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 .
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.
The claims herein are directed to a method and system which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes). Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claim(s) recite(s) the following limitations that are considered to be abstract ideas:
Claim 1, 9, and 17
determining at least one piece of candidate promotional information after a promotional information request sent by a client is received;
separately determining a promotion gain quota of the at least one piece of candidate promotional information based on whether the at least one piece of candidate promotional information satisfies a preset promotion condition;
determining target promotional information based on a promotion cost of the at least one piece of candidate promotional information and the corresponding promotion gain quota thereof; and
pushing the target promotional information to the client.
The limitations of independent claim 1, 9 and 17, as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)because the claims disclose determining a candidate promotion information, determine a promotional gain quota, determining promotion cost and corresponding promotion gain quota and transmit the target promotional information to the client. This judicial exception is not integrated into a practical application. In particular the claims recite the additional elements of using memory, processor, electronic device, and computer. The aforementioned additional generic computing elements perform the steps of the claims at a high level of generality (i.e. As a generic medium performing generic computer function of determining and pushing such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to
amount to significantly more than the judicial exception. The claims 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 additional element of memory, processor, electronic device, and computer, to determining and pushing … amounts to no more than mere instruction to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
Thus, taken individually and in combination, the additional elements do not amount to
significantly more than the above-identified judicial exception (the abstract idea).
The dependent claims 2-8, 10-16, and 18-20 appear to merely further limit the abstract idea and as such, the analysis of dependent claims 2-8, 10-16, and 18-20 results in the claims “reciting” an abstract idea. The claims do not recite additional elements that integrate the exception into a practical application. the additional elements do not amount to an inventive concept (significantly more) other than the above-identified judicial exception (the abstract idea). Thus, based on the detailed analysis above, claims 1-20 are not patent eligible.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 2, 9, 10, 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mekikian (US 2007/0219949) in further view of Inoue et al (US 2004/0054577)
Claim 1, 9, 17: Mekikian disclose a promotional information delivery method, comprising:
determining at least one piece of candidate promotional information after a promotional information request sent by a client is received;(see for example [0033], after users make a request for content, an algorithm finds and appends one or more targeted advertisements depending on the sponsor preferences and bids. The targeted content (such as advertisements) may be selected according to various criteria, for example, based on, individually or in various combinations: the user's profile, past usage patterns, navigation pattern leading to the request for content, the specific content requested, and other factors that may contain information about the user's preferences in general.)
pushing the target promotional information to the client. ([0080], . The system delivers content to members who request content. This process registers members as authorized users of the system, allows the members to request media downloads, packages requested media with appropriate advertisements, and downloads the digital packages to members' devices and [0162], logic that sends the combined content and additional content and parameters over the network for receipt by a content play device. The additional content may comprise an advertisement.)
but does not explicitly disclose separately determining a promotion gain quota of the at least one piece of candidate promotional information based on whether the at least one piece of candidate promotional information satisfies a preset promotion condition; determining target promotional information based on a promotion cost of the at least one piece of candidate promotional information and the corresponding promotion gain quota thereof;
However Inoue discloses separately determining a promotion gain quota of the at least one piece of candidate promotional information based on whether the at least one piece of candidate promotional information satisfies a preset promotion condition; ([0279], the advertisement information to be exposed to the subscriber may be selected by taking into account not only the past results of advertisement exposure but also an exposure count quota imposed on each of the individual advertisements involved. [0281] Illustratively, the exposure count quota may be calculated for a certain period (e.g., one day) based on the term of an advertisement exposure contract and on the number of times the advertisement in question is expected to be exposed during the contract period. The quota is updated periodically (e.g., every day). Calculation of the quota may take into account such factors affecting the viewing count (exposure count) as days of the week, holidays, festival days, and consecutive holidays.) [
determining target promotional information based on a promotion cost of the at least one piece of candidate promotional information and the corresponding promotion gain quota thereof; ([00279-0281] and [0295], [0295] (1) In the system, advertisement information is handled in units of AdTargets by the system components leading up to the rule unit 41. From the MP unit 42 on, the information is reconstituted into individual advertisements for processing. If an advertisement has a plurality of AdTargets, the highest of the costs for the targets involved is regarded as the cost for the advertisement in question (alternatively, the costs may be averaged).)
