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 Status
Claims 1-20 are currently pending and are presented for examination on the merits.
Objection to Claims
As per the independent claims, should it be providing access to the file if the associated cost does not reach the trigger price (i.e., the sale is profitable)? And should it be “decreasing the line-of-credit by at least a portion of the line-of-credit”? or at least a portion of the price. Clarification is requested.
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 they recite non-patentable subject matter under MPEP § 2106, e.g., the 2019 PEG, October update. More particularly, the claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally, MPEP § 2106; Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 1, the claimed invention, taking the broadest reasonable interpretation, recites a process (i.e., a method), machine (e.g., apparatus, system, etc.), article of manufacture (e.g., a non-transitory computer readable medium) or composition of matter, and as such, is patent eligible.
Under MPEP § 2106, Step 2a-prong 1, Claims 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards incentivizing ad selections by awarding a monetary benefit for viewing/selecting ads, enabling a digital content purchase via a line of credit, executing a transaction where a strike price or trigger meets costs associated with the sale, and executing a transaction within a time threshold. These are all long-standing commercial practices previously performed by humans (e.g., businesses, online merchants, consumers, banks, etc.) manually and via generic computing. Most commonly, it is a long-standing commercial practice to provide ads in exchange for a consumer getting digital content for free, to include ads with a free digital download, etc. As such, the inventions include an abstract idea(s) under § 2106, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—a system, digital content distribution platform, server, memory, client device, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software to do what’s been previously done, albeit less efficiently or slower. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the dependent claims either further delineate the abstract idea, add further abstract idea(s), adds insignificant extra-solution activity, or further instruct the artisan to apply it (the abstract idea(s)) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 8, 10-15, 18, and 20 are rejected under 35 U.S.C. §102(a)(1) as being anticipated by US 2020/0051117 to Mitchell, in view of 2008/0275811 to Koningstein et al.
With respect to Claims 1, and 11, Mitchell teaches a method of accessing a digital content distribution platform (Abstract), and a system for access to a digital content distribution platform (FIG. 2;[0002]), comprising: a server ([0012]); and a memory communicatively connected to the server ([0219]), the memory containing instructions configuring the server to: receive, from a client device, a request for initial access of a user to a digital content distribution platform ([0115];[0147];[0167]); grant access to the digital content distribution platform based upon the request for initial access ([0147];[0177]), wherein granting access to the digital content distribution platform comprises: providing the user with a line-of-credit usable by the user to access digital content files from the digital content distribution platform ([0197-98]); transmit to the client device a plurality of active ads ([0138];[0177]); receive, from the client device, a selection of an active ad from the plurality of active ads ([0138];[0177]); increase the line-of-credit as a function of a user interaction with a selected active ad ([0138];[0167];[0177];[0196]); receive, from the client device, a selection of a digital content file located on the digital content distribution platform ([0138];[0177];[0196]); and decrease the line-of-credit by at least a portion of the line-of-credit ([0138];[0177];[0196];[0204], going from $0 to $1000 teaches increasing a credit line).
Mitchell fails to expressly teach, but Koningstein teaches receiving, from the user, a trigger price and time threshold of purchase, for the selected digital content file; and providing, automatically, the user with access to the file if an associated cost of the selected file reaches the trigger price and a limit of the line-of-credit exceeds the trigger price. [0050], “At the end of time period 404, the advertisement server determines that the retailer merits an increase in credit.”;[0051-55];[0063-64];[0078]) As discussed in Koningstein, billing methods typically remain static over time and thus do not adapt to changing conditions between the consumer and provider; there is need a method of billing that can adapt to changing conditions. [0004-05] It would have been obvious to one of ordinary skill in the art to modify Mitchell, to include the trigger and time limits recited herein and taught by Koningstein, in order to provide a more adaptable billing system.
With respect to Claims 2, and 12, Mitchell teaches wherein increasing the line-of-credit as a function of a user interaction with a selected active ad comprises increasing the line-of-credit as a function of user completion of the selected active ad ([0138], click through).
With respect to Claims 3, and 13, Mitchell teaches wherein the completion of the selected active ad requires that the user answers a question associated with the selected active ad ([0209];[0232]).
