DETAILED ACTION
The present application, filed on 3/15/2024 is being examined under the AIA first inventor to file provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/2/2026 has been entered.
The following is a non-final Office Action on the Merits in response to Applicant’s submission.
Claims 1-2, 12, 17 are amended
Claims 3 are cancelled
Claims 21 are new
Overall, Claims 1-2, 4-21 are pending and have been considered below.
Claim Rejections - 35 USC § 101
35 USC 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 are rejected under 35 USC 101 because the claimed invention is not directed to patent eligible subject matter. The claimed matter is directed to a judicial exception, i.e. an abstract idea, not integrated into a practical application, and without significantly more.
Per Step 1 of the multi-step eligibility analysis, claims 1-11, 21 are directed to computer executable instructions stored on a non-transitory storage medium, claims 12-16 are directed to a system, and claims 17-20 are directed to a computer implemented method.
Thus, on its face, each independent claim and the associated dependent claims are directed to a statutory category of invention.
[INDEPENDENT CLAIMS]
Per Step 2A.1. Independent claim 1, (which is representative of independent claims 12, 17) is rejected under 35 USC 101 because the independent claim is directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application.
The limitations of the independent claim 1 (which is representative of independent claims 12, 17) recite an abstract idea, shown in bold below:
[A] A non-transitory machine readable medium having instructions stored thereon, the instructions which, when executed by one or more processors of an electronic device
[B] receiving an event indicating a user interaction with respect to a first application, wherein the user interaction is associated with a campaign;
[C] generating a postback data structure including a set of data and information corresponding to the user interaction;
[D] retrieving, from one or more servers, anonymity metrics associated with the campaign;
[E] determining, based on whether one or more anonymity thresholds are met by the anonymity metrics, whether to adjust the set of data included in the postback data structure, the anonymity metrics corresponding to a set of user interactions for the campaign;
[F] adjusting the set of data included in the postback data structure, based at least in part on the determining; and
[G] transmitting, after the adjusting, the postback data structure to a server associated with the campaign, the postback data structure including the set of data determined based on the anonymity metrics.
Independent claim 1 (which is representative of independent claims 12, 17) recites: generating a postback data structure and retrieving anonymity metrics ([C], [D]), determining, based on whether one or more anonymity thresholds are met by the anonymity metrics, whether to adjust the set of data included in the postback data structure ([E]); adjusting the set of data included in the postback data structure ([F]); transmitting the postback data structure to a server ([G]), which, based on the claim language and in view of the application disclosure, represents a process aimed at: “collecting user interaction metrics, anonymizing, and sending them to an advertisement server”; in view of the application specification (the term “advertisement” is disclosed 172 times and “campaign” 97 times in 36 pages) and the language of claims 2, 3 and 18, it becomes evident that the campaign is an advertisement campaign, which falls under one of the groupings of abstract ideas, as defined by the Office.
This is a combination that, under its broadest reasonable interpretation, covers agreements in the form of advertising, marketing, sales activities or behaviors, business relationships (e-commerce), which falls under Certain Methods of Organizing Human Activity, i.e., Commercial or Legal Interactions grouping of abstract ideas (see MPEP 2106.04(a)(2)).
Accordingly, it is reasonable to conclude that independent claim 1 (which is representative of independent claims 12, 17) recites an abstract idea that corresponds to a judicial exception.
Accordingly, it is reasonable to conclude that independent claim 1 (which is representative of independent claims 12, 17) recites an abstract idea that embodies a judicial exception.
[INDEPENDENT CLAIMS – Additional Elements]
Per Step 2A.2. The identified abstract idea is not integrated into a practical application because the additional elements in the independent claims only amount to instructions to apply the judicial exception to a computer, or are a general link to a technological environment (see MPEP 2106.05(f); MPEP 2106.05(h)).
