisement purchase request in the context of the claims.
Emmanuel et al. (US 2022/0351270 A1) discloses systems and methods to monitor consumption of a content item at a user device. Based on the monitored consumption, a token is generated, where the token represents an attribute of the content item and demographic data of a user associated with the user device. Access to the token is granted to a first content provider and denied to a second content provider based on received user input, and the token is converted into a first format. Converted token data associated with the first format is stored in a distributed ledger accessible to the first content provider and the second content provider, where the first content provider is capable of recovering the token from the converted token data, whereas the second content provider is not capable of such recovering. A content recommendation is received from the first content provider, based on the token recovered by the first content provider. However, Emmanual also does not disclose or render obvious the limitations outlined above.
Checo (US 2024/0070711 A1) discloses a method of incentivizing a consumer to share data useful for ad targeting includes providing a mobile application with a dedicated digital keyboard and an integrated blockchain wallet; collecting first person data typed into the keyboard according to a smart contract; storing the data on a data storage medium; and rewarding the consumer for sharing the data. A system for incentivizing the consumer to share the data includes a mobile computing device having a processor and a memory. A mobile application resident on the memory includes a keyboard graphical interface integrated with a smart contract dashboard and a cryptocurrency wallet address. The consumer can generate a passive income. The keyboard system can replace cookies as a method of obtaining 1st party data for advertisers. However, Checo also does not disclose or render obvious the limitations outlined above.
Sweeney et al. (US 2021/0192075 A1) discloses the concept of awarding a user with points in exchange for access to the user’s data by a marketing system. However, Sweeny also does not disclose or render obvious the limitations outlined above.
Holbrook (US 2006/0161535 A1) discloses the concept of advertisement being placed inside icons. However, Sweeny also does not disclose or render obvious the limitations outlined above.
Mochrie et al. (US 2022/0245675 A1) relates generally to mobile devices and mobile device software, and more particularly to a system, method and devices for displaying an advertisement, with operating system integration, outside the confines of an application. However, Mochrie also does not disclose or render obvious the above limitations.
SEO et al. (US 2024/0221016 A1) discloses a system for providing a reward service using an insertion-type reward module, and a method thereof. A system for providing a reward service according to some embodiments of the present disclosure may comprise: a reward module which is inserted into an app, displays a predetermined indicator while the app is running, displays advertisement content in response to an input of a user associated with the displayed indicator, and transmits a request for accumulating rewards calculated according to predetermined conditions to a reward service providing server; and the reward service providing server which accumulates the calculated rewards corresponding to the user in response to the accumulation request. However, SEO also does not disclose or render obvious the limitations outlined above.
Response to Arguments
Applicant's arguments filed 03/02/2025 have been fully considered but they are not persuasive. In the Remarks, Applicant argues:
Argument A: “Just as an initial issue, the Office Action has once again failed to identify what ‘the abstract idea’ of the present claims is.”
In response, the Examiner respectfully disagrees. MPEP 2106.04(I) states “it is sufficient for this analysis for the examiner to identify that the claimed concept (the specific claim limitation(s) that the examiner believes may recite an exception) aligns with at least one judicial exception.” MPEP 2106.04(a) further states “Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above.” Here, there Office Action clearly identifies the specific limitations that describe or set forth the abstract idea in Prong One, and compares the specific limitations to the enumerated groupings of abstract idea.
Argument B: “Further, the instant application describes the real-time issues discussed throughout. For example, paragraph [0010] describes accurate targeted advertisements and efficient advertisement cost execution being possible through real-time advertisement measurement, resulting in no cost loss due to fraud. Paragraph [0011] also describes "it is possible to respond to follow-up marketing activity by checking the customer's feedback after watching the advertisement in real time [and] [m]onetization can be possible in exchange for providing advertising area and data directly from the user's point of view." These are real advantages that represent an improvement in targeted advertising not generic to internet-based advertising in general. Accordingly, the present claims represent a non-abstract and practical improvement that the Office does not contest. […] [T]he instant claims absolutely do address the problem of providing targeted advertising over the internet in real time while addressing possible fraud issues. ”
In response, the Examiner respectfully disagrees. The claims here are ineligible because their innovation is an innovation in ineligible subject matter. Similar to the claimed invention in SAP, the advance here lies entirely in the realm of the abstract idea, with no plausibly alleged innovation in the non-abstract application realm. The additional elements here are recited at a high level of generality, and are merely used as tools, in their ordinary capacity, to perform the abstract idea. “Use of a computer or other machinery in its ordinary capacity for economic or other task (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more” (MPEP 2106.05(f)(2)).
