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 .
Status of the Application
This action is in response to the Request for Continued Examination filed March 31, 2026. Claim 2 is canceled. Claims 1, 3-5 and 20-21 are amended. Claims 1, 3-7, 9-10 and 12-21 are pending and have been examined in this application.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/31/2026 has been entered.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 63/501,191, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Application No. 63/501,191 at least does not disclose, determining, based on the attribute, that the content item is associated with a first group type, wherein the first group type comprises of a plurality of audience segments; determining, using performance data of the communication campaign of the client account, a first performance value of a first audience segment in the plurality of audience segments; determining, based on performance data of a plurality of similar accounts, a set of features in content items that are presented to the first audience segment, wherein the set of features improves a performance metric of the content items that are presented to the first audience segment; generating, using a machine-learned asset generation pipeline, a suggested asset based on the first audience segment; determining, based on the first performance value transcending a performance threshold value, that the content item has an audience gap associated with the first audience segment; and performing an action based on the determination that the content item has the audience gap associated with the first audience segment. Although Application No. 63/501,191 generally discusses a content item for a communication campaign it does not provide support for the features specifically claimed in the present application.
Therefore, as the present application is a nonprovisional of the prior-filed application, Application No. 63/501,191; and the claims are not supported by the disclosure of the application, the current claims, 1-7, 9-10 and 12-21 of present application do not receive priority to the filing date of Application No. 63/501,191.
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 1, 3-7, 9-10 and 12-21 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.
Claims 1, 3-7, 9-10 and 12-21 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Specifically, claims 1, 3-7, 9-10 and 12-21 are directed toward at least abstract idea without significantly more. In accordance with MPEP § 2106, the rationale for this determination is explained below.
Representative claim 1 is directed towards a method, claim 20 is directed towards a system, claim 21 is directed towards a non-transitory computer readable media, which are statutory categories of invention.
Although, claim 1 is directed toward a statutory category of invention, the claim, however is directed toward a judicial exception namely an abstract idea. The limitations that set forth the abstract idea recites: obtaining data indicating a content item for a communication campaign of a client account, the content item having an attribute; determining, based on the attribute, that the content item is associated with a first group type, wherein the first group type comprises of a plurality of audience segments; determining, using performance data of the communication campaign of the client account, a first performance value of a first audience segment in the plurality of audience segments; determining, based on performance data of a plurality of similar accounts, a set of features in content items that are presented to the first audience segment, wherein the set of features improves a performance metric of the content items that are presented to the first audience segment; generating, a suggested asset based on the first audience segment; determining, based on the first performance value transcending a performance threshold value, that the content item has an audience gap associated with the first audience segment; processing the suggested asset and the first audience segment, to determine an uplift estimation value; and performing an action based on the determination that the content item has the audience gap associated with the first audience segment and the set of features, wherein the action performed includes a presentation of the suggested asset and the uplift estimation of the client account. These limitations, comprise commercial interactions including, advertising, marketing or sales activities and business relations, as well as managing personal behavior including following rules or instructions. As such, the limitations are directed towards the abstract grouping of Certain Methods of Organizing Human Activity in prong one of step 2A of the Alice/Mayo test (see MPEP 2106.04(a)(2) II).
This judicial exception is not integrated into a practical application because, when analyzed as a whole under prong two of step 2A of the Alice/Mayo test (see MPEP 2106.04(d)), the additional elements provided by the claim amount to mere use of a computer as a tool to perform an abstract idea. In particular the claim recites the additional elements using a machine-learned asset generation pipeline; using a machine-learned estimation model; on a graphical user interface, which are recited at a high level of generality and are merely the use of a computer as a tool to perform the abstract idea. See MPEP 2106.05(f). Simply applying the abstract idea by a generic computer is not a practical application of 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 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). 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 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, the claim recites the additional elements a machine-learned asset generation pipeline, a machine-learned estimation model; a graphical user interface, and one or more processors, computer-readable media (claims 20-21). Viewed individually, these limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment1. Merely applying an exception using generic computer components cannot provide an inventive concept. Therefore, the limitations of the claims as a whole, when viewed individually and as an ordered combination, do not amount to significantly more than the abstract idea.
A review of dependent claims 3-7, 9-10, 12-19, likewise, do not recite any limitations that would remedy the deficiencies outlined above. The claims only further add to the abstract idea, with no elements which integrate the abstract idea into a practical application or constitute significantly more. For instance, claims 6-7, 9 and 12, use a machine-learned model to further apply the abstract idea. However, this is merely using the computer, via a machine algorithm, as a tool to apply the abstract idea. Thus, while the dependent claims may slightly narrow the abstract idea by further describing it, they do not make it less abstract and are rejected accordingly. Further still, claims 20-21 suffer from substantially the same deficiencies as outlined with respect to claim 1 and are also rejected accordingly.
Response to Arguments
Applicant's filed arguments have been fully considered but have not been found persuasive.
