DETAILED ACTION
Examiner's Note: The Examiner has pointed out particular references contained in the prior art of record within the body of this action for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply. ***Applicant, in preparing the response, should consider fully the entire reference as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant’s remarks filed on 04/16/2026 have been fully considered.
Regarding claim[s] 1 – 32 under the anticipatory rejections, applicant’s remarks are not persuasive, therefore, the office will respond to such remarks in the office action below.
The office will respond to all other remarks that do not concern the prior art rejections, if any, in the office action below.
Applicant states on page[s] 8 and 9 of the remarks as filed: “
Rejections under 35 U.S.C. § 102 Claims 1-32 stand rejected under pre-AIA 35 U.S.C. § 102(e) for allegedly being anticipated by U.S. patent pub. no. 2009/0210899 to Lawrence-Apfelbaum, hereinafter Lawerence-Apfelbaum. Applicant respectfully traverses this rejection. Referring to claim 1, Lawrence-Apfelbaum fails to disclose or suggest at least "storing, by a computing device associated with a user, a user profile that comprises: first data indicating usage information associated with the user; and second data that is associated with advertisement selection and that is non-user-identifying" and "sending, to a server, the second data" as claimed. The Office Action alleges that Lawrence-Apfelbaum discloses "storing, by a computing device associated with a user" because Lawrence-Apfelbaum describes, at paragraph [0310], "the AC subsequently receives one or more viewer-entered preferences and/or a selection of a user profile (with saved viewer preferences) per step 706." Office Action, p. 5 (citing Lawrence-Apfelbaum, para. [0310], Fig. 7a). Initially, Lawrence-Apfelbaum does not describe its AC as storing the "one or more viewer-entered preferences and/or a selection of a user profile." Lawrence-Apfelbaum, para. [0310]. This issue with the rejection notwithstanding, the Office Action cites to the same portion of para. [0310] ("the AC subsequently receives one or more viewer-entered preferences and/or a selection of a user profile (with saved viewer preferences) per step 706") to allegedly teach "sending, to a server, the second data." Office Action, p. 6. Thus, the Office Action appears to improperly point to the same element for both the claimed "computer device associated with the user" and the claimed "server" and fails to show that Lawrence-Apfelbaum discloses or suggests both "storing, by a computing device associated with a user, a user profile that comprises: first data indicating usage information associated with the user; and second data that is associated with advertisement selection and that is non-user-identifying" and "sending, to a server, the second data" as claimed. Office Action, pp. 5-6. If it is the Office Action's position that Lawrence-Apfelbaum's "AC" is the claimed "server" and that some other device is the claimed "computing device associated with the user," and further that it is the other device that stores "a user profile that comprises: first data indicating usage information associated with the user; and second data that is associated with advertisement selection and that is non-user-identifying" before "the AC subsequently receives" the claimed "second data," Lawrence-Apfelbaum still nevertheless fails to anticipate claim 1. Even if the Office Action's position held, Lawrence-Apfelbaum would fail to disclose or suggest "selecting, by the computing device using the first data, an advertisement from the plurality of advertisements" (emphasis added) as presently recited in claim 1 because the Office Action argues that the AC (alleged "server") allegedly performs the selecting. Office Action, pp. 6-7 (citing Lawrence-Apfelbaum, para. [0311], Fig. 7b). For at least the foregoing reasons, Lawrence-Apfelbaum fails to disclose or suggest claim 1. Claim 17, while different from claim 1, recites similar features and is thus allowable for similar reasons. Each of dependent claims 2-9 and 18-25 depends from one of claims 1 and 17 and is thus allowable at least based on its dependency, as well as for its additional novel features.”
In response the examiner isn’t persuaded, the examiner points to the prior art of Lawrence – Apfelbaum. Specifically, at Lawrence – Apfelbaum, Figure # 7a, and paragraph: 0310, In the embodiment presented, the AC subsequently receives one or more viewer-entered preferences and/or a selection of a user profile (with saved viewer preferences) per step 706.