For example, the added elements “from one or more servers” recite computing elements at a high level of generality, generally linking the use of a judicial exception to a particular technological environment (see MPEP 2106.05(h)), or merely using a computer as a tool to perform an abstract idea (MPEP 2106.05(f)). Further, the qualifiers “wherein the user interaction is associated with a campaign” as applied to the user interaction, are nothing more than (a) descriptive limitations of claim elements, such as describing the nature, structure and/or content of other claim elements, or (b) general links to the computing environment, which amount to instructions to “apply it,” or equivalent (MPEP 2106.05(f)).
These qualifiers of the independent claims do not preclude from carrying out the identified abstract idea “collecting user interaction metrics, anonymizing, and sending them to an advertisement server”, and do not serve to integrate the identified abstract idea into a practical application.
The additional steps in the independent claims, shown not bolded above, recite: receiving user interaction data ([B]). When considered individually, they amount to nothing more than receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”) into a practical application (see MPEP 2106.05(f)(2)).
Therefore, the additional claim elements of independent claim 1, (which is representative of independent claims 12, 17), evaluated individually, as well as a whole, as an ordered combination, do not integrate the identified abstract idea into a practical application and the claims are directed to the recited judicial exception.
Per Step 2B. Independent claim 1 (which is representative of claims independent 12, 17) does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the independent claim is reevaluated as a whole, as an ordered combination under the considerations of Step 2B, the outcome is the same like under Step 2A.2.
Overall, it is concluded that independent claims 1, 12, 17 are deemed ineligible.
[DEPENDENT CLAIMS]
Dependent claim 2, which is representative of dependent claims 3, 18, recites:
presenting a user interface element within a user interface presented by the first application, the user interface element including an advertisement,
wherein the advertisement is provided by the server associated with the campaign and an interface associated with an application store is presented in response to receiving input to select the advertisement displayed by the first application.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “collecting user interaction metrics, anonymizing, and sending them to an advertisement server”. The elements in this dependent claim are comparable to “receiving or transmitting data over a network, e.g., using the Internet to gather or provide data”, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”) into a practical application (see MPEP 2106.05(d) II))..
The dependent claim elements have the same relationship to the underlying abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”).
Therefore, dependent claim 2 (which is representative of dependent claims 3, 18) is deemed ineligible.
Dependent claim 8 recites:
in response to determining that the anonymity metrics meet a first anonymity threshold determined based on the number of non-unique combinations of data associated with the set of user interactions for the campaign, including a first additional unit of data in the set of data included in the postback data structure; and
in response to determining that the anonymity metrics meet a second anonymity threshold determined based on the number of non-unique combinations of data associated with the set of user interactions for the campaign, including a second additional unit of data in the set of data included in the postback data structure.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “collecting user interaction metrics, anonymizing, and sending them to an advertisement server”. The elements in this dependent claim are comparable to receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”).
Therefore, dependent claim 8 is deemed ineligible.
Dependent claim 9 recites:
after launch of the second application, receiving an update from the second application of a metric associated with a value of the user interaction,
wherein the metric associated with the value of the user interaction includes an indication of activity performed using the second application for a period of time after downloading the second application.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “collecting user interaction metrics, anonymizing, and sending them to an advertisement server”. The elements in this dependent claim are comparable to “receiving or transmitting data over a network, e.g., using the Internet to gather or provide data”, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”) into a practical application (see MPEP 2106.05(d) II)).
The dependent claim elements have the same relationship to the underlying abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”).
Therefore, dependent claim 9 is deemed ineligible.
Dependent claim 13 recites:
download a second application and
the one or more processors to perform operations to download the second application in response to receipt of the request to
download the second application,
wherein to download the second application includes to receive or retrieve a package of executable instructions for the second application from one or more servers associated with an application store.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “collecting user interaction metrics, anonymizing, and sending them to an advertisement server”. The elements in this dependent claim are comparable to “receiving or transmitting data over a network, e.g., using the Internet to gather or provide data”, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”) into a practical application (see MPEP 2106.05(d) II)).
The dependent claim elements have the same relationship to the underlying abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”).
Therefore, dependent claim 13 is deemed ineligible.