A. Applicant’s argument regarding the 35 U.S.C. § 101 rejection that independent claim 1 is directed to patent eligible subject matter because the Office Action has not established prima facie unpatentability. The Examiner respectfully disagrees. The claims are directed to the abstract grouping of Certain Methods of Organizing Human Activity because they entail commercial interaction including advertising, marketing, sales activities and business relations, (facilitating/processing a client/user campaign); as well as managing personal behavior including following rules or instructions (monitoring client/user account performance; improving user’s clickthrough rate performance). Processing a suggested asset like a video or interactive ad and a large audience segment, regardless if this might involve potentially millions of data points, is an abstract idea in and of itself. Using a machine learning model to process said abstract idea is not sufficient to integrate the abstract idea into a practical application. As such, the Office Action’s burden has been met and a proper prima facie case has been made in regards to the eligibility of the claim. Because in order to establish a prima facie case of ineligibility, “Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above;” and if “the identified limitation(s) falls within at least one of the groupings of abstract ideas, it is reasonable to conclude that the claim recites an abstract idea in Step 2A Prong One.” See MPEP 2106.04(a).
Applicant submits that claim 1 integrates the abstract idea into a practical application as they provide a specific, technical improvement to the functioning of machine-learning generative models. The Examiner respectfully disagrees. The additional elements provided by the claim merely uses the computer as a tool (machine-learning generative model) to apply the abstract idea, which does not integrate the judicial exception into a practical application or amount to significantly more. It is well understood that simply applying abstract ideas by generic computer components is not a practical application of the abstract idea, or an inventive concept that would amount to significantly more. See at least, TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (“It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea”). There is no technical improvement to a machine learning model proffered by the claim. Aggregating performance data to mathematically identify features that improve performance metrics is also directed to the abstract grouping of Mathematical Concepts because it calculates, organizes and manipulates data through mathematical correlations; and the specification does not provide any technical evidence/support of how improving performance metrics i.e. clickthrough rates, conversions etc., improves a generative model. Indeed, the specification discloses using content targeted to an audience asset gap by aggregating data. “For example, by using more content-relevant data, the system improves the performance (e.g., clickthrough rate, conversions) of content generated generative models.” It further states that it “can reduce processing by reducing the number of manual inputs provided by a user and by reducing the number of interface screens which must be obtained, loaded, interacted with, and updated. For example, the user may only have to input a web address of a website, and the system can automatically extract content from the website and automatically generate content items for the user.” [0068]. This does not describe improvement to the computer/machine learning model, but rather what is to be expected from the iterative process of generative machine learning and is similar to “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” which does not integrate the abstract idea into a practical application (MPEP 2106.05(f)(2)).
Applicant further submits that the claims are patent eligible because they integrate the abstract idea into a practical application by reciting a specific technique that improves the computational efficiency and output accuracy of the underlying machine-learned generation pipeline. The Examiner respectfully disagrees. Improvement to performance metrics is an improvement to an abstract idea, which is still ineligible. See at least Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (claims that improved an abstract idea, but not a computer’s performance, were held unpatentable). Furthermore, because a claim discloses a specific technique to a particular problem does not automatically render it patent eligible. See Bilski v. Kappos, 561 U.S. 593, 599–601 (2010) (concluding that claims fell outside § 101 notwithstanding the fact that they disclosed a very specific method of hedging against price increases); Parker v. Flook, 437 U.S. 584, 593 (1978) (rejecting the argument “that if a process application implements a principle in some specific fashion, it automatically falls within the patentable subject matter of § 101”); and Alice v. CLS Bank, 134 S. Ct. 2347, 2358–60 (2014) (claims fell outside of 35 U.S.C. 101 even though they described a very specific method for conducting intermediated settlement).
Applicant argues that the claims amount to significantly more than the abstract idea. The Examiner respectfully disagrees. The additional elements of the claim merely use the computer as a tool to implement the abstract idea, which does not confer eligibility onto the abstract idea. See at least, TLI, 823 F.3d at 613 (mere recitation of concrete or tangible components is not an inventive concept). There is no technical improvement to any technology/technical field proffered by the claims or the specification. Even if a human cannot mentally aggregate massive datasets of digital performance metrics, “determining that the inclusion of a specific visual feature mathematically improves a click-through rate for a specific audience segment across thousands of similar accounts” is directed to Mathematical Concepts and/or Certain Methods of Organizing Human Activity. And even if the amended claims purportedly recite specific, unconventional technological operations that go far beyond well-understood, routine, or conventional activities. They are directed to abstract ideas without additional elements that amount to significantly more than the abstract ideas. Notwithstanding, even newly discovered judicial exceptions are still exceptions, despite their novelty. For example, the mathematical formula in Flook, 437 U.S. at 591-92, (1978), the laws of nature in Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 73-74, 101 USPQ2d 1961, 1968 (2012), and the isolated DNA in Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116, 106 USPQ2d 1972, 1978 (2013) were all novel, but were considered by the Supreme Court to be judicial exceptions.
Applicant submits that some or all of the dependent claims may possess features that are independently patentable, regardless of the patentability of the independent claims. The Examiner respectfully disagrees. The dependent claims have been examined individually and in combination with the independent claims, however they do not cure the deficiencies of claim 1. Where all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo Bank, N A, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims are directed towards patent eligible subject matter, they are invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter.
As such, the claims as a whole, in view of Alice, do not connote an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer itself; and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment. Therefore, the 35 U.S.C. § 101 rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Errol CARVALHO whose telephone number is (571)272-9987. The Examiner can normally be reached on M-F 9:30-7:00 Alt Fri
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached on 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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/E CARVALHO/
Primary Examiner, Art Unit 3622
1 See, Alice Corp. Pty Ltd. v. CLS Bank lnt'l, 134 S. Ct. 2347, 2360 (2014) (noting that none of the hardware recited “offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment,’ that is, implementation via computers” (citing Bilski v. Kappos, 561 U.S. 593, 610-11 (2010))).
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