DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/03/2026 has been entered.
Response to Amendment
Claims 1, 3, and 13 are canceled.
Claims 2, 12, and 22 are currently amended.
Claims 2, 4-12, and 14-22 are currently pending examination.
Double Patenting
The Examiner acknowledges the approved Terminal Disclaimer filed on 03/03/2026. Accordingly, the Double Patenting rejection is withdrawn.
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 2, 4-12, and 14-22 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 2, 4-12, and 14-22 is/are directed towards a statutory category (i.e., a process, machine, manufacture, or composition of matter) (Step 1, Yes).
Step 2A Prong One:
Claim 2 recites (additional elements underlined):
A method for generating predicted information related to advertisement viewability, the method comprising:
receiving, from a buyer server corresponding to a buyer of an advertisement placement, a first request for predicted information relating to advertisement viewability corresponding to the advertisement placement on a user device, wherein the first request includes a string;
decoding the string to retrieve metrics in the first request by using at least one character in the string as a key to obtain a particular value corresponding to at least one of the metrics;
generating predicted information including a predicted duration of time that an advertisement, when inserted in the advertisement placement at a predetermined location, will be viewed by a user of the user device based on the metrics retrieved using the string;
transmitting the predicted information to the buyer;
receiving, from the buyer, a second request for updated predicted information relating to advertisement viewability corresponding to the advertisement placement on the user device, wherein the second request includes the string;
decoding the string to retrieve updated metrics associated with the string by using at least one character in the string as key to obtain the particular value corresponding to at least one of the updated metrics;
generating updated predicted information including an updated predicted duration of time that the advertisement inserted in the advertisement placement will be viewed by the user of the user device based on the updated metrics; and
transmitting the updated predicted information to the buyer server prior to placing a bid on the advertisement placement.
Under the broadest reasonable interpretation, the limitations outlined above that describe or set forth the abstract idea, cover performance of the limitations in the mind but for the recitation of generic computer(s) and/or generic computer component(s). That is, other than reciting the additional elements identified below, nothing in the claim precludes the limitations from practically being performed in the mind. These limitations are considered a mental process because the limitations include an observation, evaluation, judgement, and/or opinion. These limitations are also similar to “collecting information, analyzing it, and displaying certain results of the collection and analysis” and/or “collecting and comparing known information” which were determined to be mental processes in MPEP 2106.04(a)(2)(III)(A). The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer” (see MPEP 2106.04(a)(2)(III)(C)). The mere nominal recitation of the additional elements identified below do not take the claims out of the mental process grouping. Therefore, the claim recite a mental process (Step 2A Prong One, Yes).
The limitations outlined above also describe or set forth an advertising/marketing activity. Advertising/marketing fall within the certain method of organizing human activity enumerated grouping of abstract ideas. The limitations outlined above also describe or set forth a fundamental economic principle or practice because advertising/marketing is related to commerce and economy. The limitations outlined above also describe or set forth a commercial interaction (e.g., advertising, marketing or sales activities or behaviors, business relations), and managing personal behavior or relationships or interactions between people (e.g., between buyers and sellers). Therefore, the claim recites a certain method of organizing human activity (Step 2A Prong One, Yes).
In Step 2A Prong Two, the additional element(s) outlined above are recited at a high level of generality, and under the broadest reasonable interpretation, are generic computer(s) and/or generic computer component(s) that perform generic computer functions. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional element(s) amount adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computer(s) and/or generic computer component(s) does not integrate the judicial exception similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. The Examiner notes that “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter" (see pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use (e.g., in a computer environment). The courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. There is no indication that the combination of elements improves the functioning of a computer, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claims as a whole is more than a drafting effort designed to monopolize the exception. Their collective functions merely provide generic computer implementation (Step 2A Prong Two, No).
In Step 2B, the additional elements also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong Two. The Examiner notes that revised Step 2A Prong Two overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Their collective functions merely provide generic computer implementation (Step 2B, No).
Claims 4-11 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 2 (i.e., certain methods of organizing human activities and/or mental processes).
Claim 4 recites the additional elements of “server”. Claim 5 recites the additional element of “browser”. Claim 6 recites the additional element of “to a browser window”. Claim 9 recites the additional element of “a web page”. Claim 10 recites the additional elements “device”, “a web page”, “via a code inserted in the web page”, “the web page”, “on the user device”, “within the web page”, “browser”, and “to a browser”. Claim 11 recites the additional elements of “browser”, “web page”, “the user device”, “device”, “to the user device”, “server”, and “URL”. However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claims 7-8 do not recite any other additional elements. Therefore, for the same reasons explained above with respect to claim 2, claims 7-8 also do not integrate the judicial exception into a practical application or amount to significantly more.
Claim 12 recites substantially similar limitations as claim 2. Therefore, for the same reasons explained above with respect to claim 2, claim 12 also recites an abstract idea in Step 2A Prong One (i.e., mathematical concept, certain method of organizing human activities, and mental processes). Claim 12 recites the additional elements of “A system […], the system comprising: a hardware processor that is configured to”, “server corresponding to a”, “on a user device”, “of the user device”, and “on the user device”. However, for the same reasons explained above with respect to claim 2, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more.
Claims 14-21 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 12 (i.e., certain methods of organizing human activities and/or mental processes).
