DETAILED ACTION
Notice of Pre-AIA or AIA Status
This 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 Claims
This communication is in response to the RCE filed on 8/4/2025. Claims 1, 2, 3, 8, 9, 10, 15, 16, and 17 have been amended. Claims 1-20 are pending and have been examined.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/4/2025 has been entered.
Priority
This application claims continuation status of U.S. Patent Application No. 18/061,788, now US Patent No. 11,983,738, filed December 5, 2022, which is a continuation of U.S. Patent Application No. 15/997,090, now US Patent No. 11,521,232, filed June 4, 2018.
Applicant’s claim for the benefit of this prior filed application is acknowledged.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claims 1-7 are directed to a method. Claims 8-14 are directed to a non-transitory computer readable medium. Claims 15-20 15 are directed a system. Thus, on their face they fall within the four statutory categories of patentable subject matter.
Step 2A prong 1:
Claims 1, 8, and 15 recite virtually identical claim language. Claim 1 will be used as representative. Each claims additional elements will be addressed individually. The following limitations, when considered individually and as an ordered combination, are merely descriptive of abstract concepts:
in response to indicating a conversion, communicating, by an evaluation entity posted by an advertisement entity on a closed-loop distributed ledger, with the advertisement entity within the closed-loop distributed ledger to update meta-information stored in the evaluation, wherein the meta- information comprises a time-out period, a conversion parameter for evaluating the conversion, and a reward;
notifying, by the evaluation entity, within the closed-loop distributed ledger using an encrypted communication based on a public key and a SAEP key, a plurality of publishers of presence of the evaluation entity; and
if no claim is received within the time-out period, sending, within the closed-loop distributed ledger using the encrypted communication based on the public key and the SAEP key, by the evaluation entity to the advertisement entity, a request to delete the evaluation entity from the closed-loop distributed ledger
The following dependent claim limitations, when considered individually and as an ordered combination, are merely further descriptive of abstract concepts:
Claims 2, 9, 16:
if a plurality of claims are received within the time-out period, selecting, by the evaluation entity, based on the conversion parameter, a winning claim from the plurality of claims, and
allocating, by the evaluation entity, the reward to a publisher associated with the winning claim
Claims 3, 10, 17:
wherein the publisher is a source of the conversion and the conversion parameter includes a time stamp of the conversion.
Claim 4, 11, 18:
wherein, each of the plurality of claims includes an attribute associated with the conversion, and
the winning claim is selected based on matching the attribute with the conversion parameter.
Claims 5, 12, 19:
further comprising: transmitting information related to the winning claim to the publisher.
Claims 6, 13, 20:
further comprising: transmitting information related to the winning claim to one or more of a third-party service provider, an offline or online seller, and a manufacturer.
Claims 7, 14:
updating, based on the publisher associated with the winning claim, the information stored in the closed-loop distributed ledger.
The claims provide a manner of determining which publisher should receive credit for an advertising conversion. Thus, when considered individually and as an ordered combination, the claims embody certain methods of organizing human activity. Specifically, such activity is in the form of commercial interactions (in the form of advertising, marketing or sales activities or behaviors).
Step 2A prong 2: This judicial exception is not integrated into a practical application. The claims recite the following additional elements: a beacon signal (claim 1, 8, 15); downloading of an application on a mobile device (claim 1, 8, 15); evaluation package implemented on a computer (claims 1, 2, 8, 9, 15, 16); advertisement server (claim 1, 8, 15); blockchain (claim 1, 7, 8, 14, 15);
The beacon signal, evaluation package implemented on a computer, advertisement server, and blockchain are recited at a high level of generality and amount to mere instructions to “apply it” (the abstract idea) using generic computing components (Figures 2 and 11 and their related text and Paragraphs and 0100-0106). The computing devices (advertisement server, computer) merely send and receive data (communication, notifying, sending, transmitting) and process data (selecting, allocating, updating).
The high-level use of a beacon signal does not go beyond the “apply it” level of implementation. Nothing in the claims improves upon beacon signal technology or a technical field (See MPEP 2106.05(f)).
The evaluation package is merely the name of the software module used to implement the activities using the generic computing devices (See MPEP 2106.05(f)).