What one of ordinary skilled in the art would know from the prior mapping of paragraph: 0310 above, the user/viewer sends the viewer-entered preferences and/or a selection of a user profile (with saved viewer preferences) per step 706 from a consumer premise equipment (CPE) [i.e. applicant’s computing device associated with the user] (emphasis added….). See paragraphs: 0219,0222,0225, 0241,0243.
The examiner makes clear that a user or viewer must have a device of a sort to able to select/enter “viewer-entered preferences and/or a selection of a user profile. (emphasis added…)
The examiner’s articulation above meets applicant’s alleged remarks of: “Initially, Lawrence-Apfelbaum does not describe its AC as storing the "one or more viewer-entered preferences and/or a selection of a user profile." Lawrence-Apfelbaum, para. [0310]. This issue with the rejection notwithstanding,…”
The examiner further points to the prior art of Lawrence-Apfelbaum, Figure # 7a, and paragraph: 0310, In the embodiment presented, the AC [i.e. applicant’s server…] subsequently receives one or more viewer-entered preferences and/or a selection of a user profile (with saved viewer preferences) per step 706.
The examiner’s articulation above meets applicant’s alleged remarks of: “..the Office Action cites to the same portion of para. [0310] ("the AC subsequently receives one or more viewer-entered preferences and/or a selection of a user profile (with saved viewer preferences) per step 706") to allegedly teach "sending, to a server, the second data." Office Action, p. 6. Thus, the Office Action appears to improperly point to the same element for both the claimed "computer device associated with the user" and the claimed "server" and fails to show that Lawrence-Apfelbaum discloses or suggests both "storing, by a computing device associated with a user, a user profile that comprises: first data indicating usage information associated with the user; and second data that is associated with advertisement selection and that is non-user-identifying" and "sending, to a server, the second data" as claimed….”
The examiner further in response points to the prior art of Lawrence -Apfelbaum,
specifically, at paragraph: 0208, lines 12 – 16, The "user input" may also be entirely passive; e.g., selections made by an advertising controller (discussed in greater detail subsequently herein) based on user demographics such as income, geographic location, tuning habits, etc. [i.e. applicant’s first data indicating usage information]]; this meets applicant’s claim limitation of “first data indicating usage information associated with the user.”
Then further of Lawrence – Apfelbaum, at Figure # 5, and paragraph: 0256, lines 8 – 16, The AOS is in this embodiment adapted to include a "user profile" option, which, per step 504, the viewer may select. The viewer is then taken to the user profile [i.e. applicant’s…..second data] screen per step 506. The user profile screen is adapted to permit a user to enter a user name per step 508. However, it will be appreciated that other methods of recognizing a user may be implemented, such as an image, a password, or other identifier. Moreover, the user can be anonymously identified if desired via their CPE; see the discussion presented subsequently herein regarding preserving subscriber anonymity.]; this meets applicant’s claim limitation of “and
second data that is associated with advertisement selection and that is non-user-identifying.”
What is further of Lawrence – Apfelbaum, at paragraph: 0222, As described above, the exemplary embodiment of the AOS is a computer-program generated user interface (UI) which gives a viewer a list of scheduled or otherwise available commercials which the viewer may select to view. The list is, in this embodiment, produced from the viewer's CPE 106 or recording device (or a network device in the case of advertising content stored off-premises) generating a compilation of metadata regarding the scheduled commercials. As previously discussed, this compilation may also be generated by a headend server or other network entity if desired.
The examiner’s articulation above meets applicant’s alleged remark of: “If it is the Office Action's position that Lawrence-Apfelbaum's "AC" is the claimed "server" and that some other device is the claimed "computing device associated with the user," and further that it is the other device that stores "a user profile that comprises: first data indicating usage information associated with the user; and second data that is associated with advertisement selection and that is non-user-identifying" before "the AC subsequently receives" the claimed "second data," Lawrence-Apfelbaum still nevertheless fails to anticipate claim 1.”
