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 .
DETAILED ACTION
1. This office action is responsive to amendment filed on 02/09/2026. Claims 1, 3-5, 7, 9, 11-16, 18, and 19 are amended. Claims 1-20 are pending examination.
Claim Rejections - 35 USC § 101
2. 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 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim(s) 9 is/are drawn to method (i.e., a process), claim(s) 16 is/are drawn to a system (i.e., a machine/manufacture), and claim(s) 1 is/are drawn to non-transitory computer readable medium (i.e., a machine/manufacture). As such, claims 1, 9, and 16 is/are drawn to one of the statutory categories of invention.
Claims 1-20 are directed to presenting advertisements based on rules, criteria and user non sensitive and sensitive information. Specifically, claim(s) 1, 9, and 16 recite(s) receive a plurality of rules, each of the plurality of rules is applicable on private information about the user, the private information comprises at least browsing history of the user, the plurality of rules comprises a first rule that is received from a first entity and a second rule that is received from a second entity, the first rule defining a first criterion for presenting a respective one or more first content items of the first entity, the second rule defining a second criterion for presenting a respective one or more second content items of the second entity to the user; a content item of the one or more first content items to be presented to the user, the content item is selected from the one or more entity of the first entity and from the one or more content items of the second entity, the selection of the content item is based on a determined compliance of the private information about the user with the first criterion and with the second criterion; present, on the device of the user, the content item to the user based on the determined compliance, transmit from the device of the user, non-sensitive information about the user to the first server of the first entity, which is grouped within the Methods Of Organizing Human Activity and is similar to the concept of (commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors business relations) grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)). Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
The Claim limitations are listed under Methods Of Organizing Human Activity, and grouped as following:
receive a plurality of rules, each of the plurality of rules is applicable on private information about the user, the private information comprises at least browsing history of the user, the plurality of rules comprises a first rule that is received from a first entity and a second rule that is received from a second entity, the first rule defining a first criterion for presenting a respective one or more first content items of the first entity, the second rule defining a second criterion for presenting a respective one or more second content items of the second entity to the user; which is similar to the concept of (advertising, marketing or sales activities or behaviors business relations),
a content item of the one or more first content items to be presented to the user, the content item is selected from the one or more entity of the first entity and from the one or more content items of the second entity, the selection of the content item is based on a determined compliance of the private information about the user with the first criterion and with the second criterion; present, on the device of the user, the content item to the user based on the determined compliance, transmit from the device of the user, non-sensitive information about the user to the first server of the first entity; which is similar to the concept of (advertising, marketing or sales activities or behaviors business relations).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54-55 (January 7, 2019)), the additional element(s) of the claim(s) such as non-transitory computer-readable storage medium, computer, processor, device, server, apparatus, memory storage device merely use(s) a computer as a tool to perform an abstract idea and/or generally link(s) the use of a judicial exception to a particular technological environment. Specifically, the non-transitory computer-readable storage medium, computer, processor, device, server, apparatus, memory storage device perform(s) the steps or functions of receive a plurality of rules, each of the plurality of rules is applicable on private information about the user, the private information comprises at least browsing history of the user, the plurality of rules comprises a first rule that is received from a first entity and a second rule that is received from a second entity, the first rule defining a first criterion for presenting a respective one or more first content items of the first entity, the second rule defining a second criterion for presenting a respective one or more second content items of the second entity to the user; a content item of the one or more first content items to be presented to the user, the content item is selected from the one or more entity of the first entity and from the one or more content items of the second entity, the selection of the content item is based on a determined compliance of the private information about the user with the first criterion and with the second criterion; present, on the device of the user, the content item to the user based on the determined compliance, transmit from the device of the user, non-sensitive information about the user to the first server of the first entity. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the additional element(s) of using a non-transitory computer-readable storage medium, computer, processor, device, server, apparatus, memory storage device to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of presenting advertisements based on rules, criteria and user non sensitive and sensitive information. As discussed above, taking the claim elements separately, the non-transitory computer-readable storage medium, computer, processor, device, server, apparatus, memory storage device perform(s) the steps or functions of receive a plurality of rules, each of the plurality of rules is applicable on private information about the user, the private information comprises at least browsing history of the user, the plurality of rules comprises a first rule that is received from a first entity and a second rule that is received from a second entity, the first rule defining a first criterion for presenting a respective one or more first content items of the first entity, the second rule defining a second criterion for presenting a respective one or more second content items of the second entity to the user; a content item of the one or more first content items to be presented to the user, the content item is selected from the one or more entity of the first entity and from the one or more content items of the second entity, the selection of the content item is based on a determined compliance of the private information about the user with the first criterion and with the second criterion; present, on the device of the user, the content item to the user based on the determined compliance, transmit from the device of the user, non-sensitive information about the user to the first server of the first entity. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of presenting advertisements based on rules, criteria and user non sensitive and sensitive information. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
As for dependent claims 2-8, 10-15, and 17-20 further describe the abstract idea of presenting advertisements based on rules, criteria and user non sensitive and sensitive information. Claim(s) 2-8, 10-15, and 17-20 does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the additional element(s) of using a non-transitory computer-readable storage medium, computer, processor, device, server, apparatus, memory storage device to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of presenting advertisements based on rules, criteria and user non sensitive and sensitive information. As discussed above, taking the claim elements separately, the non-transitory computer-readable storage medium, computer, processor, device, server, apparatus, memory storage device perform(s) the steps or functions of wherein the private information comprises data that is estimated by a learning classifier based on raw data that is retained locally, the learning classifier being a classifier trained on a training set before being utilized to perform the data estimation; wherein said select the content item; receive the one or more first content items, and to receive the one or more second content items; wherein the private information comprises a location, wherein the compliance with the first criterion is determined using the location; wherein the compliance with the first criterion is determined using the browsing history; wherein the instructions gather data pertaining to content of social network activity, and use the gathered data pertaining to the content of the social network activity for determining the compliance with the first criterion; wherein the non- sensitive information about the user excludes identifying information of the user, the identifying information allowing correlation of the non-sensitive information with additional information about the user. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of presenting advertisements based on rules, criteria and user non sensitive and sensitive information. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Prior Art
3. As for the amendment submitted on 02/09/2026, the Office is unaware of any references that teach the combination of limitations found in the claims.