The high-level use of blockchain does not go beyond the apply it level of implementation. Nothing in the claims improves upon blockchain technology or a technical field (See MPEP 2106.05(f)).
The conversion being a download of an application to a mobile device merely provides a general link to a particular type of conversion associated with a computing environment. Nothing in the claims improves upon downloading of applications to devices technology or a technical field (See MPEP 2106.05(h)).
Accordingly, when considered both individually and as an ordered combination, the additional elements do not impose any meaningful limits on practicing the abstract idea.
Step 2B: The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Similarly, as above with regard to practical application, the additional elements when considered both individually and as an ordered combination, do not provide an inventive concept as they merely provide generic computing components used as a tool to implement the abstract idea and provide a general link to a particular technological environment or field of use (i.e. on a computer).
As a result, the claims are not patent eligible.
Regarding prior art:
The prior art teaches the limitations of the claims but does not explicitly teach the combination of steps and the argument that the combination of concepts is unique and would not have been obvious to one of ordinary skill in the art to combine the references to produce the invention has merit. Combining these references, in the particular order, and the particular pieces of each reference to arrive at the invention would not have been obvious to one of ordinary skill at the time of the invention. Therefore, the claims could be potentially novel over the prior art of record. Therefore, the claims are found to be allowable over the prior art of record. The examiner was unable to find a reasonable combination of references to teach each and every limitation in the context of the claimed invention.
In addition to the references already cited, Donamukkala et al (US 11,062,360) teaches conversion tracking using a tracking pixel (beacon). The type of conversions tracked include the downloading of an app to a user device. Further, there is an attribution window of time in which a publisher of an advertisement may receive credit for the conversion. If no third party submits conversion information during the attribution window, then no conversion associated with an impression has occurred.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of US Patent No. 11,983,738, and US Patent No. 11,521,232. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to the same subject matter, perform the equivalent functions and a person of ordinary skill in the art would not be free to practice one of the claimed inventions without infringing upon the other. The claimed invention is broader than the patented inventions above, however the previous prior art is the same used in the previous rejections and therefore the claims are obvious variants of each other.
Response to Arguments
The examiner has considered but does not find persuasive applicant’s arguments regarding rejections under 35 USC 101. Applicant asserts that the claims do not recite certain methods of organizing human activities. The examiner respectfully disagrees. Merely because the claims include additional elements such as the closed loop blockchain does not take away from the fact the claims are entirely directed to a manner of attributing conversions of advertisements to different parties responsible for presenting those advertisements and providing them with compensation. The closed loop blockchain is merely an additional elements as described above and while the invention may use a blockchain it is clearly not the purpose of the invention to improve upon blockchain technology or the technical field.
Further, the mere high-level use of encryption is merely part of the abstract idea. Using keys merely describes who has the key to decode the information if it is sent as a coded message. This is not even considered an additional element.
With regard to applicant’s technical problem and solution the examiner respectfully disagrees. The use 3PP communications are not described at all as the technical problem. Applicant alleges the problem is that the entity may be biased and thus not provide the advertiser with factually accurate information. (spec [0005]). This is not a technical problem. Further, the examiner fails to see how the alleged solution is a technical solution. All this appears to be is posting the information in a transparent manner. Merely providing the results on a block chain with decision making rules does not improve technology or a technical field and is at best an improvement to a business idea itself. Similarly, the beacon signal is also recited at a high level of generality and nothing in the claims improves upon beacon signal technology or a technical field. Just because the beacon signal indicates that the user downloaded the app does not improve beacon signal technology or a technical field.
The examiner finds no similarities what so ever with the findings of Bascom. The filtering process of Bascom providing technical advantages. Merely providing the results of the conversion in a transparent way by placing it on a blockchain does not provide a technical advantage. It is merely the means of showing the decision for the attribution. Nothing in the claims improves upon blockchain technology or a technical field.
With regard to arguments pertaining to 35 USC 103, the examiner finds applicant arguments persuasive. As a result, such rejections have been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER STROUD whose telephone number is (571)272-7930. The examiner can normally be reached Mon. - Fri. 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraff can be reached at (571) 270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER STROUD
Primary Examiner
Art Unit 3621B
/CHRISTOPHER STROUD/Primary Examiner, Art Unit 3621