The examiner further in response points to the prior art of Lawrence -Apfelbaum, Figure # 7b, paragraph: 0311, At step 708, the AC next matches the one or more viewer-entered preferences with available advertisements, such as by performing a search of the metadata associated with those advertisements. Finally, an updated viewer-centric playlist of only those advertisements which match the viewer-entered preferences are displayed per step 710.
What is further of Lawrence -Apfelbaum, at paragraph: 0219, Alternatively, if the viewer does not select any advertisements within a set period of time of arriving at the AOS, 00:30 seconds in the illustrated example, the computer program running on the viewer's CPE (or network entity) will, via pathway A 238, select a set of commercials to fit the time necessary until the broadcast program is set to begin. The commercials selected may be chosen based on temporal considerations (e.g., to fit within the remaining time), and/or randomly from the commercials of paid advertisers. Alternatively, a system may be in place for the showing of a particular set of paid advertisers, as discussed in greater detail below. These computer-selected commercials are viewed by the viewer per step 240. Once these computer selected advertisements have finished, the viewer will be directed back to the selected broadcast program per step 242.
Then further of Lawrence - Apfelbaum, at paragraph: 0241, FIG. 3 demonstrates an exemplary method 300 by which the AOS (and the advertising controller or AC, described subsequently herein with respect to FIGS. 6a and 6b) may provide viewers the ability to search all available advertisements based on one or more criteria. According to this embodiment, a viewer is presented with an AOS per step 302. The viewer may enter search criteria at this screen per step 304.
The examiner’s articulation above meets applicant’s alleged remark of: “Even if the Office Action's position held, Lawrence-Apfelbaum would fail to disclose or suggest "selecting, by the computing device using the first data, an advertisement from the plurality of advertisements" (emphasis added) as presently recited in claim 1 because the Office Action argues that the AC (alleged "server") allegedly performs the selecting. Office Action, pp. 6-7 (citing Lawrence-Apfelbaum, para. [0311], Fig. 7b). For at least the foregoing reasons, Lawrence-Apfelbaum fails to disclose or suggest claim 1.”
***The examiner also makes not that applicant’s recites the word “associated,” one of ordinary skilled in the art would know that there is NO one to one correlation. For example, applicant’s recited “computing device” does not have to necessarily correspond with applicant’s recited user.
***The examiner’s articulated response above equally applies to the remaining base claim[s] 17, 26.
Applicant states on page[s] 9 and 10 of the remarks as filed: “As one example of such additional novel features, claim 6 recites, inter alia, "wherein the second data does not comprise the usage information." The Office Action alleges that Lawrence- Apfelbaum anticipates this claim, based on a description that "in other embodiments, no viewer preferences are received, or alternatively the viewer preferences are received prior to playlist generation Office Action, pp. 8-9 (citing Lawrence-Apfelbaum, para. [0310]). The cited portion of Lawrence-Apfelbaum clearly states that no viewer preferences are received "in other embodiments," that is, embodiments different from the embodiment the Office Action previously indicated teaches the claimed "storing, by a computing device associated with a user, a user profile that comprises: first data indicating usage information associated with the user; and second data that is associated with advertisement selection and that is non-user-identifying" and "sending, to a server, the second data." See Office Action, pp. 5-6; Lawrence-Apfelbaum, para. [0310] ("In the embodiment presented, the AC subsequently receives one or more viewer-entered
preferences and/or a selection of a user profile [h]owever, it will be appreciated that in other embodiments, no viewer preferences are received ") (emphasis added). The Office Action thus improperly attempts to combine different, contradictory embodiments of Lawrence-Apfelbaum in arguing that claim 6 is anticipated. Microsoft Corp. V. Biscotti, 878 F.3d 1052, 1069 (Fed. Cir. 2017) ("anticipation is not proven by 'multiple distinct teachings that the artisan might somehow combine to achieve the claimed invention.") (quoting Net MoneyIN, Inc V. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)).
Accordingly, Lawrence-Apfelbaum fails to disclose claim 6 for at least this additional reason. Claim 22, while different from claim 6, recites similar features and is thus allowable for similar reasons.”