In reference to independent claims 1-20, the Office is unaware of any references that teach, individually or without an unreasonable combination of references, the combination of limitations steps found in the claims especially limitation that says: “the plurality of rules comprises a first rule that is received from a first server of a first entity and a second rule that is received from a second server of a second entity, the first rule defining a first criterion for presenting a respective one or more first content items of the first entity to the user of the device, the second rule defining a second criterion for presenting a respective one or more second content items of the second entity to the user of the device on the device of the user, a content item of the one or more first content items to be presented to the user and the one or more content items of the second entity, the selection of the content item is based on a determined compliance of the private information about the user with the fist criterion and not with the criterion; transmit from the device of the user, non-sensitive information about the user to the first service of the first entity.”. No reference found that would teach the above limitation(s).
The most relevant prior art identified by the Examiner is Levy 18623124. It teaches retrieving data associated with the first content provider from a data storage which includes content providers and second content providers associated with first content providers that includes triggering data and scheduling and but does not explicit teaches advertisers with rules and criterions, and determination of what advertisement to be presented to the user on the users device and all done on the users device, and also advertisements are determined based on a determined compliance of the private information about the user with the first criterion and with the second criterion. However, it lacks the combination of claimed elements as claimed by the independent claims.
The second most relevant prior art identified by the Examiner is Vaya 20160337319. It teaches a “set of non-sensitive first attributes of user” refers to attributes in the one or more first attributes of the user, which neither may independently nor in combination, reveal information pertaining to the user. In an embodiment, the set of non-sensitive first attributes of the user may be shared with a third party organization (e.g., the one or more content providers but does not teach the limitation that includes a data determination on the device of the user, transmit non-sensitive information about the user to a server of an advertiser of the advertisement. However, it lacks the combination of claimed elements as claimed by the independent claims.
Examiner note: none of the references or combined references teach the combination of limitations of claim 1, 9, and 16 or no reference found that would teaches the combination of limitations of claim 1, 9, and 16, especially claim limitations: the plurality of rules comprises a first rule that is received from a first server of a first advertiser and a second rule that is received from a second server of a second advertiser, the first rule defining a first criterion for presenting a respective one or more advertisements of the first advertiser to the user of the device, the second rule defining a second criterion for presenting a respective one or more advertisements of the second advertiser to the user of the device on the device of the user, select an advertisement to be presented to the user and from the one or more advertisements of the second advertiser the selection of the advertisement is based on a determined of the private information about the user with the first criterion and with the second criterion, and on the device of the user, transmit non-sensitive information about the user to a server of an advertiser of the advertisement, which is an idea of a first rule is received from a first server and a second rule is received from a second server. The first rule defines a first criterion for presenting a respective one or more advertisements of a first advertiser to a user of the device. The second rule defines a second criterion for presenting a respective one or more advertisements of a second advertiser to the user of the device. Each of the rules is applicable on private information about the user, including browsing history. On the device of the user, an advertisement is selected to be presented to the user. The selection of the advertisement is based on a determined compliance of the private information about the user with the first criterion and with the second criterion. On the device of the user and based on the determined compliance, the is presented advertisement to the user. Non-sensitive information about the user is transmitted from the device to a server of an advertiser of the advertisement.
When taken as a whole, the claims are not rendered obvious as the reference(s) found does/do not suggest or otherwise render obvious the noted features nor the reference(s) does/do suggest or otherwise render obvious further modification of the evidence at hand. Such modifications would require substantial reconstruction relying solely on improper hindsight.
