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 .
This office action is in response to communication filed on 4/12/2024.
Claims 90-102 are presented for examination.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 90-102 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-8 of prior U.S. Patent No.11,961,118. This is a statutory double patenting rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 90 recites on line 5 “allow an advertiser to define” it is vague and unclear if the advertiser is performing the action or just allowed to perform the action.
Claim 98 recites on line 9 “allow a network to choose a specific ad spot” it is vague and unclear if the network is performing the action or just allowed to perform the action.
Correction is required.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: module configured to in claim 10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claims 90 and 98 recite the functions coupled to the word, -module configure to- with no structure or material recited to perform the entire function. Therefore, the claim is presumed to invoke 35 U.S.C. 112, sixth paragraph and the claim has been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalent thereof.
A review of the specification pertaining to claims 90 and 98 describe a processor/hardware to perform the functions in the claims. Specifically, on paragraph 0037 as published discloses various modules that are communicatively coupled to memory 202 and processor 204. that operate to perform one or more operations or functions. Since, the specification corresponding material is sufficient to perform all the functions recited in the 112, sixth claim limitation.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 90-102 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Determining that a claim falls within one of the four enumerated categories of patentable subject matter recited in 35 U.S.C. 101 (i.e., process, machine, manufacture, or composition of matter). (MPEP 2106.03)
Claims 90-102 recites tangible system components, thus falling the one of the four statutory classes; i.e. machine.
Step 2A, Prong One: Evaluating whether the claim(s) recite(s) a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. (MPEP 2106.04).
Claims 90 and 98 recite:
control a plurality of ad-creatives to show a sequence for each of the audience segments; ad-swap and content delivery to generate swap instructions and content delivery to swap a default ad-creative with an appropriate replacement ad-creative.
The limitations of targeting a plurality of audience segments with ads, covers advertising, marketing, behaviors and falls within “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two: Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and then evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. Prong Two distinguishes claims that are "directed to" the recited judicial exception from claims that are not "directed to" the recited judicial exception. (MPEP 2106.04).
This judicial exception is not integrated into a practical application. In particular, the claim 90 recites the additional elements of memory, processor. The specification as filed discloses generic recitation of these computer elements. These additional elements are considered as “apply it” as the claim invokes the computer as a tool to perform the abstract idea. See MPEP 2106.05(f)(2) (similar to Apple, Inc. v Ameranth and Intellectual Ventures I LLC v Capital One Bank (USA).
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. (MPEP 2106.05(f) Mere Instructions To Apply An Exception).
Therefore, under Step 2A, Prong Two, the claims are directed to an abstract idea.
Step 2B: Identifying whether there are any additional elements (features/limitations/steps) recited in the claim beyond the judicial exception(s), and then evaluating those additional elements individually and in combination to determine whether they contribute an inventive concept (i.e., amount to significantly more than the judicial exception(s)). (MPEP 2106.05)
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application.
Therefore, there are no additional elements that amounts to significantly more than a judicial exception and cannot provide an inventive concept. (MPEP 2106.05(d) Well-Understood, Routine, Conventional Activity).
Dependent claims 91-97 and 99-102 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend. There’re no additional elements that transform the recited abstract idea into a patent eligible invention because these claims merely recite further abstract limitations that provide no more than simply narrowing the recited abstract idea.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 90-102 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Lu (2009/050224).
With respect to claim 90, Lu teaches a memory; a processor connected to the memory (see figure 2);
An ad creation module configured to allow an advertiser to define at least one ad creative to target each of the audience segments and to dynamically control a plurality of ad-creatives to show and sequence each of the audience segments, the ad creation module being connected to the processor (see (i.e. FIG. 5A shows a setup screen 500 for a new television advertising campaign. The screen permits a user to identify various targets for an ad campaign, where the targets include a network and a time slot for the running of ads);
A messaging platform electronically connected to the processor and to the memory (see paragraph 0050 for the ad server 204 communicates, through a network 208 such as the Internet, with a number of external components in performing such actions, including an advertiser terminal 202 where an advertiser may interact with the system 200 in establishing one or more ad campaigns, and a viewer rating server 206 that may report numbers of actual viewers or households that watched a particular program or portion of a program), the platform comprising:
An ad-swap generation and content delivery module configures to generate swap instructions and content delivery of the ad-creatives within an ad spot, wherein the ad-swap generation and content delivery module generates a list of appropriate ad-creatives and a household pair for the ad spot and relays an instruction to swap a default ad-creative with an appropriate replacement ad-creative on a device (see paragraph 0062 for the estimator front-end 212 may also identify particular time slots for an ad in response to the provision of information about the ad. For example, an advertiser may enter certain demographic information about the ad, a proposed budget for running the ad, and a proposed goal for an ad campaign (e.g., maximizing brand awareness, hitting targeted viewers, etc.). The estimator front-end 212 may in turn identify multiple various ad slots to achieve the goal while keeping within the budget).
