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 12/23/2025.
Claim 15 has been added. Claims 1-15 and are presented for examination.
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 1 recites on line 12 “determines whether or not”, lines 12-13 “permitted to be bundled with the selected advertising leaflet”, determining whether or not the advertising permits bundling”, lines 13-14 , when permitted, the hardware processor selects, line 15 “when permitted, the one or more leaflets on receipt of the information indicating a management number of the package to be sent for the customer obtained by reading a barcode on the package with a barcode reader of a logistic system as the package is being conveyed on a conveyor belt of the logistic system” on lines 19-23 ” it is unclear if the determining of line 10 takes place, the permitting of the budling of lines 12-13 and lines 13-14, if logistic system and scanning of the barcode takes place of lines 19-23 since the steps are not positively recited.
Claim 4 recites on line 4 “permitted to be bundled” it is unclear if the budling takes place, since is not positively recited.
Claim 5 recites “whether or not a plurality of leaflets” on line 3, it is unclear if a plurality of leaflets need to take place, since is not positively recited.
Claim 13, lines 2 and line 3 recites “permitted to be bundled. it is unclear if the budling takes place, since is not positively recited.
Claim 11 recites on line 11 “determine whether or not”, line 12 “permitted to be bundled”, “permitted to be bundled”, line 12, “When permitted...selects” line 15, “ when permitted, the one or more leaflets upon receipt of the information indicating a management number of the package to be sent for the customer obtained by reading a barcode on the package with a barcode reader of a logistic system as the package is being conveyed on a conveyor belt of the logistic system” lines 17-22” it is unclear if the determining of line 11 takes place, the permitting of the budling of line 12, the selects of line 15 and if logistic system and scanning of the barcode takes place of line 17-22 since not positively recited.
Claim 12 recites on lines 12 and 14 “determine whether or not”, line 16 “when permitted, the hardware selects” lines 19-23 when permitted, the one or more leaflets upon receipt of the information indicating a management number of the package to be sent for the customer obtained by reading a barcode on the package with a barcode reader of a logistic system as the package is being conveyed on a conveyor belt of the logistic system” ” it is unclear if the determining of lines 12 and 14 takes place, if the hardware selects on line 16, and if logistic system and scanning of the barcode takes place of lines 19-23, since not positively recited.
Correction is required.
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 1-15 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 1-14 recite describe tangible system components, thus falling within one of the four statutory classes; i.e., machine. Claim 11 and 15 recite a series of steps, thus falling within one of the four statutory classes; i.e., process. Claim 12 is a non-transitory computer readable-medium, thus falling within one of the four statutory classes; manufacture.
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).
Representative claim 11 recites:
causing the platform to select, as an advertising leaflet to be bundled, an advertising leaflet with a high reward set for attribute information of a customer targeted by an advertiser that requests to bundle the advertising leaflet in the package to be physically delivered to a customer, selecting an advertising leaflet to be bundled, an advertising leaflet with a high reward set for attribute information of the targeted customer targeted by an advertiser that requests to bundle the advertising leaflet in the package, based on the attribute information of the customer whom the package is to be sent; determining whether or not one or more additional leaflets are to be bundled with the selected advertising leaflet based on information indicating whether or not the advertiser permits bundling of a plurality of advertisements for different types of merchandise for the customer, when permitted selects one or more additional types of advertisements for the customer from the advertiser and indicating a management number of the package to be sent for the customer.
The limitations of providing a bundled advertising service is a process that, under its broadest reasonable interpretation, covers advertising, marketing or sales activities but for the recitation of generic computer components then it 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, claim 11 recites the additional elements of an apparatus/processor to select, output and print a document, logistic system being conveyed on a conveyor belt of the logistic system and reading of a barcode with a barcode reader (not actively claimed “when permitted”) are recited at a high level of generality such that they amount no more than mere instructions to apply the exception using generic computer components. 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).
Alice Corp. also establishes that the same analysis should be used for all categories of claims. Therefore, independent machine/system claim 1 and computer readable medium claim 12 are rejected under the same rationale as method claim 11 rejected above, as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as above.
Dependent claims 2-10, 13-15 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 1-8 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ho (8,112,308).