NPL Reference
4. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The NPL “appear for a sufficient duration; and whether the language of the disclosure is understandable to the intended audience” describes “In the online marketplace, consumers can transact business without the constraints of time or distance. One can log on to the Internet day or night and purchase almost anything one desires, and advances in mobile technology allow advertisers to reach consumers nearly anywhere they go. But cyberspace is not without boundaries, and deception is unlawful no matter what the medium. The FTC has enforced and will continue enforcing its consumer protection laws to ensure that products and services are described truthfully online, and that consumers understand what they are paying for. These activities benefit consumers as well as sellers, who expect and deserve the opportunity to compete in a marketplace free of deception and unfair practices. The general principles of advertising law apply online, but new issues arise almost as fast as technology develops — most recently, new issues have arisen concerning spaceconstrained screens and social media platforms. This FTC staff guidance document describes the information businesses should consider as they develop ads for online media to ensure that they comply with the law. Briefly, 1. The same consumer protection laws that apply to commercial activities in other media apply online, including activities in the mobile marketplace. The FTC Act’s prohibition on “unfair or deceptive acts or practices” encompasses online advertising, marketing, and sales. In addition, many Commission rules and guides are not limited to any particular medium used to disseminate claims or advertising, and therefore, apply to the wide spectrum of online activities. 2. When practical, advertisers should incorporate relevant limitations and qualifying information into the underlying claim, rather than having a separate disclosure qualifying the claim. 3. Required disclosures must be clear and conspicuous. In evaluating whether a disclosure is likely to be clear and conspicuous, advertisers should consider its placement in the ad and its proximity to the relevant claim. The closer the disclosure is to the claim to which it relates, the better. Additional considerations include: the prominence of the disclosure; whether it is unavoidable; whether other parts of the ad distract attention from the disclosure; whether the disclosure needs to be repeated at different places on a website; whether disclosures in audio messages are presented in an adequate volume and cadence; whether visual disclosures appear for a sufficient duration; and whether the language of the disclosure is understandable to the intended audience.”.
Pertinent Art
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Reference#20120323794 teaches similar invention which describes personalization is enabled in a privacy-conscious manner. User interest information can be determined as a function of user behavior with respect interaction with content, for example. Distribution of user information can be managed as function of user permission and one or more offers to acquire the information from parties such as electronic merchants, data aggregators, or ad networks, among others.
Response to Arguments
6. Applicant's arguments filed 02/09/2026 have been fully considered but they are not persuasive.
A. 112 rejection has been withdrawn based on the amendments submitted on 02/09/2026.
B. Claim Objection has been withdrawn based on the amendments submitted on 02/09/2026.
C. Applicant argues that the claims are not directed to a judicial exception under Step 2A Prong One. Examiner respectfully disagrees. As for Step 2A Prong One, of the Abstract idea is directed towards the abstract idea of presenting advertisements based on rules, criteria and user non sensitive and sensitive information which is grouped within the Methods Of Organizing Human Activity and is similar to the concept of (commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors business relations) grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)). Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)), (MPEP § 2106.04).
D. Applicant argues that the claims are not directed to a judicial exception under Step 2A Prong Two. Examiner respectfully disagrees. As for Step 2A Prong Two, the claim limitations do not include additional elements in the claim that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, and the claim is not more than a drafting effort designed to monopolize the judicial exception and the claim limitation simply describe the abstract idea. The limitation directed to presenting advertisements based on rules, criteria and user non sensitive and sensitive information does not add technical improvement to the abstract idea. The recitations to “non-transitory computer-readable storage medium, computer, processor, device, server, apparatus, memory storage device” perform(s) the steps or functions of receive a plurality of rules, each of the plurality of rules is applicable on private information about the user, the private information comprises at least browsing history of the user, the plurality of rules comprises a first rule that is received from a first entity and a second rule that is received from a second entity, the first rule defining a first criterion for presenting a respective one or more first content items of the first entity, the second rule defining a second criterion for presenting a respective one or more second content items of the second entity to the user; a content item of the one or more first content items to be presented to the user, the content item is selected from the one or more entity of the first entity and from the one or more content items of the second entity, the selection of the content item is based on a determined compliance of the private information about the user with the first criterion and with the second criterion; present, on the device of the user, the content item to the user based on the determined compliance, transmit from the device of the user, non-sensitive information about the user to the first server of the first entity. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
E. Applicant argues that the claims are not directed to a judicial exception under Step 2B.
Examiner respectfully disagrees. As for Step 2B, The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the limitation directed to presenting advertisements based on rules, criteria and user non sensitive and sensitive information does not add significantly more to the abstract idea. Furthermore, using well-known computer functions to execute an abstract idea does not constitute significantly more. The recitations to “non-transitory computer-readable storage medium, computer, processor, device, server, apparatus, memory storage device” are generically recited computer structure. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of presenting advertisements based on rules, criteria and user non sensitive and sensitive information. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
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 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAREK ELCHANTI whose telephone number is (571) 272-9638. The examiner can normally be reached on Flex Mon - Thur 7-7:00 and Fri 7-4:00.
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/TAREK ELCHANTI/Primary Examiner, Art Unit 3621B