In response the examiner isn’t persuaded, the examiner points to Lawrence-Apfelbaum. Specifically, at paragraph: 0310, However, it will be appreciated that in other embodiments, no viewer preferences are received, or alternatively the viewer preferences are received prior to playlist generation; e.g., as part of a subscriber sign-up profile, subscriber demographic assessment (e.g., "estimated" preferences), or the like. In that case, the first advertisement playlist displayed in step 704 will be the only list generated.
The examiner points out that applicant’s claim language of claim[s] 6, 22 are incomplete, at best. The claim language does not say what type of data the second data embodies if NO usage data is present. The claim language is indefinite.
***The examiner’s articulated response above equally applies to the dependent claim[s] 22.
Applicant states on page[s] 10 and 11 of the remarks as filed: “As another example, Lawrence-Apfelbaum also fails to disclose "wherein the sending the second data comprises sending the second data without the first data" as recited in claim 8. The Office Action rests its rejection of claim 8 on the same portion of Lawrence-Apfelbaum as described above for claim 6; namely, the description that "in other embodiments, no viewer preferences are received, or alternatively the viewer preferences are received prior to playlist generation……” Office Action, pp. 9-10 (citing Lawrence-Apfelbaum, para. [0310]). There are at least two problems with the Office Action's argument.
First, as described above for claim 6, the cited language refers to a different embodiment than the embodiment that allegedly teaches the claimed "storing, by a computing device associated with a user, a user profile that comprises: first data indicating usage information associated with the user; and second data that is associated with advertisement selection and that is non-user- identifying" and "sending, to a server, the second data." Lawrence-Apfelbaum, para. [0310]. Accordingly, the Office Action improperly attempts to combine different, contradictory embodiments of Lawrence-Apfelbaum in arguing that claim 8 is anticipated, and the rejection should be withdrawn.
Second, the Office Action argues that "the sending the second data comprises sending the second data without the first data" in Lawrence-Apfelbaum because "no viewer preferences are received, or alternatively the viewer preferences are received prior to playlist generation" but also argues that Lawrence-Apfelbaum teaches "sending, to a server, the second data" because "the AC subsequently receives one or more viewer-entered preferences and/or a selection of a user profile (with saved viewer preferences) per step 706." Office Action, pp. 6, 9-10 (citing Lawrence- Apfelbaum, para. [0310], Fig. 7a). These positions are contradictory. Either the viewer preferences (alleged "second data") are sent, or they are not. If the viewer preferences are sent, nothing in Lawrence-Apfelbaum indicates "the sending the second data comprises sending the second data without the first data" as recited in claim 8. If the viewer preferences are not sent, there is no "sending the second data" as recited in claim 8.
For at least these additional reasons, claim 8 is allowable. Claim 24, while different from claim 8, recites similar features and is thus allowable for similar reasons.”
In response the examiner isn’t persuaded, the examiner points to Lawrence – Apfelbaum. Specifically, at paragraph: 0310, However, it will be appreciated that in other embodiments, no viewer preferences are received, or alternatively the viewer preferences are received prior to playlist generation; e.g., as part of a subscriber sign-up profile, subscriber demographic assessment (e.g., "estimated" preferences), or the like. In that case, the first advertisement playlist displayed in step 704 will be the only list generated.
The examiner points out that applicant’s claim language of claim[s] 8, 24 are incomplete, at best. The claim language does not say what type of data the second data embodies if NO usage data/first data is present. The claim language is indefinite.