With respect to claims 1, 11 and 12, Ho teaches systems and methods to:
a platform providing apparatus (see figure 1)that provides a consignor (content source bundler 130 facilitates the creation of content source bundles by authors) and an advertiser (advertiser 108a, 108b) with a platform for a bundled advertising service for bundling an advertising leaflet in a package (such as newspapers, ,magazines)(col. 8, lines 26-28);
wherein the platform providing apparatus includes a hardware processor, the hardware processor selects, as an advertising leaflet to be bundled, an advertising leaflet with a high reward set for attribute information of a customer targeted by the advertiser that requests to bundle the advertising leaflet in the package, based on the attribute information of the customer to whom the package is to be sent (see figures 2 and 4 for ranking submitted bundles and col. 7, lines 56-62 for the submitted bundled content source bundle author may be paid a flat fee per targeted advertising campaign that uses the author's bundle. For example, if the fee for using a bundle for a targeted advertising campaign is $500, and the content source bundle was used in 10 targeted advertising campaigns, then the content source bundle author would receive $5000)
and the hardware processor outputs, to a printing apparatus, an instruction to print document data of the selected advertising leaflet (see input/output devices 660).
determines whether or not one or more additional leaflets are permitted to be bundled with the selected advertising leaflet based on information indicating whether or not the advertiser permits bundling of a plurality of advertisements for different types of merchandise for the customer, and when permitted, the hardware processor selects one or more additional types of advertisements for the customer from the advertiser(see col. 5, lines 9-13 for “content source bundle may be presented to advertisers at a content source bundle interface through which advertisers can browse and search for content source bundles that target a desired user group or demographic to use for a targeted advertising campaign. The advertisers may select content source bundles of interest for use in such campaigns” and on page 7, lines 32-36 “In addition, the content source bundler 130 may display the particular websites or content sources making up the content source bundles 132 to allow the advertisers to customize the bundles by adding or removing particular websites and content sources”.
With respect to the newly amended feature of when permitted, the one or more additional leaflets upon receipt of information indicating a management number of the package to be sent for the customer obtained by reading a barcode on the package with a barcode reader of a logistic system as the package is being conveyed on a conveyor belt of the logistic system (all the limitations following when permitted is not given patentable weight because the reading of the barcode by a barcode reader of the logistic system do not commensurate in scope of the claims and such features are outside of the scope of the claims and therefore not given patentable weight).
With respect to claim 2, Ho teaches transmitting information indicating an amount of money corresponding to the reward set for the advertising leaflet bundled in the package to an advertiser terminal apparatus of the advertiser, and transferring the amount of money based on the reward received from the advertiser to a transfer destination designated by the consignor (see col. 7, lines 56 to col. 8, lines 1-4 for content source bundle author receiving payment for targeted advertisement campaigns and the advertisement server and the content source bundler 130 may be implemented on a single computer or distributed computer).
With respect to claim 3, Ho teaches wherein the package scheduled to be sent, the attribute information indicating the customer to which the package is to be sent, and the document data of the selected advertising leaflet are each managed in association with a management number of the package scheduled to be sent, and the hardware processor outputs, to the printing apparatus, an instruction to print the document data of the advertising leaflet associated with the management number of the package scheduled to be sent (the performance data may be used by the content source bundle authors and/or the bundler 130 to add or remove the particular content sources contained in the bundle. For example, the bundle author may remove content sources with low performance ratings)(col. 12, lines 24-27).
With respect to claim 4, Ho further teaches selects the advertising leaflet to be a selection target that is the leaflet to be bundled in the package, based on information regarding merchandise that is permitted to be bundled in the package and information regarding merchandise that is not permitted to be bundled in the package, the information being transmitted in advance from a consignor terminal apparatus of the consignor that sends the package to the customer (advertisers may submit reviews and comments about the author and the author's content source bundles).
With respect to claim 5, Ho further teaches indicating whether or not a plurality of types of advertising leaflets by the advertiser for a same customer are permitted to be bundled, the information being transmitted in advance from the advertiser terminal apparatus of the advertiser (the advertisers 108a and 108b may select one or more content source bundles 132 to use for a targeted advertising campaign using the description or keywords provided by the content source bundle authors or other information gathered from the content source bundles. For example, an advertiser 108 may connect to the content source bundler 130 to find a content source bundle 132 to use for a targeted advertising campaign for a high-end cooking tool. The advertiser may search for a relevant bundle by specifying keywords such as "food" or "cooking". Once the advertiser locates a content source bundle matching one or more of the specified keywords, the advertiser may use the bundle to assist in specifying the advertisements from the advertisement server 120 to use in the targeted advertising campaign)(col. 6, lines 44-59).
