DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
This Office Action is in response to the communication filed on 09/16/2025.
Claims 1-2, 5, 6, 8-10, 12, 14, 16-18 and 20 have been amended.
4. Claims 1-20 are currently pending and are considered below.
Claim Rejections - 35 USC § 101
5. 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.
6. Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. Representative claim 1, recites a method, which is a statutory class, the method, comprising:
sending, to at least one content playback device, at least one advertisement promoting content;
receiving first information indicating that:
the at least one advertisement was output by the at least one content playback device, and
the promoted content was output by the at least one content playback device; and
causing, based on the first information, output of second information indicative of an effectiveness of the at least one advertisement.
The steps of
sending, to at least one content playback device, at least one advertisement promoting content;
receiving first information indicating that:
the at least one advertisement was output by the at least one content playback device, and
the promoted content was output by the at least one content playback device; and
causing, based on the first information, output of second information indicative of an effectiveness of the at least one advertisement,
as drafted, is a process that, under its broadest reasonable interpretation, covers a method of organizing human activity. Given the broadest reasonable interpretation, the claim recites a method for determining an outcome of an advertisement. The above identified method steps recite commercial interactions such as sales activities and/or tailored personalized marketing relating to providing data associated with the person.
If a claim limitation, under its broadest reasonable interpretation, covers commercial interaction such as tailored personalized marketing, then it falls within the “certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of content playback device, one or more processors and a memory. The content playback device is recited at a high-level of generality (i.e., as a generic processor performing a generic computer functions of sending, at least one advertisement promoting content; receiving first information, the at least one advertisement was output by the at least one content playback device, and the promoted content was output by the at least one content playback device; and causing, output of second information indicative of an effectiveness of the at least one advertisement) such that they amount to no more than mere instructions to apply the exception using generic computer components. 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. 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. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a content playback device, one or more processors and a memory amount to no more than mere instructions to apply the exception using generic computer components. The additional elements are similar to the additional elements found by courts to be mere instructions to apply an exception because they do no more than merely invoke computers or machinery to perform an existing process such as: a common business method or mathematical algorithm being applied on a general purpose computer (Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573 US 208, 223; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334); providing a user with tailored information like advertisements based on information known about the user such as a location, address, or personal characteristics and a time of day is a fundamental practice long prevalent in our system); In re Morsa, 809 F. App’x 913, 917 (Fed. Cir. 2020). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Thus, considered as an ordered combination, the additional elements add nothing that is not already present when the steps are considered separately. That is, a content playback device, one or more processors and a memory, performing commercial interactions including: sending, at least one advertisement promoting content; receiving first information; and causing, output of second information indicative of an effectiveness of the at least one advertisement, amount to mere instructions to apply the steps to a computer comprising of a processor.
Thus, claims 1, 9 and 17 are not eligible.
As for dependent claims 2-8, 10-16 and 18-20, these claims recite limitations that further define the same abstract idea noted in claims 1, 9 and 17. Therefore, they are considered patent ineligible for the reasons given above. The additional limitations of the dependent claims, when considered individually and as an ordered combination, do not amount to significantly more than the abstract idea itself.
Claims 1-20 are therefore not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 102
7. 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.
8. The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
9. Claims 1-20 are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by Fernandez Gutierrez (U.S. Pub. No. 2010/0274664) (hereinafter ‘Fernandez’).
Claims 1, 9 and 17: Fernandez discloses a method, s system and a non-transitory computer-readable medium, the method comprising:
sending, to at least one content playback device, at least one advertisement promoting content, Fernandez teaches the web pages that ascribe to this system contain a reference causing the browser of a user visiting said web page to contact the server, whereupon the latter sends an advertising insertion to the browser, for example as an advertising strip or "banner," so that the browser displays it on the user's computer screen (see at least paragraphs 0012, 0042, 0047, 0056 and 0100-0101);
receiving first information indicating that, Fernandez teaches the multimedia player sends a second SETUP 351 message, using the streaming session identifier received in message 341, and an RTSP type URI corresponding to the video stream. Furthermore, Fernandez teaches When the multimedia player 52 sends the PLAY message 371 using the same streaming session identifier, the streaming server 22 responds with another "200 OK" message 381 and begins to transmit the multimedia content, audio and video, to the streaming player, sending IUP packets 391 to the multimedia player (see at least paragraphs 0047-0058 and 0100-0103);
the at least one advertisement was output by the at least one content playback device, and the promoted content was output by the at least one content playback device, Fernandez teaches an example of the interchange of RTSP messages between multimedia player 52 and streaming server 22 to initiate a streaming session that also contains two streams. Initially the multimedia player 52 sends a DESCRIBE 311 message to obtain the data 25 and 19 that the streaming server 22 sends in the "200 OK" 321 answer message (see at least paragraphs 0100-0104); and
causing, based on the first information, output of second information indicative of an effectiveness of the at least one advertisement, Fernandez teaches to optimize the number of file downloads 1 and the possible advertising income, intermediary site 2 continuously vary links 93 of each referring site 9 and statistically track which are the ones that generate the most downloads and the greatest advertising income, and Fernandez further teaches an example of the interchange of RTSP messages between multimedia player 52 and streaming server 22 to initiate a streaming session that also contains two streams. Initially the multimedia player 52 sends a DESCRIBE 311 message to obtain the data 25 and 19 that the streaming server 22 sends in the "200 OK" 321 answer message (see at least paragraphs 0065 and 0100-0104).