Argument C: “Applicant asserts that the real and undisputed advantages discussed above represent an improvement in targeted advertising represent a concrete improvement to internet-based advertising.”
In response, the Examiner respectfully disagrees. First, “eligibility should not be evaluated based on whether the claim recites a ‘useful, concrete, and tangible result” (MPEP 2106(I)). Second, as explained above, the alleged improvement is entirely in the realm of the abstract idea (i.e., advertising/marketing). Unlike in DDR in which the claimed invention solved the business challenge of retaining website visitors that is particular to the Internet, here the claimed invention amounts to merely reciting the performance of a business practice (e.g., advertising service) along with the requirement to perform it on the Internet. The claimed invention here is not necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks. “We caution, however, that not all claims purporting to address Internet-centric challenges are eligible for patent” (see p. 22 of DDR Holdings, LLC v. Hotels.com, L.P. (Fed. Cir. 2014)).
Argument D: “The ordered combination of steps addresses a technological challenge in internet-based advertising in a field-specific way, rather than just automating a previously-known business method or human activity. Evidence to this end is found in the present specification (as discussed above) and is proved non-generic in the discussion below with the respect to the rejections under 35 U.S.C. §§ 102 and 103. Thus, when considered as an ordered combination of elements, the specific recited features of the present claims do not merely recite any abstract idea, and the advantages above ‘transform the abstract idea of filtering content into a particular, practical application of that abstract idea.’”
In response, the Examiner respectfully disagrees. First, “the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether subject matter of a claim falls within the § 101” (MPEP 2106.05(I)). Second, unlike in Bascom in which the particular arrangement of known elements provided a technical improvement over prior art ways of filtering content, here looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claims as a whole is more than a drafting effort designed to monopolize the exception. Their collective functions merely provide generic computer implementation. The claims at issue do not require any non-conventional computer, network or display components, or even a non-conventional and non-generic arrangement of known conventional pieces. The claims at issue merely call for the performance of the claimed invention on a set of generic computer components and display devices.
Argument E: “Turning to Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018), the holding of this case (as with DDR Holdings and BASCOM). That is, as discussed above, the present claims are not directed to an abstract idea but to a specific technological improvement in how a computer system operates or interfaces with users, particularly in a way that enhances efficiency, usability, and performance in the field of internet advertising. More particularly, as with Core Wireless, the present claims are directed to "an improved user interface" and other features that: (1) provide accurate targeted advertisements and efficient advertisement cost execution being possible through real-time advertisement measurement, resulting in no cost loss due to fraud, and (2) make it possible to respond to follow-up marketing activity by checking customer feedback after watching the advertisement in real time, whereby (3) monetization is possible in exchange for providing advertising area and data directly from the user's point of view. That is, the present claims are not merely a generic result or abstract process (e.g., not just ‘organizing data’ or ‘displaying information’) but require a particular implementation by reciting a concrete, non-generic mechanism.”
In response, the Examiner respectfully disagrees. Unlike the claims in Core Wireless, Applicant’s claims do not integrate the judicial exception into a practical application or amount to significantly more. In Core Wireless, the claims recited an improved user interface rather than the generic idea of summarizing information that already existed. The improvements were (1) an application summary that can be reached directly from the menu, (2) the application summary displays a limited list of data offered within the one or more applications, each of the data in the list being selectable to launch the respective application, and (3) the application summary is displayed while the one or more applications are in an un-launched state. These limitations disclose a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer. The specification confirmed that the claims recited an improved user interface for electronic devices, particularly those with small screens. Rather than requiring a user to drill down through many layers to get to desired data or functionality on small devices, the invention improves the efficiency of using the electronic devices by bringing together a limited list of common functions and commonly accessed stored data, which can be accessed directly from the main menu. The summary window allows the user to see the most relevant data or functions without actually opening the application up. Here, the user interface is merely used as a tool, in its ordinary capacity, to perform the abstract idea. “Use of a computer or other machinery in its ordinary capacity for economic or other task (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more” (MPEP 2106.05(f)(2)).
With regard to the argument that the claimed invention recites a concrete non-generic mechanism, the Examiner respectfully disagrees. The Examiner notes that “eligibility should not be evaluated based on whether the claim recites a ‘useful, concrete, and tangible result’” (MPEP 2106(I)).
Therefore, the claims as currently amended still do not integrate the judicial exception into a practical application or amount to significantly more.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAM REFAI whose telephone number is (313)446-4822. The examiner can normally be reached M-F 9:00am-6:00pm.
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/SAM REFAI/Primary Examiner, Art Unit 3621
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