Dependent claim 14 recites:
launch the second application;
after launch of the second application, receive an update from the second application of a metric associated with a value of the user interaction, wherein the metric associated with the value of the user interaction includes an indication of activity performed using the second application for a period of time
after downloading the second application; start a timer in response to the update of the value of the user interaction; and
after expiration of the timer, determine whether to add the value of the user interaction-to the set of data to include in the postback data structure based on the anonymity metrics associated with the campaign.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “collecting user interaction metrics, anonymizing, and sending them to an advertisement server”. The elements in this dependent claim are comparable to receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”).
Therefore, dependent claim 14 is deemed ineligible.
Dependent claim 15 recites:
include in the postback data structure in response to determination that the anonymity metrics meet a first threshold.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “collecting user interaction metrics, anonymizing, and sending them to an advertisement server”. The elements in this dependent claim are comparable to receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”).
Therefore, dependent claim 15 is deemed ineligible.
Dependent claim 16 recites:
add an identifier of the first application to the set of data to include in the postback data structure in response to determination that the anonymity metrics meet a second threshold, the second threshold higher than the first threshold.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “collecting user interaction metrics, anonymizing, and sending them to an advertisement server”. The elements in this dependent claim are comparable to receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”).
Therefore, dependent claim 16 is deemed ineligible.
Dependent claims 4-7, 10-11, 19-21 recite:
wherein the anonymity metrics indicate a number of non-unique combinations of data associated with the set of user interactions for the campaign.
wherein the number of non-unique combinations of data associated with the set of user interactions for the campaign include a first set of non-unique combinations of data associated with the first application and a second set of non-unique combinations of data associated with a second application associated with the campaign.
wherein the first set of non-unique combinations of data includes combinations of an identifier of the first application, and identifier of the second application, an identifier associated with the campaign, and an identifier associated with the server associated with the campaign.
wherein the second set of non-unique combinations of data includes combinations of an identifier of the second application and an identifier associated with the server associated with the campaign.
wherein the first additional unit of data includes the metric associated with the value of the user interaction.
wherein second additional unit of data in the set of data includes an identifier of the first application.
wherein adjusting the set of data included in the postback data structure limits a likelihood that the server associated with the campaign can correlate the postback data structure with a specific instance of the first application.
These further elements in the dependent claims do not perform any claimed method steps. They describe the nature, structure and/or content of other claim elements – the anonymity metrics; the number of non-unique combinations of data; the first set of non-unique combinations of data; the second set of non-unique combinations of data; the first additional unit of data; the second additional unit of data; the adjusting of the data set – and as such, cannot change the nature of the identified abstract idea (“collecting user interaction metrics, anonymizing, and sending them to an advertisement server”), from a judicial exception into eligible subject matter, because they do not represent significantly more (see MPEP 2106.07). The nature, form or structure of the other claim elements themselves do not practically or significantly alter how the identified abstract idea would be performed and do not provide more than a general link to a technological environment.
Therefore, dependent claims 4-7, 10-11, 19-20 are deemed ineligible.
When the dependent claims are considered as a whole, as an ordered combination, the claim elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense. The most significant elements, which form the abstract concept, are set forth in the independent claims. The fact that the computing devices and the dependent claims are facilitating the abstract concept is not enough to confer statutory subject matter eligibility, since their individual and combined significance do not transform the identified abstract concept at the core of the claimed invention into eligible subject matter. Therefore, it is concluded that the dependent claims of the instant application, considered individually, or as a as a whole, as an ordered combination, do not amount to significantly more (see MPEP 2106.07(a)II).
In sum, Claims 1-20 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
The prior art made of record and not relied upon which, however, is considered pertinent to applicant's disclosure:
US 20200334708 A1 Knox; Andrew ZERO KNOWLEDGE BLOCKCHAIN ATTRIBUTION - A content publisher may transfer an impression token value to a user in response to the content publisher displaying an advertisement for a merchant to the user. The content publisher may record the transfer on a zero knowledge blockchain. The merchant may transfer a conversion token value to the user in response to the user making a purchase from the merchant. The merchant may record the transfer on the zero knowledge blockchain. The user may transfer the impression token value and the conversion token value to a measurement company. The measurement company may calculate attribution and lift results for the advertisement.