Claims 2 and 10: Fernandez discloses the method and system according to claims 1 and 9, and Fernandez further teaches wherein the first information is based on:
monitoring content played by the at least one content playback device, Fernandez teaches the streaming server can track the streaming session created and compensate affiliated website 9 for the advertisements that the streaming server transmits to the client during the session (see at least paragraphs 0100, 0112 and 0133); and
determining, based on automatic content recognition, that the at least one advertisement was output by the at least one content playback device, Fernandez teaches an example of the interchange of RTSP messages between multimedia player 52 and streaming server 22 to initiate a streaming session that also contains two streams. Initially the multimedia player 52 sends a DESCRIBE 311 message to obtain the data 25 and 19 that the streaming server 22 sends in the "200 OK" 321 answer message (see at least paragraphs 0100-0104).
Claims 3 and 11: Fernandez discloses the method and system according to claims 1 and 9, and Fernandez further teaches wherein the first information is based on:
monitoring content played by the at least one content playback device, Fernandez teaches the streaming server can track the streaming session created and compensate affiliated website 9 for the advertisements that the streaming server transmits to the client during the session (see at least paragraphs 0100, 0112 and 0133); and
determining, based on automatic content recognition, that the promoted content was output by the at least one content playback device, Fernandez teaches an example of the interchange of RTSP messages between multimedia player 52 and streaming server 22 to initiate a streaming session that also contains two streams. Initially the multimedia player 52 sends a DESCRIBE 311 message to obtain the data 25 and 19 that the streaming server 22 sends in the "200 OK" 321 answer message (see at least paragraphs 0100-0104)
Claims 4, 12 and 18: Fernandez discloses the method, the system and the non-transitory computer-readable medium according to claims 1, 9 and 17 and Fernandez further teaches wherein the first information comprises at least one device identifier associated with the at least one content playback device and at least one message identifier associated with the at least one advertisement, Fernandez teaches the streaming server creates a new streaming session to transmit the content of file 24, it assigns a session identifier to the streaming session created, and stores the information about identifying data 19 associated with the identifier from the created streaming session in database 21. As a result, streaming server 22 can track the streaming session created in relation to referring website 9 where link 93 has been activated, and can check whether advertisements ADl to AD6 are transmitted to multimedia player 52, in order to remunerate referring site 9 accordingly (see at least paragraphs 0133).
Claims 5, 13 and 19: Fernandez discloses the method, the system and the non-transitory computer-readable medium according to claims 1, 9 and 17 and Fernandez further teaches wherein the first information comprises at least one device identifier associated with the at least one content playback device and at least one content identifier associated with the promoted content, Fernandez teaches the streaming server creates a new streaming session to transmit the content of file 24, it assigns a session identifier to the streaming session created, and stores the information about identifying data 19 associated with the identifier from the created streaming session in database 21. As a result, streaming server 22 can track the streaming session created in relation to referring website 9 where link 93 has been activated, and can check whether advertisements ADl to AD6 are transmitted to multimedia player 52, in order to remunerate referring site 9 accordingly (see at least paragraphs 0133).
Claims 6, 14 and 20: Fernandez discloses the method, the system and the non-transitory computer-readable medium according to claims 1, 9 and 17 and Fernandez further teaches wherein the at least one advertisement comprises at least one of: a television advertisement, a quick response (QR) code that redirects the at least one content playback device to the promoted content, or an advertisement that is interacted with via a software application, Fernandez teaches the streaming server creates a new streaming session to transmit the content of file 24, it assigns a session identifier to the streaming session created, and stores the information about identifying data 19 associated with the identifier from the created streaming session in database 21. As a result, streaming server 22 can track the streaming session created in relation to referring website 9 where link 93 has been activated, and can check whether advertisements ADl to AD6 are transmitted to multimedia player 52, in order to remunerate referring site 9 accordingly (see at least paragraphs 0133).
Claims 7 and 15: Fernandez discloses the method and system according to claims 1 and 9, and Fernandez further teaches wherein the promoted content comprises at least one of: a television program, a television program episode, or an event,
Fernandez teaches the streaming server creates a new streaming session to transmit the content of file 24, it assigns a session identifier to the streaming session created, and stores the information about identifying data 19 associated with the identifier from the created streaming session in database 21. As a result, streaming server 22 can track the streaming session created in relation to referring website 9 where link 93 has been activated, and can check whether advertisements ADl to AD6 are transmitted to multimedia player 52, in order to remunerate referring site 9 accordingly (see at least paragraphs 0133).