Claim 14 recites the additional elements of “server”. Claim 15 recites the additional element of “browser”. Claim 16 recites the additional element of “to a browser window”. Claim 19 recites the additional element of “a web page”. Claim 20 recites the additional elements “wherein the hardware processor is further configured to”, “from the user device”, “a web page”, “via a code inserted in the web page”, “the web page”, “on the user device”, “within the web page”, “browser”, and “to a browser”. Claim 21 recites the additional elements of “browser”, “web page”, “on the user device”, “device”, “to the user device”, “server”, “URL”, and “with the web page”. However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claims 17-18 do not recite any other additional elements. Therefore, for the same reasons explained above with respect to claim 12, claims 13 and 17-18 also do not integrate the judicial exception into a practical application or amount to significantly more.
Claim 22 recites substantially similar limitations as claim 2. Therefore, for the same reasons explained above with respect to claim 2, claim 22 also recites an abstract idea in Step 2A Prong One (i.e., mathematical concept, certain method of organizing human activities, and mental processes). Claim 22 recites the additional elements of “A non-transitory computer-readable medium containing computer executable instructions that, when executed by a processor, cause the processor to”, “server corresponding to a”, “on a user device”, “of the user device”, and “on the user device”. However, for the same reasons explained above with respect to claim 2, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more.
Prior Art
The Examiner notes that after an exhaustive search, the claims currently overcome prior art. The closest prior art found to date are the following:
Ray et al. (US 2014/0372205 A1) discloses the concept of appending advertisement viewability information to a string, and sending the string to a buyer of an advertisement placement. The string is decoded by the buyer of the advertisement placement to retrieved the advertisement viewability information by using the string as a key to a look-up table that converts a character in the string to a particular value corresponding to the advertisement viewability information. However, Ray et al. does not appear to disclose the second request for updated predicted information and transmitting the updated predicted information to the buyer server prior to placing a bid on the advertisement placement as claimed.
Ringdahl (US 2014/0136342 A1) discloses the concept of receiving a request from a buyer of an advertisement placement.
Schroeter (US 2015/0149285 A1) discloses the concept of generating a predicted duration of time that an advertisement will be viewed.
Cetintas (US 2016/0180374 A1) discloses the concept of predicting that an advertisement will be viewed for a duration of time during a user visit based on metrics associated with a web page (see at least ¶¶ 18-19 and 76-77). However, Cetintas fails to explicitly disclose the transmitting of the predicted information to the buyer in response to a request as claimed.
Reitsma et al. (US 2014/0019262) discloses the concept of predicting visibility of ad slots in web pages, appending the string to a URL, obtaining metrics associated with the web page, and generating predicted information (see at least Figure 3). However, Reitsma fails to disclose the transmitting of the predicted information to the buyer in response to a request as claimed.
Response to Arguments
Applicant's arguments filed 03/03/2026 have been fully considered but they are not persuasive. In the Remarks, Applicant argues:
Argument: “It is plainly apparent from the language of the claim that such a method is clearly not a) mathematical concepts (mathematical relationships, mathematical formulas or equations, and mathematical calculations); b) certain methods of organizing human activity; and c) mental processes. Therefore, the claims are directed to patentable subject matter. […] Applicant respectfully submits that these limitations, in combination with the other limitations of independent claim 2, amount to significantly more than the alleged abstract idea identified by the Examiner.”
In response, the Examiner respectfully disagrees. As explained above, the limitations outlined above that describe or set forth the abstract idea, cover performance of the limitations in the mind but for the recitation of generic computer(s) and/or generic computer component(s). That is, other than reciting the additional elements identified below, nothing in the claim precludes the limitations from practically being performed in the mind. These limitations are considered a mental process because the limitations include an observation, evaluation, judgement, and/or opinion. These limitations are also similar to “collecting information, analyzing it, and displaying certain results of the collection and analysis” and/or “collecting and comparing known information” which were determined to be mental processes in MPEP 2106.04(a)(2)(III)(A). The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer” (see MPEP 2106.04(a)(2)(III)(C)). The mere nominal recitation of the additional elements identified below do not take the claims out of the mental process grouping. Therefore, the claim recite a mental process (Step 2A Prong One, Yes).
The limitations outlined above also describe or set forth an advertising/marketing activity. Advertising/marketing fall within the certain method of organizing human activity enumerated grouping of abstract ideas. The limitations outlined above also describe or set forth a fundamental economic principle or practice because advertising/marketing is related to commerce and economy, a commercial interaction (e.g., advertising, marketing or sales activities or behaviors, business relations), and managing personal behavior or relationships or interactions between people (e.g., between buyers and sellers). Therefore, the claim recites a certain method of organizing human activity (Step 2A Prong One, Yes).
Unlike in DDR in which the claimed invention solved the business challenge of retaining website visitors that is particular to the Internet, here the claimed invention amounts to merely reciting the performance of a business practice (e.g., generating predicted information related to advertisement viewability) along with the requirement to perform it on the Internet. The claimed invention here is not necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks. Therefore, the claims still do not integrate the judicial exception into a practical application or amount to significantly more.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAM REFAI whose telephone number is (313)446-4822. The examiner can normally be reached M-F 9:00am-6:00pm.
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/SAM REFAI/Primary Examiner, Art Unit 3621
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