Both Mekikian and Inoue teach a method of advertising. It would have been obvious to a
person of ordinary skill to use the promotional gain quota method of Inoue before the effective filing date of the claimed invention for the promotional gain quota method to be used in Mekikian in order to have adequate/advantageous advertisement exposure in a manner averting lopsided exposure of certain (or partial) advertisement information by giving consideration to the advertisement inventory. (Inoue, abstract)
Claim 2, 10, 18: Mekikian discloses the method according to claim 1, wherein separately determining the promotion gain quota of the at least one piece of candidate promotional information comprises [0036]:
separately determining whether the at least one piece of candidate promotional information satisfies a preset promotion condition; [0036] and
in response to determining that the candidate promotional information satisfies the preset promotion condition, determining the promotion gain quota of the candidate promotional information based on a promotion gain of the candidate promotional information; [0036 and [0064] or
in response to determining that the candidate promotional information does not satisfy the preset promotion condition, setting the promotion gain quota of the candidate promotional information to a preset gain value.[0079]
Claim(s) 3-8 11-16, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mekikian (US 2007/0219949) in view of Inoue et al (US 2004/0054577) and in further view of Boyd et al. (US 2002/0123930)
Claim 3, 11, 19: Mekikian discloses the method according to claim 2, wherein determining the promotion gain quota of the candidate promotional information based on the promotion gain of the candidate promotional information comprises:[0036] determining an average promotion gain of the candidate promotional information based on the second cumulative promotion gain; [0121]and
determining the promotion gain quota of the candidate promotional information based on the first cumulative promotion gain, the cumulative promotion gain quota consumption, and the average promotion gain.[0123] but does not explicitly disclose summing promotion gains of the candidate promotional information within a first preset time period to obtain a first cumulative promotion gain corresponding to the candidate promotional information; summing promotion gain quotas of the candidate promotional information within the first preset time period to obtain a cumulative promotion gain quota consumption corresponding to the candidate promotional information; summing promotion gains of the candidate promotional information within a second preset time period to obtain a second cumulative promotion gain corresponding to the candidate promotional information; However Boyd discloses summing promotion gains of the candidate promotional information within a first preset time period to obtain a first cumulative promotion gain corresponding to the candidate promotional information; [0122 and 0144] summing promotion gain quotas of the candidate promotional information within the first preset time period to obtain a cumulative promotion gain quota consumption corresponding to the candidate promotional information;[130]
summing promotion gains of the candidate promotional information within a second preset time period to obtain a second cumulative promotion gain corresponding to the candidate promotional information;[0144 and 0152]
Both Mekikian and Boyd teach a method of advertising. It would have been obvious to a
person of ordinary skill to use the summing of promotions method of Boyd before the effective filing date of the claimed invention for the summing of promotions method to be used in Mekikian in order to accurately forecast the impact of promotions. (Boyd, [0005])
Claim 4, 12, 20: Mekikian discloses the method according to claim 3, disclose wherein determining the promotion gain quota of the candidate promotional information based on the first cumulative promotion gain, the cumulative promotion gain quota consumption, and the average promotion gain comprises[0123]: but does not explicitly subtracting the cumulative promotion gain quota consumption from the first cumulative promotion gain to obtain a remaining quantity of the promotion gain; and in response to the remaining quantity of the promotion gain being greater than or equal to the average promotion gain, using the average promotion gain as the promotion gain quota of the candidate promotional information; or
in response to the remaining quantity of the promotion gain being less than the average promotion gain, using the remaining quantity of the promotion gain as the promotion gain quota of the candidate promotional information. However Boyd discloses subtracting the cumulative promotion gain quota consumption from the first cumulative promotion gain to obtain a remaining quantity of the promotion gain;[0130, 0131, 0141, 0142] and
in response to the remaining quantity of the promotion gain being greater than or equal to the average promotion gain, using the average promotion gain as the promotion gain quota of the candidate promotional information; [0144, 0146, 0152]or
in response to the remaining quantity of the promotion gain being less than the average promotion gain, using the remaining quantity of the promotion gain as the promotion gain quota of the candidate promotional information.[0152] Both Mekikian and Boyd teach a method of advertising. It would have been obvious to a
