DETAILED ACTION
The present application, filed on 3/15/2024 is being examined under the AIA first inventor to file provisions.
The following is a FINAL Office Action in response to Applicant’s amendments filed on 8/6/2026.
Claims 1, 5-6, 8, 10-17, 21 are amended
Claims 3-4, 19 are cancelled
Claims 22-23 are new
Overall, claims 1-2, 5-18, 20-23 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 1-2, 5-18, 20-23 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, by a first process of the electronic device that is separate from a process in
which the first application executes, a 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 the anonymity metrics indicating a number of non-unique combinations of data associated with a set of user interactions for the campaign;
[E] determining, by the first process, based on whether one or more anonymity thresholds are met by the anonymity metrics, whether to adjust the set of data included in the data structure, the anonymity metrics corresponding to a set of user interactions for the campaign;
[F] adjusting, by the first process, the set of data included in the data structure, based at least in part on the determining including adding a first data element to the set of data in response to the anonymity metrics meeting a first anonymity threshold of the one or more anonymity thresholds, and
[G] adding a second data element to the set of data in response to the anonymity metrics meeting a second anonymity threshold higher than the first anonymity threshold; and
[H] transmitting, after the adjusting and by the first process, the data structure to a server associated with the campaign, the 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 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 data structure ([E]); adjusting the set of data included in the data structure and adding the second element to the set of data ([F], [G]); transmitting the data structure to a server ([H]), 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 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 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 the first data element in the set of data included in the 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 the second data element in the set of data included in the 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 are further configured 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 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:
add the value of the user interaction to the set of data to include in the 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 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 claim 23 recites: after launch of a second application associated with the campaign,
starting a timer having a value selected at random within a range of values; and
delaying the transmitting until expiration of the timer, thereby reducing a likelihood that the server associated with the campaign correlates a time of the launch with a time of the transmitting.
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 23 is deemed ineligible.
Dependent claims 5-7, 10-11, 20-22 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 data structure limits a likelihood that the server associated with the campaign can correlate the data structure with a specific instance of the first application.
wherein the first process is a client process associated with an application store, and wherein the transmitting is performed by the client process outside a process in which the first application executes.
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 5-7, 10-11, 20-22 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 1-2, 5-18, 20-23 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.
Examiner respectfully disagrees.
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 “For at least these reasons, claims 1, 12 and 17 as amended integrate any judicial exception into a practical application, …”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
It is believed that the applicant refers to the provisions of MPEP 2106.05(a)
First, 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.” Conditionally providing advertisements is a pure BUSINESS problem, rather than a technology or technical field problem. 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).
Second, MPEP 2106.04(d)(1) discloses:
An important consideration to evaluate when determining whether the claim as a whole integrates a judicial exception into a practical application is whether the claimed invention improves the functioning of a computer or other technology .... In short, first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art .... Second, if the specification sets forth an improvement in technology. the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. (Emphasis added)
That is, the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity. (Emphasis added)
Thus, the rejection is proper and has been maintained.
Applicant submits “The Office Action's Step 2B analysis consists of the statement that "the outcome is the same like under Step 2A.2." Office Action, page 5. The Office Action does not identify evidence or provide a reasoned technical explanation establishing that the newly claimed ordered combination was widely prevalent or in common use.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
The eligibility analysis at Step 2B is, by and large, the same like the analysis at Step 2A2 (no Berkheimer Memo provisions are mentioned in the instant situation) (see MPEP 2107(a)). Therefore it is concluded that:
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 “The references presently of record do not establish that the newly claimed ordered combination was widely prevalent or in common use.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
Applicant’s argument regarding the necessity of the Office to provide art in a determination that the claimed elements are not a judicial exception in a 101 analysis, is unpersuasive. Applicant suggests that novelty and/or non-obviousness must be considered in determining whether a claim is directed to an abstract idea. However, novelty and non-obviousness (i.e., a 102/103 prior art-type analysis) have no bearing on whether a claim recites an abstract idea, or involves conventional and routine elements. Indeed, the Federal Circuit has made this clear by rejecting an argument substantially similar to applicant’s in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) ("We do not agree … that the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete."). The prior Office action (and herein in the 101 rejection analysis in the instant office action) made a determination, for the reasons given, that the instant claims are directed as part of the “inventive concept” features/elements, which do not bring about a technological improvement to the recited elements or require the use of a special purpose computing device.
Thus, the rejection is proper and has been maintained.
Applicant submits “For example, Knox's automated transfer of impression and conversion tokens through a browser or operating system does not disclose a process isolated from the presenting application's process that performs the claimed anonymity-threshold- controlled additions to the data structure and transmits the resulting data structure.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
It is not proper practice to go and find a single Court decision and use the general arguments from that decision 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 of the claimed invention in the Court decision, which in the instant situation it does not. Each application has to be considered on its own merits.
Thus, the rejection is proper and has been maintained.
Applicant submits “Although withdrawal of the § 103 rejection does not itself establish eligibility, the current record does not identify a technical disclosure or provide a reasoned explanation establishing that the newly claimed process-isolated ordered combination was widely prevalent or in common use.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
See responses here above.
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.
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.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Radu Andrei/
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