***The examiner’s articulated response above equally applies to the dependent claim[s] 24.
Applicant states on page[s] 11 and 12 of the remarks as filed: “Referring to claim 10, the Office Action merely states that claim 10 "includes the same or similar subject matter as method claim 1, and is similarly rejected." Office Action, p. 10. But the Office Action's argument ignores the differences in the claims. For example, claim 10 recites "receiving, from a content source, a plurality of advertisements based on the data." Claim 1 recites "receiving a plurality of advertisements based on the second data," but for this limitation the Office Action relies on Lawrence-Apfelbaum's description of "the advertising controller (AC) program utilizes the viewer's user profile….. to generate targeted advertisements in an updated playlist per step 520." Office Action, p. 6 (citing Lawrence-Apfelbaum, para. [0258]) (emphasis added). As explained above, the Office Action's rejection of claim 1 appears to equate the AC with the claimed "server." Office Action, p. 6. Thus, by merely applying the same arguments to claim 10, the Office Action is either improperly alleging that the same element (Lawrence- Apfelbaum's AC) teaches both the "server" and the "content source," or fails to identify any element that allegedly discloses or suggests "receiving, from a content source, a plurality of advertisements based on the data" as recited in claim 10 (emphasis added).
The above deficiency in Lawrence-Apfelbaum notwithstanding, as noted above the Office Action alleges that Lawrence-Apfelbaum discloses "storing, by a computing device associated with a user" as recited in claim 1 because Lawrence-Apfelbaum describes, at paragraph [0310], "the AC subsequently receives one or more viewer-entered preferences and/or a selection of a user profile (with saved viewer preferences) per step 706" but also cites to the same portion of para. [0310] to allegedly teach "sending, to a server, the second data." Office Action, pp. 5-6. Thus, the Office Action appears to improperly point to the same element for both the claimed "computer device" and the claimed "server" and, by attempting to apply the same arguments to claim 10, fails to show that Lawrence-Apfelbaum discloses or suggests both "storing, by a computing device, usage information associated with the computing device" and "sending, to a server, data that is associated with advertisement selection and that is non-user-identifying" as recited in claim 10. Office Action, pp. 5-6, 10.
For at least the foregoing reasons, claim 10 is allowable. Claim 26, while different from claim 10, recites similar features and is thus allowable for similar reasons. Each of claims 11-16 and 27-32 depends from one of claims 10 and 26 and is thus allowable at least based on its dependency, as well as for its additional novel features.
Withdrawal of the rejection is respectfully requested.”
In response the examiner isn’t persuaded, the examiner points out that the claim language of claim 10 is intentionally broader in scope. For example, the difference between claim 1 and 10 that applicant replaced the recited “server” in claim 1 with the recited “content source” in claim 10. One of ordinary skilled in the art would know that a server is content source, especially if the server is shown to distributed advertisements [i.e. content] to the user/viewer. See paragraph: 0310, 0311 of Lawrence-Apfelbaum.
Response to Amendment
Status of the instant application:
Claim[s] 1 – 32, are pending in the instant application.
Claim(s) 1 – 32 is/are rejected under pre-AIA 35 U.S.C. 102(e) as being taught by Lawerence – Apfelbaum et al. [US PGPUB # 2009/0210899], applicant’s claim amendments have been considered, however, they are not persuasive. Therefore, the rejection is maintained. The examiner has addressed the claim amendments in the office action below.
Claim Rejections - 35 USC § 102
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 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 –
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.
The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting directly or indirectly from an international application filed before November 29, 2000. Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior to the amendment by the AIPA (pre-AIPA 35 U.S.C. 102(e)).
Claim(s) 1 – 32 is/are rejected under pre-AIA 35 U.S.C. 102(e) as being taught by Lawerence – Apfelbaum et al. [US PGPUB # 2009/0210899].