With respect to claim 98, Lu further teaches a memory and a processor electronically connected to the memory (see figure 2);
An ad-swap generation and content delivery module configured to generate swap instructions and content delivery of ad-creatives within an ad spot, the ad-creatives being stored in the memory, wherein the ad-swap generation and content delivery module generates a list of ad-creatives (The estimator front-end 212 may also identify particular time slots for an ad in response to the provision of information about the ad. For example, an advertiser may enter certain demographic information about the ad, a proposed budget for running the ad, and a proposed goal for an ad campaign (e.g., maximizing brand awareness, hitting targeted viewers, etc.). The estimator front-end 212 may in turn identify multiple various ad slots to achieve the goal while keeping within the budge);
An ad spot upgradation module configured to allow a network to choose a specific ad-spot to upgrade and to dynamically control a plurality of ad-creatives to show and sequence for specific audience segments, the ad spot upgradation module being electronically connected to the processor and memory; wherein the ad spot upgradation module is configured to relay an instruction via the processor to the ad-sap generation and content delivery module to swap a default ad-creative with an appropriate replacement ad-creative on a device (see paragraph 0079 for At box 412, the estimator receives the historical ad data and combines that data with the bid information received from the client device. The estimator then provides such information to the auction simulator, which, at box 414, identifies an ad slot for the bid information. The auction simulator may then retrieve bid information from other bidders for the ad slot, which may be a historical ad slot. The auction simulator may then determine a winning bid level, at box 416, for the ad slot, and determine whether the bid information provided by the client device would result in an ad for the client being shown on the network).
With respect to claims 91 and 99, Lu further teaches the instructions to swap the ad-creative is relayed directly to an individual location (see paragraph 0084 for Area 502 permits the user to identify certain geographic regions for running a campaign, since a local furniture company probably would not want to pay for a national ESPN slot).
With respect to claims 92 and 100, Lu further teaches wherein the instructions is relayed in real-time (see paragraph 0050 for the ad server 204 communicates, through a network 208 such as the Internet, with a number of external components in performing such actions, including an advertiser terminal 202 where an advertiser may interact with the system 200 in establishing one or more ad campaigns, and a viewer rating server 206 that may report numbers of actual viewers or households that watched a particular program or portion of a program).
With respect to claim 93, Lu further teaches wherein the device does not cache the replacement ad creative (see paragraph 0045 for slots are assigned randomly).
With respect to claims 94-95 and 101, Lu further teaches wherein the instruction is relayed days before an actual airing of the ad spot; the ad cached at the device (see paragraph 0057 for schedule database 220 stores information about television programming schedules and ad slots in those schedules. Such information may include past and future schedules. The schedule database 220 may include, for example, typical data about programs that may be obtained from commercial services, such as program duration, program titles, program descriptions, networks (and channels) carrying a program, main actors in a program, timing of commercial breaks during a program, and other such information).
With respect to claims 96-97 and 102, Lu further teaches wherein the replacement ad-creative is selected from a stored system of ad-creatives via a content stream and the ad spot does not use incremental bandwidth during the content stream ( see paragraph 0050 fora TV ad server 204 that contains a number of structural components for estimating viewership and other factors relating to a TV ad to be run in the future, and for generating an actual cost for the ad after it runs).
Response to Arguments
A Terminal Disclaimer was filed on 10/10/2025 but because the claims were rejected under statutory type (35 U.S.C. 101) double patenting rejection, it can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
After careful examining the instant claims, the 101, 112 and prior art rejections apply.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAQUEL ALVAREZ whose telephone number is (571)272-6715. The examiner can normally be reached Mondays thru Thursdays 8:30-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached at 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAQUEL ALVAREZ/Primary Examiner, Art Unit 3622