person of ordinary skill to use the subtraction/summing of promotions method of Boyd before the effective filing date of the claimed invention for the subtraction/summing of promotions method to be used in Mekikian in order to determine trends to properly forecast the impact of promotions. (Boyd, [0153])
Claim 5, 13: Mekikian discloses the method according to claim 2, wherein determining the promotion gain quota of the candidate promotional information based on the promotion gain of the candidate promotional information comprises but does not explicitly disclose summing promotion gains of the candidate promotional information within a first preset time period to obtain a first cumulative promotion gain corresponding to the candidate promotional information; summing promotion gain quotas of the candidate promotional information within the first preset time period to obtain a cumulative promotion gain quota consumption corresponding to the candidate promotional information; and determining the promotion gain quota of the candidate promotional information based on the first cumulative promotion gain and the cumulative promotion gain quota consumption. However Boyd discloses summing promotion gains of the candidate promotional information within a first preset time period to obtain a first cumulative promotion gain corresponding to the candidate promotional information; [0122 and 0144]
summing promotion gain quotas of the candidate promotional information within the first preset time period to obtain a cumulative promotion gain quota consumption corresponding to the candidate promotional information; [0130]and
determining the promotion gain quota of the candidate promotional information based on the first cumulative promotion gain and the cumulative promotion gain quota consumption;[0144 and 0152]
Both Mekikian and Boyd teach a method of advertising. It would have been obvious to a
person of ordinary skill to use the summing of promotions method of Boyd before the effective filing date of the claimed invention for the summing of promotions method to be used in Mekikian in order to accurately forecast the impact of promotions. (Boyd, [0005])
Claim 6, 14: Mekikian discloses the method according to claim 5, wherein determining the promotion gain quota of the candidate promotional information based on the first cumulative promotion gain and the cumulative promotion gain quota consumption comprises: subtracting the cumulative promotion gain quota consumption from the first cumulative promotion gain to obtain a remaining quantity of the promotion gain; and using the remaining quantity of the promotion gain as the promotion gain quota of the candidate promotional information. However Boyd discloses subtracting the cumulative promotion gain quota consumption from the first cumulative promotion gain to obtain a remaining quantity of the promotion gain; [0028, 0141, 0142] and
using the remaining quantity of the promotion gain as the promotion gain quota of the candidate promotional information.[0028] Both Mekikian and Boyd teach a method of advertising. It would have been obvious to a
person of ordinary skill to use the obtaining of remaining quantity method of Boyd before the effective filing date of the claimed invention for the obtaining of remaining quantity method to be used in Mekikian in order to accurately forecast the needed inventory. (Boyd, [0028])
Claim 7, 15: Mekikian discloses the method according to claim 2, wherein determining the promotion gain quota of the candidate promotional information based on the promotion gain of the candidate promotional information comprises: determining an average promotion gain of the candidate promotional information based on the second cumulative promotion gain; [0121] and
determining the promotion gain quota of the candidate promotional information based on the average promotion gain. [0123] but does not explicitly disclose
summing promotion gains of the candidate promotional information within a second preset time period to obtain a second cumulative promotion gain corresponding to the candidate promotional information;
However Boyd discloses summing promotion gains of the candidate promotional information within a second preset time period to obtain a second cumulative promotion gain corresponding to the candidate promotional information; [0122 and 0144]
Both Mekikian and Boyd teach a method of advertising. It would have been obvious to a
person of ordinary skill to use the summing of promotions method of Boyd before the effective filing date of the claimed invention for the summing of promotions method to be used in Mekikian in order to accurately forecast the impact of promotions. (Boyd, [0005])
Claim 8, 16: Mekikian discloses the method according to claim 1, wherein determining the target promotional information based on the promotion cost of the at least one piece of candidate promotional information and the corresponding promotion gain quota thereof comprises: but does not explicitly disclose separately summing the promotion cost of the at least one piece of candidate promotional information and the corresponding promotion gain quota thereof, to obtain a promotion selection indicator for the at least one piece of candidate promotional information; and using, as the target promotional information, candidate promotional information with a largest promotion selection indicator from the at least one piece of candidate promotional information.