As per claim 1. Lawrence – Apfelbaum does teach a method [Lawrence – Apfelbaum, paragraph: 0004, The present invention relates generally to the field of data and content-based networks. More specifically, the present invention relates in one exemplary aspect to methods and apparatus for delivering programming content along with alternate targeted advertisements (including promotions and other similar types of content) via a cable television network.] comprising:
storing, by a computing device associated with a user [Lawrence – Apfelbaum, Figure # 7a, and paragraph: 0310, In the embodiment presented, the AC subsequently receives one or more viewer-entered preferences and/or a selection of a user profile (with saved viewer preferences) per step 706.], a user profile that comprises:
first data indicating usage information associated with the user [Lawrence – Apfelbaum, paragraph: 0208, lines 12 – 16, The "user input" may also be entirely passive; e.g., selections made by an advertising controller (discussed in greater detail subsequently herein) based on user demographics such as income, geographic location, tuning habits, etc. [i.e. applicant’s first data indicating usage information]]; and
second data that is associated with advertisement selection and that is non-user-identifying [Lawrence – Apfelbaum, Figure # 5, and paragraph: 0256, lines 8 – 16, The AOS is in this embodiment adapted to include a "user profile" option, which, per step 504, the viewer may select. The viewer is then taken to the user profile [i.e. applicant’s…..second data] screen per step 506. The user profile screen is adapted to permit a user to enter a user name per step 508. However, it will be appreciated that other methods of recognizing a user may be implemented, such as an image, a password, or other identifier. Moreover, the user can be anonymously identified if desired via their CPE; see the discussion presented subsequently herein regarding preserving subscriber anonymity.];
sending, to a server, the second data [Lawrence – Apfelbaum, Figure # 7a, and paragraph: 0310, In the embodiment presented, the AC subsequently receives one or more viewer-entered preferences and/or a selection of a user profile (with saved viewer preferences) per step 706.[i.e. applicant’s…..second data] ];
receiving a plurality of advertisements based on the second data [Lawrence – Apfelbaum, paragraph: 0258, lines 6 – 10, Next, the advertising controller (AC) program utilizes the viewer's user profile [i.e. applicant’s…..second data] to generate targeted advertisements in an updated playlist per step 520. It is at this point that the viewer may determine whether to select any of the advertisements from the playlist for viewing, or subsequent delivery or select the option not to view any of the commercials.];
selecting, by the computing device using the first data, an advertisement from the plurality of advertisements [Lawrence – Apfelbaum, Figure # 7b, paragraph: 0311, At step 708, the AC next matches the one or more viewer-entered preferences with available advertisements, such as by performing a search of the metadata associated with those advertisements. Finally, an updated viewer-centric playlist of only those advertisements which match the viewer-entered preferences are displayed per step 710.]; and
causing output of the advertisement [Lawrence – Apfelbaum, Figure # 7b, paragraph: 0311, At step 708, the AC next matches the one or more viewer-entered preferences with available advertisements, such as by performing a search of the metadata associated with those advertisements. Finally, an updated viewer-centric playlist of only those advertisements which match the viewer-entered preferences are displayed per step 710. ].
As per claim 2. Lawrence – Apfelbaum does teach the method of claim 1, wherein the first data further comprises external profile data, for the user, from an external source [Lawrence – Apfelbaum, Figure # 7a, and paragraph: 0310, In the embodiment presented, the AC subsequently receives one or more viewer-entered preferences and/or a selection of a user profile (with saved viewer preferences) per step 706.].
As per claim 3. Lawrence – Apfelbaum does teach the method of claim 1, wherein the first data further comprises one or more of:
an identifier of the computing device;
one or more identifiers of one or more devices associated with a premises of the computing device; or
an identifier of one or more users of the device [Lawrence – Apfelbaum, Figure # 5, and paragraph: 0256, lines 10 – 14, The viewer is then taken to the user profile screen per step 506. The user profile screen is adapted to permit a user to enter a user name per step 508. However, it will be appreciated that other methods of recognizing a user may be implemented, such as an image, a password, or other identifier.].
As per claim 4. Lawrence – Apfelbaum does teach the method of claim 1, wherein the usage information comprises one or more of:
an activation history of the computing device;
one or more services accessed via the computing device; or
content viewed via the computing device [Lawrence – Apfelbaum, paragraph: 0208, lines 12 – 16, The "user input" may also be entirely passive; e.g., selections made by an advertising controller (discussed in greater detail subsequently herein) based on user demographics such as income, geographic location, tuning habits, etc.].