Claims 8 and 16: Fernandez discloses the method and system according to claims 1 and 9, and Fernandez further teaches wherein the effectiveness indicates that the at least one advertisement was successful in leading the promoted content to be presented at the at least one content playback device, Fernandez teaches the streaming server creates a new streaming session to transmit the content of file 24, it assigns a session identifier to the streaming session created, and stores the information about identifying data 19 associated with the identifier from the created streaming session in database 21. As a result, streaming server 22 can track the streaming session created in relation to referring website 9 where link 93 has been activated, and can check whether advertisements ADl to AD6 are transmitted to multimedia player 52, in order to remunerate referring site 9 accordingly (see at least paragraphs 0133).
Response to Arguments
10. Applicant’s arguments, filed on 09/16/2025, with respect to the Double Patenting rejection has been acknowledged. The filing of a Terminal Disclaimer has been acknowledged. The Double Patenting rejection has been withdrawn.
11. Applicant's arguments filed on 09/16/2025 with respect to the rejection of claims 1-20 under 35 U.S.C. 101 have been fully considered but they are not persuasive.
12. Applicant argued that “…For reasons similar to those described above with respect to Prong Two of Step 2A, the claimed technique is an improvement to technology that amounts to significantly more than an abstract idea under Step 2B because, as aforementioned, the claim technique is an improvement to determining information indicative of an effectiveness of the at least one advertisement. For at
least the above reasons, the claimed invention defines an inventive concept (i.e., significantly more than the alleged abstract idea) and thus defines patent eligible subject matter under Step 2B…” Remarks pages 6-11
13. Examiner noted that the claimed invention as currently claimed, is similar to Electric Power Group in that the claimed invention is directed towards the collection analysis, and output of results such as the effectiveness of the at least one advertisement. Furthermore, claims involving data collection, analysis, and display are directed to an abstract idea. Elec. Power Grp. V. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "collecting information, analyzing it, and displaying certain results of the collection and analysis" are "a familiar class of claims 'directed to' a patent ineligible concept"); see also In re TLI Comme'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC V. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). The rejection of claims 1-20 under 35 U.S.C. 101 has been maintained.
14. Applicant argued that “…Fernandez does not teach "causing, based on the first information [indicating that: the at least one advertisement was output by the at least one content playback device, and the promoted content was output by the at least one content playback device], output of second information indicative of an effectiveness of the at least one advertisement" as claimed…” remarks pages 11-13
15. Examiner noted that Fernandez teaches for example, by multiplying the advertising income generated when the advertisements associated with the audiovisual content of files 1 are displayed, by the percentage commission that referring site 9
will charge, intermediary site 2 obtains a statistical estimate of the earnings that each click on link 93 or each display of an advertisement of a file 1 implies for referring site
9. As a result, intermediary site 2 can update links 93 associated with a referring site 9, so that they advertise and point to the files 1 that will generate the greatest income. (see at least paragraphs 0065, 0089, 0101 and 0112).
Conclusion
16. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
17. VonDerheide et al. (U.S. Patent no. 9,841,282) discloses a real time location of the communication device of the offer recipient (o) 102 may be detem1ined prior to the
sending of the announcement. The real time location may be based on a signal received from the communication device of the offer recipient (o) 102, such as a receipt of a transmission or a broadcast having information about the real time location of the communication device of the offer recipient (o) 102 (see at least column 8 lines 51-67 and column 16 lines 5-21).
18. Proctor,Jr. et al. (U.S. Patent No. 8,370,955) discloses PIG. 9 shows a message flow diagram for an embodiment where an individual is in the presence of a broadcast device, such as for the museum example of FIG. 2.As with FIG. 2, the individual device 202 and the broadcast device 204 are present and enabled. In this example, an individual 902 is in a grocery store and their device 902 (Device 1) performs a scan for identifiers in step 904, as described previously. DI2 is detected having been transmitted from device 2 (903). Device 1 (902) sends a message to server 901 inquiring if DI2 is relevant to the entity associated with Device 1 and if the information associated with that device identifier (DI2) is available to be returned. In step 906, the server retrieves the accounts associated with both DI2 and Device 1 (Ell). The server detects that the entity associated with DI2 is an advertisement company, and that this device is a broadcast device only, and that there is an electronic coupon available for download to Device 1, and multimedia content available to be played if desired. Additionally, the account settings associated with Ell allow for the notification of broadcast devices in proximity (see at least column 14 lines 41-60).
19. Updated search include the following prior art:
20. Delker et al. (U.S. Patent No. 10,181,132) discloses a media player is provided. The media player comprises a communications interface, a memory store containing a plurality of personalized advertisements, and a media playback component. The targeted advertisements are refreshed by receiving updates from the communications interface during some of the intervals when the media player is connected to a network. The targeted advertisements are indexed by a plurality of characteristics, the first characteristic being a creation date of the targeted advertisements. The media playback component is configured to play a media content, wherein the media content is stored separately from the targeted advertisements, and to play one of the targeted advertisements in the memory store selected based on the characteristics of the one of the targeted advertisements (see at least the Abstract).
21. THIS ACTION IS MADE FINAL. 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.
22. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARILYN G MACASIANO whose telephone number is (571)270-5205. The examiner can normally be reached Monday-Friday 12:00-9:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, llana 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.
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/MARILYN G MACASIANO/Primary Examiner, Art Unit 3622 01/06/2026
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