With respect to Claims 4, and 14, Mitchell teaches wherein the memory further contains instructions configuring the server to receive, from the client device, a selection of when an active ad is displayed ([0138];[0281]).
With respect to Claims 5, and 15, Mitchell teaches wherein the memory further contains instructions configuring the server to increase the line-of-credit as a function of an association of a second client device with an account associated with the user ([0167];[0281], third party).
With respect to Claims 8, and 18, Mitchell teaches wherein the memory further contains instructions configuring the server to rebate at least a portion of a line-of-credit decrease as a function of the user sharing the digital content file with a second user which performs a transaction associated with the digital content file. ([0196], teaching refunding a line of credit)
With respect to Claims 10, and 20, Mitchell teaches wherein the memory further contains instructions configuring the server to apply a discount to a transaction associated with the user as a function of the line-of-credit increase. [0011]
Claims 6, 7, 16, and 17 are rejected under § 103 as being unpatentable over Mitchell, in view of Koningstein, and further in view of US 2015/0302486 to Foufas et al.
With respect to Claims 6, and 16, the combination of Mitchell and Koningsteign fails to expressly teach, but Foufas teaches wherein the memory further contains instructions configuring the server to increase the line-of-credit as a function of the user sharing a link to the digital content file to a social network of the user ([0007]). Foufas discusses “the need for other differing, variable, and dynamic incentives” [0004]. It would have been obvious to one of ordinary skill in the art to modify Mitchell to including sharing a link of the content file to a user’s social media, in order to offer differing, variable, and dynamic incentive system.
With respect to Claims 7, and 17, Mitchell fails, but Foufas teaches wherein increasing the line-of-credit as a function of user sharing of a link to the digital content file to a social network of the user comprises determining a line-of-credit increase amount as a function of a size of the social network of the user. (Abstract; “Additional incentives and social media features to increase viewership” teaches one of ordinary skill in the art this limitation). Under the same rationale as Claim 6, it would have been obvious to one of ordinary skill in the art to modify Mitchell to include this limitation taught by Foufas.
Claims 9 and 19 are rejected under § 103 as being unpatentable over Mitchell, in view of Koningstein, and further in view of US 2010/0161398 to Albert et al.
With respect to Claims 9, and 19, Mitchell fails to expressly teach, but Albert teaches wherein the memory further contains instructions configuring the server to communicate to the user a scoreboard ranking users by their line-of-credit balance. ([0056]) Albert teaches that often viewers do not view an advertisement in its entirety and infrequently interact with it. [0001] It would have been obvious to one of ordinary skill in the art to modify Mitchell, to include this reward incentive, to encourage viewers to view an ad in its entirety and interact with it more.
Response to remarks
Applicant’s remarks submitted on 1/22/2026 have been fully considered but are not persuasive, where objections/rejections are maintained. The amendments to the independent claims fail to overcome the outstanding § 101 rejection, because applying a trigger price, and time threshold are themselves abstract ideas in the context of sales. The claims remain inclusive of a sale involving a line-of-credit, and increasing that line of credit based on interaction with an advertisement, which are economic activity (fundamental economic principles). No individual claim recites a practical application of the abstract idea(s). Limiting the transaction to a particular environment, i.e., a digital content file, fails to overcome patent ineligibility. Cases such as McRO, Bascom, and DDR Holdings are distinguishable from the present invention; in that it found a technological improvement; whereas the present invention recites a prior known business method in a particular context or environment. With respect to the prior art rejections, Koningstein has been added to further teach the limitations of the amended claims, such that Applicant’s remarks directed to the prior combination/rejection are moot. It is noted that multiple combinations are recited, and that a combination claim has not been presented. Please note that the applied reference(s) need not use the same terminology, or disclose the limitation verbatim, and also that the entirety of a prior art reference is to be applied to the respective claim(s), such that the pinpoint citations above are exemplary and provided for Applicant’s benefit; other locations within the applied reference(s) may further support the rejection. MPEP 2141.02(VI).
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 WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached on 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J JACOB/ Examiner, Art Unit 3696
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