As per claim 5. Lawrence – Apfelbaum does teach the method of claim 1, wherein the storing the first data is based on a selection of an option to enable collection of the first data [Lawrence – Apfelbaum, Figure # 7a, and paragraph: 0310, lines 6 – 10, In the embodiment presented, the AC subsequently receives one or more viewer-entered preferences and/or a selection of a user profile (with saved viewer preferences) per step 706.].
As per claim 6. Lawrence – Apfelbaum does teach the method of claim 1, wherein the second data does not comprise the usage information [Lawrence – Apfelbaum, paragraph: 0310, However, it will be appreciated that in other embodiments, no viewer preferences are received, or alternatively the viewer preferences are received prior to playlist generation; e.g., as part of a subscriber sign-up profile, subscriber demographic assessment (e.g., "estimated" preferences), or the like. In that case, the first advertisement playlist displayed in step 704 will be the only list generated.].
As per claim 7. Lawrence – Apfelbaum does teach the method of claim 1, wherein the second data comprises one or more of:
financial data associated with the user;
location data associated with the user [Lawrence – Apfelbaum, paragraph: 0208, lines 12 – 16, The "user input" may also be entirely passive; e.g., selections made by an advertising controller (discussed in greater detail subsequently herein) based on user demographics such as income, geographic location, tuning habits, etc.];
demographic data associated with the user [Lawrence – Apfelbaum, paragraph: 0208, lines 12 – 16, The "user input" may also be entirely passive; e.g., selections made by an advertising controller (discussed in greater detail subsequently herein) based on user demographics such as income, geographic location, tuning habits, etc.]; or one or more services associated with the user.
As per claim 8. Lawrence – Apfelbaum does teach the method of claim 1, wherein the sending the second data comprises sending the second data without the first data [Lawrence – Apfelbaum, paragraph: 0310, However, it will be appreciated that in other embodiments, no viewer preferences are received, or alternatively the viewer preferences are received prior to playlist generation; e.g., as part of a subscriber sign-up profile, subscriber demographic assessment (e.g., "estimated" preferences), or the like. In that case, the first advertisement playlist displayed in step 704 will be the only list generated.].
As per claim 9. Lawrence – Apfelbaum does teach the method of claim 1, wherein the server comprises an advertisement server [Lawrence – Apfelbaum, Figure # 7a, paragraph: 0310, Per step 702, the AC requests from a designated source (e.g., headend or hub entity such as an advertising server, third party website, local advertisement repository stored on a DVR, etc.) a list of available advertisements].
As per method claim 10 that includes the same or similar subject matter as method claim 1, and is similarly rejected.
As per claim 11. Lawrence – Apfelbaum does teach the method of claim 10, wherein the plurality of advertisements are tagged with one or more targeting parameters [Lawrence – Apfelbaum, paragraph: 0054, In another variant, the act of selecting comprises: assessing metadata [i.e. applicant’s…tagged with one or more targeting parameters] associated with at least one of the available advertisements; and evaluating the metadata with respect to user descriptive information. The user descriptive information comprises e.g., information enabling determination of whether a user belongs to a particular demographic or psychographic.], and wherein the selecting is further based on the one or more targeting parameters [Lawrence – Apfelbaum, paragraph: 0055, In still another variant, the method further comprises: enabling a user to enter one or more advertisement selection criteria; comparing metadata associated with at least one of the available advertisements to the criteria; and selecting at least a subset of the available advertisements based at least in part on the act of comparing.].
As per claim 12. Lawrence – Apfelbaum does teach the method of claim 10, further comprising:
receiving one or more advertisement selection criteria [Lawrence – Apfelbaum, paragraph: 0055, In still another variant, the method further comprises: enabling a user to enter one or more advertisement selection criteria; comparing metadata associated with at least one of the available advertisements to the criteria; and selecting at least a subset of the available advertisements based at least in part on the act of comparing.]; and
determining, based on the one or more advertisement selection criteria, the data [Lawrence – Apfelbaum, paragraph: 0055, In still another variant, the method further comprises: enabling a user to enter one or more advertisement selection criteria; comparing metadata associated with at least one of the available advertisements to the criteria; and selecting at least a subset of the available advertisements based at least in part on the act of comparing.].