US 20100186885 A1 Ottleben; Michael Method for producing an orthesis - The systems and methods described herein relates to a system for allowing a consumer to track an advertisement for a product. The system includes an equipment for capturing a response by the consumer to the advertisement delivered from a first platform. The system also includes a portal, provided on a second platform, that permits the consumer to execute a purchase-related activity associated with the product of the advertisement. The system additionally includes an analysis application for generating a trigger that correlates data associated with the consumer response to data associated with the purchase-related activity. Furthermore, the system includes a server configured to display a plurality of triggers that allow the consumer to at least track the advertisement selected by the consumer from the first platform.
US 20140156381 A1 Monsees; David et al. METHODS AND SYSTEMS FOR CREATING AND MANAGING USER INTEREST LISTS FOR PROVIDING ONLINE CONTENT - Methods, systems, and apparatus for creating and managing user device interest lists for online content are provided. The method is implemented by a processor executing the instructions. The method includes providing a dynamic advertisement including a plurality of elements for display on a user device wherein each element of the dynamic advertisement is configured to receive a device interaction from the user device, receiving data representative of a device interaction with at least one of the plurality of elements, identifying an item based on the data received, and determining a marketing response based on the identified item.
US 20140279033 A1 Mullor; Miki et al. REAL-TIME INTERACTIVE DIGITAL ADVERTISING SYSTEM AND METHOD OVER MOBILE WEB MESSAGING SERVICE - An interactive digital advertising system and method may include an advertising component for generating qualified leads in response to a lead request using interactive advertising units. The advertising system may provide "real-time" matching of leads, which may be validated based on a criteria defined by the lead requestor, to the services or products offered by the lead requestor. The interactive advertising units may communicate with leads over mobile messaging services, such as short message service (SMS), instant messaging (IM) service, or the like. The advertising component may generate a unique identification code for each lead request, which responders may use to initiate an interactive screening session with the advertising unit. The advertising component may track the unique identification code, responder's caller ID, and the state of the screening session to maintain the proper sequence of interactions.
US 20110295703 A1 Flinn; Steven Dennis et al. Gesture-Responsive Advertising System and Method - A gesture-responsive system and method delivers interactive advertisements to advertisement recipients in accordance with monitored gestures and/or other behaviors, including other bodily movements. The advertisement recipient may interact with the advertisement delivery system so as to obtain additional information about the advertisement or to provide feedback, and the interactions may include gestural or oral-based interactions. Explanations of why the advertisement recipient received the advertisement may be generated and delivered by the system.
US 20120089581 A1 Gupta; Anoop et al. Informing Search Results Based on Commercial Transaction Publications - A publishing engine captures capturing commercial events and other information (collectively, "commercial information") associated with a first user and automatically notifies other users in the social network of the first user of this commercial information. The publishing engine also notifies one or more search engines of these events and information. Based on this commercial information, the search engine can augment search results of the members of the social network to include historical notifications relating to commercial transactions for similar products and/or services by others in their social network. In this manner, for example, the search engine can provide results directing the searcher to other users in their social network who have purchased such products and/or services.
US 20120089446 A1 Gupta; Anoop et al. Publishing Commercial Information in a Social Network - A publishing engine captures commercial information associated with a first user and automatically notifies other users in the first user's social network of this commercial information. The first user authorizes an e-commerce system to access his or her social network and to publish commercial information about the first user's commercial activity (e.g., a purchase or other commercial transaction) to users in the social network. By this automated notification, the notified users in the first user's social network can learn that the first user has completed a commercial transaction pertaining to a particular product or service. If a notified user is interested in a similar product or service, he or she can contact the first user to inquire about the first user's experience and information with the product or service.
Response to Amendments/Arguments
Applicant’s submitted remarks and arguments have been fully considered.
Applicant disagrees with the Office Action conclusions and asserts that the presented claims fully comply with the requirements of 35 U.S.C. § 101 regrading judicial exceptions. Further, Applicant is of the opinion that the prior art fails to teach Applicant’s invention.
Examiner respectfully disagrees in both regards.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 101.