With respect to claim 6, Ho further teaches converts an address of a landing page of the advertiser that has been transmitted in advance from the advertiser terminal apparatus and has, added as a parameter, identification information of the advertising leaflet into a two-dimensional code, embeds the two-dimensional code in the document data, manages the identification information and the management number in association with each other, and transmits, when detecting access to the landing page by the customer, correspondence information between the identification information and the attribute information of the customer associated with the management number to the advertiser terminal apparatus (To facilitate a more tailored targeted advertising campaign, the advertisers may contract with content source bundle authors to use content source bundles to identify the websites and other content sources that are relevant to a particular interest or demographic. For example, a sports video game enthusiast may be able to readily identify certain websites and magazines that are frequented by other users sharing the same interests. Continuing the example described above, the sports videogame enthusiast is likely to be a very good source for the websites and periodicals that typical sports videogame enthusiasts frequent. The sports videogame enthusiast may take the list of websites that he or she typically visits (from a browser's "favorites" list or bookmarked files, for example) and generate a content source bundle that includes data that identifies those websites)(col. 4, lines 57 to col. 5, lines 1-4).
With respect to claims 7-8, Ho further teaches generates the advertising leaflet for the consignor to be bundled in the package to be sent to the customer of the consignor, based on the document data of the advertising leaflet for the consignor and information of a format of the advertising leaflet for the consignor, the document data and the information of the format being transmitted from the consignor terminal apparatus of the consignor; text to be inserted into the format (The advertisements may include a variety of advertisement formats and types such as text advertisements, graphic advertisements, audio advertisements and video advertisements transmitted from content source bundle authors and/or the bundler 130 to the advertiser ).
With respect to claim 13, Ho further teaches the information merchandise that is permitted to be bundled in the package and the information regarding merchandise that is not permitted to be bundled are based on categories of merchandise (describe the bundle such as “food” or “restaurant” on col. 6, lines 34-25 and relevant bundle by specifying keywords such as "food" or "cooking")(col. 6, lines 52-53).
With respect to claim 15, Ho further teaches acquires, from the logistic system, personalized leaflet document data and advertising leaflet document data associated with the management number based on content described in package advertisement correspondence information (depend from claim 1 and not given patentable weight to the logistic system because of the permitted step, the claim is not being positively claimed and do not commensurate in scope of the claims and such features are outside of the scope of the claims and therefore not given patentable weight).
acquires advertising leaflet document data of the advertiser based on the content described in the package advertisement correspondence information (see describe the bundle such as “food” or “restaurant” on col. 6, lines 34-25 and relevant bundle by specifying keywords such as "food" or "cooking")(col. 6, lines 52-53).
and outputs, to the printing apparatus, the instruction to print the document data of the selected advertising leaflet based on the advertising leaflet document data of the advertiser based on the content described in the package advertisement correspondence information (see input/output devices 660 for configured to receive input data and send output data to other input/output devices, e.g., keyboard, printer and display devices 660. ).
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 9-10, 14 are rejected under 35 U.S.C. 103 as being unpatentable over Ho.
With respect to claim 9, Ho further teaches herein attribute information of a customer targeted for advertisement by the consignor and information indicating weighting given to the attribute information of the customer are associated with each other in the logical expression (The ranking data may also include a relevancy ranking relating to the advertiser's target criteria based on, for example, keywords associated with bundles, the content sources identified by the bundle, and the similarity of the bundle to other bundles used in for campaigns having the same target criteria).
Ho is silent as to the logical expression is managed in association with information indicating an assignment position of the image and/or the text in the format of the advertising leaflet for the consignor. Official Notice is taken that it is old and well known to assign a position of an ad on a newspaper, printing media and the like based on how valuable the targeted customer is to the advertiser. For example, local ads are placed in the front of the flyer in order to receive the most attention. It would have been obvious to a person of ordinary skill in the art at the time of Applicant’s invention to have included, the logical expression is managed in association with information indicating an assignment position of the image and/or the text in the format of the advertising leaflet for the consignor because such a modification would better help manage the ads.
With respect to claim 10, Ho further teaches selects the image and/or the text using the logical expression based on the attribute information of the customer to whom the package scheduled to be sent is to be sent, and generates the advertising leaflet for the consignor by assigning the selected image and/or text to the format of the advertising leaflet for the consignor (The advertisements may include a variety of advertisement formats and types such as text advertisements, graphic advertisements, audio advertisements and video advertisements transmitted from content source bundle authors and/or the bundler 130 to the advertiser ).