However Boyd discloses separately summing the promotion cost of the at least one piece of candidate promotional information and the corresponding promotion gain quota thereof, to obtain a promotion selection indicator for the at least one piece of candidate promotional information; [0122 and 0144]and
using, as the target promotional information, candidate promotional information with a largest promotion selection indicator from the at least one piece of candidate promotional information.[0134]
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot due to the updated rejection above.
Applicant's arguments filed March 5, 2026 have been fully considered but they are not persuasive.
The applicant argues the 101 rejection by stating that “beyond any alleged abstract idea, for example, the features "separately determining a promotion gain quota of the at least one piece of candidate promotional information based on whether the at least one piece of candidate promotional information satisfies a preset promotion condition" and "determining target promotional information based on a promotion cost of the at least one piece of candidate promotional information and the corresponding promotion gain quota thereof." With these technical features, for a single promotional information request, one or more pieces of promotional information that are of interest to users and that can bring greater promotion gains can be preferentially returned to a client, thereby improving the efficiency and effectiveness of promotional information delivery, while reducing the overall promotion cost of promotional information. That is, amended claim 1 includes additional elements that integrate the alleged judicial exception into a practical application”, the Examiner respectfully disagrees the cited limitations are not technical features. The cited limitations are merely business rules being by a generic computing device performing generic computer functions. The applicant’s specification discloses at [0107-0114] that basically any type of computing device can be used to perform the claimed invention. Furthermore the applicant has not provided a citation to the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. Nor has the examiner been able to identify details of an improvement that would be apparent to a person of ordinary skill in art. Per MPEP 2106.05(a) If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. For example, in McRO, the court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea. McRO, 837 F.3d at 1313-14, 120 USPQ2d at 1100-01. In contrast, the court in Affinity Labs of Tex. v. DirecTV, LLC relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones
ineligible. 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016). The cited limitations do not appear to improve the functioning of a computer, any other technology or technical field. ALSO NOTE: Per MPEP 2106.05 (a) However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology. The applicant’s asserted improvement is merely an improvement to the abstract idea and thus not an improvement to the functioning of a computer, or to any other technology or technical field.
The applicant further argues the 101 rejection by stating that the claimed invention a whole amounts to significantly more than the judicial exception itself. For the same reasons above the Examiner disagrees. When determining if the claims recite significantly more than the judicial exception, the additional elements are considered to determine if the claims are integrate the judicial exception into a practical application. (see MPEP 2106.05(f) - Another consideration when determining whether a claim integrates a judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than a recitation of the words "apply it" (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on "the draftsman’s art")) The claims individually and as a whole merely receive, evaluates, select, and deliver promotional information based on the promotional criteria. The amendment merely changes the criteria but does not change the computers’ operation, nor provide an improvement to any other technology or technical field. Furthermore, as stated above, the asserted improvement to abstract decision making process itself does not constitute an integration of the abstract idea into a practical application.
Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using 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 claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
The applicant’s claims do not appear to have any limitations that are indicative of integration into a practical application. Thus the 101 rejection is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARNELL A POUNCIL whose telephone number is (571)270-3509. The examiner can normally be reached Monday - Friday 10:00 - 6:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D.A.P/Examiner, Art Unit 3622
/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622
Prosecution Insights