Applicant submits:
a. The pending claims are not directed to an abstract idea.
b. The identified abstract idea is integrated into a practical application.
c. The pending claims amount to significantly more.
Furthermore, Applicant asserts that the Office has failed to meet its burden to identify the abstract idea and to establish that the identified abstract idea is not integrated into a practical application and that the pending claims do not amount to significantly more.
Examiner responds – The arguments have been considered in light of Applicants’ amendments to the claims. The arguments ARE NOT PERSUASIVE. Therefore, the rejection is maintained.
The pending claims, as a whole, are directed to an abstract idea not integrated into a practical application. This is because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05 (a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05 (b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05 (c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05 (e) and the Vanda memo).
In addition, the pending claims do not amount to significantly more than the abstract idea itself.
As such, the pending claims, when considered as a whole, are directed to an abstract idea not integrated into a practical application and not amounting to significantly more.
More specific:
Applicant submits “The Office Action fails to address or evaluate the combination of the elements of the independent claims (or the dependent claims)”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
The eligibility analysis in the instant office action concludes at Step 2A2:
Therefore, the additional claim elements of independent claim 1, (which is representative of independent claims 12, 17), evaluated individually, as well as a whole, as an ordered combination, do not integrate the identified abstract idea into a practical application and the claims are directed to the recited judicial exception.
The eligibility analysis in the instant office action concludes at Step 2B:
Per Step 2B. Independent claim 1 (which is representative of claims independent 12, 17) does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the independent claim is reevaluated as a whole, as an ordered combination under the considerations of Step 2B, the outcome is the same like under Step 2A.2.
Overall, it is concluded that independent claims 1, 12, 17 are deemed ineligible.
Thus, the rejection is proper and has been maintained.
Applicant submits “For clarity in this regard, Applicant refers to claims 2 and 3 of Example 35 ("Verifying a Bank Customer's Identity to Permit an ATM Transaction") of the Subject Matter Eligibility Examples issued by the USPTO.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
It is not proper practice to go and find a particular Example from the Office published material and use the specific arguments from that Example to determine eligibility of a particular claimed invention, unless the particular claimed invention uniquely matches (i.e. a case that involves identical or similar facts or similar legal issues) the subject matter claimed in that particular Example, which in the instant situation it does not. The Office periodically publishes Examples with detailed analyses only to serve as rational and argumentation models to determine eligibility. Each application has to be considered on its own merits. Examples provided by the Office are nothing more than the name suggests: EXAMPLES, that are to be considered or not, as they are neither laws, nor rules, nor regulations.
Thus, the rejection is proper and has been maintained.
Applicant submits “The claimed invention improves a computer or other technology, as is described in the Specification”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
It appears that applicant refers to the provisions of MPEP 2106.05(a), regarding the integration of an identified abstract idea into a practical application.
MPEP 2106.05(a) discloses that the additional claim elements bring about “improvements to the functioning of a computer, or any other technology or technical field.” Gathering data about user interactions with advertisement campaigns, is a pure BUSINESS problem, rather than a technology or technical field problem (see [0003]-[0005] of the specification as filed; [0030] discloses that proper advertisement conversion calculation depends on the sufficiency of information). As such, the limitations which have not been deemed as being part of the identified abstract idea, i.e., the “additional elements,” do not integrate the identified abstract idea into a practical application, as disclosed by MPEP 2106.05(a).
Thus, the rejection is proper and has been maintained.
It follows from the above that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself. Therefore, the rejection under 35 U.S.C. § 101 is maintained.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 112(a).
The rejection is withdrawn, as a result of the amendments.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 103.
The rejection is withdrawn, as a result of the amendments.
Examiner has reviewed and considered all of Applicant’s remarks. The rejection is maintained, necessitated by the fact that the rejection of the claims under 35 USC § 101 has not been overcome.
Inquiries
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Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (in USA or CANADA) or 571-272-1000.
Any response to this action should be mailed to:
Commissioner of Patents and Trademarks
P.O. Box 1450
Alexandria, VA 22313-1450
or faxed to 571-273-8300
/Radu Andrei/
Primary Examiner, AU 3698
Prosecution Insights