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 12/22/2025.
Claims 1, 3-20 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.
Claims 1 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 on line 4 and claim 19 on line 3 recite “advertisements needed to generate a personal advertisement query” is 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, 3-20 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, 3-18 recite describe tangible system components, thus falling within one of the four statutory classes; i.e., machine. Claim 19 recites a series of steps, thus falling within one of the four statutory classes; i.e., process. Claim 20 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 19 recites:
Generating a personalized advertisement query for a user based on activity information about the user; transmitting the personalized advertisement query to an advertisement management that is external to the client, without transmitting the activity information outside of the client; receiving from the advertisement management information about at least one advertisement corresponding to the personalized advertisement query that was transmitted to the advertisement management and outputting an advertisement based on the information about the at least one advertisement received from the advertisement management.
The limitations of personalizing an advertisement based on activity information and user advertisement query for the user 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).
The claims recite the additional elements: an artificial intelligence model a memory, a processor a server, the specification as filed discloses generic recitation of artificial intelligence model having an input and output to generate a query, a memory for storing and processor and server for transmitting, receiving and outputting advertisement/data.
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/device claim 1 and computer readable medium claim 20 are rejected under the same rationale as method claim 19 rejected above, as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as above. In addition the claims further recite a memory and a processor, the specification as filed discloses ” a processor 710 and a memory 720 storing one or more instructions that are executable by the processor 710. The processor 710 may be one processor or may include a plurality of processors. The memory 720 may be one memory or may include a plurality of memories. The processor 710 may execute one or more instructions stored in the memory 720 to perform the operations of the advertisement personalization unit 212 and/or the advertisement output unit 211”. “These generic computer limitations are no more than mere instructions to apply the exception using generic computer components.
Dependent claims 3-18 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend. Claim 5 recites a applications to obtain and output information which is generic computer function, claims 7, 9 recite generic recitation of operating system (OS). 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.
Allowable Subject Matter
Claims 1, 3-20 are allowable over prior art of record.
The invention pertains to personalization of the ads are performed inside the user's device, more specifically the user's device with an advertisement personalization unit may achieve the effect of personalizing an ad without transmitting the activity information about the user to the outside of the client device.
The prior art (MOK KR 2020/0030763)teaches cookies stored on the consumer's computer to remember information about a user's browsing activity and transmitting the user's browsing information to an external server for personalizing the ads. The claims differ from Mok in that a personalization unit which is part of the user's device generates advertisement query that includes advertisement properties such as product or service identifier, category information region or location information, price information etc. without transmitting the activity information about the user to the outside of the user's device. Therefore Mok, fails to teach “transmitting the personalized advertisement query to an advertisement management that is external to the client device without transmitting the activity information outside of the client”, as claimed.
The prior art (Reuther 2008/0109285) teaches receiving a query from a user device. The claims differ from Reuther in that in the claims the query doesn’t include user’s activity information transmitted outside of the client’s device and in Reuther the query context received from the user device may include demographic information, such as user sex, age, and marital status; social networking information such as community, locale, group memberships; and/or other data may also be received by an advertisement network. A query context may include other user specifics such as language preferences, display preferences, time/date data and/or other information. A query context may include type of device (e.g., mobile phone, laptop computer, PDA, game console), device settings/limitations (e.g., size, graphics, audio, video, memory), response display settings (e.g., font, color). A query context may include a user's current location and/or preferred location, which may be used to preference relevant search results for location-related queries. For example, a user may search for a nearby pizzeria. The advertisement vendor or advertisement network may automatically return a list of pizza restaurants closest to the user's current location. The query context may be automatically retrieved from the device and included in the query. Therefore Reuther fails to teach “transmitting the personalized advertisement query to an advertisement management that is external to the client device without transmitting the activity information outside of the client”, as claimed.
Other references of record:
Article by Goodman, S et al. titled “Neural Network Modeling: Artificial Intelligence Network Modeling: Artificial Intelligence Marketing hits the non-profit World” teaches using a set of data (such as age, income, length of residence, and zip code of a donor), a well designed neural network can generate a set of rules “predicting” the responsiveness of individual donors to an upcoming acquisition campaign.
Response to Arguments
The application pertains to: personalizing an advertisement based on activity information and user advertisement query for the user 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.
Applicant argues that the artificial learning model recited in the claims is patent eligible and refers to claim 3 in examples 47 and 48 for the use of a neural network in a manner that was deemed to be patent eligible. The Examiner wants to point out that the claims are not similar to claims 3 of examples 47 and 48, instead the instant claims recite artificial learning model used generically to accomplish a business function will not render the claims eligible. In this case, there appear to be no technical details of how the learning model operates beyond its ordinary capacity. Instead, it is simply generic “apply it” use of artificial model to accomplish this input and output features to select an advertisement, and does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Applicant argues that because the Examiner has found no prior art for the claimed combination, those features cannot reasonable cannot be characterized as "routine" or conventional" and that the claims meet the 101 requirements. The Examiner disagrees with Applicant because the 102, 103 requirements are different from the 101 requirements and must be argued accordingly. The claims are allowable over the prior art of record because the prior fails to disclose " “transmitting the personalized advertisement query to an advertisement management that is external to the client device without transmitting the activity information outside of the client” but transmitting data/personalized advertisement query, is mere instruction to apply the exception using generic, well known computer function and does not integrate the judicial exception into a practical application. With regard to arguments making the claims at issue analogous to DDR. The claims here do not address problems unique to the Internet, so DDR has no applicability. The patent at issue in that case dealt with a problem unique to the Internet: Internet users visiting one web site might be interested in viewing products sold on a different web site, but the owners of the first web site did not want to constantly redirect users away from their web site to a different web site. The claimed solution used a series of steps that created a hybrid web page incorporating “look and feel” elements from the host web site with commerce objects from the third-party web site. Id. The patent at issue in DDR provided an Internet-based solution to solve a problem unique to the Internet that (1) did not foreclose other ways of solving the problem, and (2) recited a specific series of steps that resulted in a departure from the routine and conventional sequence of events after the click of a hyperlink advertisement. The claims here do not address problems unique to the Internet, so DDR has no applicability. Applicant argues that the claims subject matter pertain to a technical improvement. The Examiner disagrees with Applicant because the claims and specification discloses on page 1, pertains to personalizing advertisements and privacy protection issues which is not a technical problem, but a business related problem and solution.
The Examiner wants to point out that the claims are not similar to the claims in Enfish, because the claims in Enfish were directed to reconfiguring a memory and example of not abstract ideas, as decided by the courts. Unlike, the instant claims which are directed to personalizing advertisements based on activity information and user advertisement query for the user 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.
Point of contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAQUEL ALVAREZ whose telephone number is (571)272-6715. The examiner can normally be reached Mondays thru Thursdays 8:30-6:30.
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.
/RAQUEL ALVAREZ/Primary Examiner, Art Unit 3621