With respect to claim 14, Ho further teaches on col. 2, lines 61-62 “A content source bundle owner may be compensated based on the performance of the content source bundle”, and filtering the bundle by specifying keywords such as "food" or "cooking")(col. 6, lines 52-53).
Ho is silent as to advertising leaflet having a highest reward set in the attribute information of the customer targeted by the advertiser that requests to bundle the advertising leaflet in the package from among advertising leaflets remaining as a result of filtering of the information merchandise that is permitted to be bundled in the package. Official Notice is taken that it is old and well known to select a variety of mutual funds and the like that offer the most returns/ rewards. It would have been obvious to a person of ordinary skill in the art at the time of Applicant’s invention to have selected the content source bundle of Ho based on the highest reward set in the attribute information of the customer targeted by the advertiser that requests to bundle the advertising leaflet in the package from among advertising leaflets remaining as a result of filtering of the information merchandise that is permitted to be bundled in the package, because such a modification would help select the leaflets in Ho with the highest reward/compensation.
References cited but not applied:
Article titled, “Subscription Based Product Optimization” (cited on IDS) teaches existing applications and programs automatically reorder frequently purchased items but none simultaneously monitor for the lowest available price and then automatically purchase the item based on mined pricing trend data and according to a flexible schedule set by the user. None of the capabilities of current software include the ability to offer the lowest price to the buyer and then reorder the item.
JP 2002/197179 teaches allowing an advertiser to execute an advertisement to customers of a mail-order company by matching a specific tie-up enterprise to an advertiser enterprise by use of the generated guidance information.
Warwick (2008/0294519) teaches on paragraph 0028 “The bundler program 34 allows the advertiser 10 to view or preview the bundled creative advertisement and content prior to publishing”
References cited but not applied:
Article titled, “Subscription Based Product Optimization” (cited on IDS) teaches existing applications and programs automatically reorder frequently purchased items but none simultaneously monitor for the lowest available price and then automatically purchase the item based on mined pricing trend data and according to a flexible schedule set by the user. None of the capabilities of current software include the ability to offer the lowest price to the buyer and then reorder the item.
JP 2002/197179 teaches allowing an advertiser to execute an advertisement to customers of a mail-order company by matching a specific tie-up enterprise to an advertiser enterprise by use of the generated guidance information.
Warwick (2008/0294519) teaches on paragraph 0028 “The bundler program 34 allows the advertiser 10 to view or preview the bundled creative advertisement and content prior to publishing”
Response to Arguments
The 101 rejections have been maintained. The claim pertain to: a bundled advertising service that selects advertising leaflet to be bundled with a high reward set for attribute information of a customer targeted by the advertiser that requests to bundle the advertising leaflet in the package, based on attribute information of the customer to whom the package is to be sent, the claims under their broadest reasonable interpretation pertain to advertising, marketing or sales activities or behaviors and fall under “Certain Methods of Organizing Human Activity”, prong one of step 2A. The claims additional elements of the logistic system and scanning of the barcode are outside of the scope of the claims, since the “when permitted, the one or more leaflets upon receipt of the information indicating a management number of the package to be sent for the customer obtained by reading a barcode on the package with a barcode reader of a logistic system as the package is being conveyed on a conveyor belt of the logistic system” the claims are not actively reading of a the barcode by a barcode reader of the logistic system and do not commensurate in scope of the claims and such features are outside of the scope of the claims and therefore not considered in the eligibility analysis.
Applicant argues that in Ho, the content is delivered, upon viewing of a website, rather than upon reading of a barcode on a package as recited in claims 1, 11 and 12 as amended. The Examiner wants to point out that the claims as recites, are not actively reading of the barcode by a barcode reader of the logistic system and do not commensurate in scope of the claims and such features are outside of the scope of the claims and therefore not given patentable weight (see rejection above). Even if the limitations were to be positively recited, Kakino seems to teach the claimed limitation on paragraph 0032 “The barcode 60 may be printed on a package of the discount target merchandise 50, or may be printed on a price label and attached to the discount target merchandise 50. The discount seal 70 is attached by an employee to, for example, a discount target merchandise that is about to expire at a position of the merchandise where the discount seal 70 does not overlap the barcode 60. The discount seal 70 may be attached to the same surface as the barcode 60, or may be attached to a different surface. “
Conclusion
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/RAQUEL ALVAREZ/Primary Examiner, Art Unit 3622