As per claim 13. Lawrence – Apfelbaum does teach the method of claim 10, wherein the data comprises one or more tokens, associated with one or more of the plurality of advertisements, based on information about a user associated with the computing device [Lawrence – Apfelbaum, paragraph: 0054, In another variant, the act of selecting comprises: assessing metadata [i.e. applicant’s tokens] associated with at least one of the available advertisements; and evaluating the metadata with respect to user descriptive information. The user descriptive information comprises e.g., information enabling determination of whether a user belongs to a particular demographic or psychographic.].
As per claim 14. Lawrence – Apfelbaum does teach the method of claim 10, wherein the usage information indicates one or more of:
one or more services accessed by the computing device;
one or more other computing devices associated with a user of the computing device;
transaction information for services associated with the user of the computing device; or
content output by one or more computing devices associated with a user of the computing device [Lawrence – Apfelbaum, paragraph: 0208, lines 12 – 16, The "user input" may also be entirely passive; e.g., selections made by an advertising controller (discussed in greater detail subsequently herein) based on user demographics such as income, geographic location, tuning habits, etc.].
As per claim 15. Lawrence – Apfelbaum does teach the method of claim 10, further comprising collecting the usage information based on an enablement setting for data collection [Lawrence – Apfelbaum, paragraph: 0068, In yet another variant, the computer program is adapted to: provide a user interface, the interface adapted to enable a user to enter user information; save the user-entered preference information as a user profile; evaluate metadata regarding the available advertisements; and generate the list of available advertisements based at least in part on the user information in the user profile. For example, the user information might comprise at least one of: (i) name; (ii) age; (iii) gender; (iv) marital status; (v) household income; (vi) hobbies; (vii) zip code; and (viii) occupation.].
As per claim 16. Lawrence – Apfelbaum does teach the method of claim 10, wherein the sending the data is based on user input to enable sharing the data [Lawrence – Apfelbaum, paragraph: 0067, In an additional variant, the program is adapted to: enable a user to enter one or more advertisement criteria; evaluate metadata associated with the list of available advertisements; and generate a second list of available advertisements that at least partly correlate with one or more of the criteria.].
As per apparatus claim 17 that includes all the same or similar claim limitations as method claim 1, and is similarly rejected.
***The examiner notes that applicant’s recited: “one or more processors,” “memory storing instructions,” is taught by Lawrence – Apfelbaum at paragraphs: 0074, 0092 & 0159.
As per apparatus claim 18 that includes all the same or similar claim limitations as method claim 2, and is similarly rejected.
As per apparatus claim 19 that includes all the same or similar claim limitations as method claim 3, and is similarly rejected.
As per apparatus claim 20 that includes all the same or similar claim limitations as method claim 4, and is similarly rejected.
As per apparatus claim 21 that includes all the same or similar claim limitations as method claim 5, and is similarly rejected.
As per apparatus claim 22 that includes all the same or similar claim limitations as method claim 6, and is similarly rejected.
As per apparatus claim 23 that includes all the same or similar claim limitations as method claim 7, and is similarly rejected.
As per apparatus claim 24 that includes all the same or similar claim limitations as method claim 8, and is similarly rejected.
As per apparatus claim 25 that includes all the same or similar claim limitations as method claim 9, and is similarly rejected.
As per apparatus claim 26 that includes all the same or similar claim limitations as method claim 10, and is similarly rejected.
***The examiner notes that applicant’s recited: “one or more processors,” “memory storing instructions,” is taught by Lawrence – Apfelbaum at paragraphs: 0074, 0092 & 0159.
As per apparatus claim 27 that includes all the same or similar claim limitations as method claim 11, and is similarly rejected.
As per apparatus claim 28 that includes all the same or similar claim limitations as method claim 12, and is similarly rejected.
As per apparatus claim 29 that includes all the same or similar claim limitations as method claim 13, and is similarly rejected.
As per apparatus claim 30 that includes all the same or similar claim limitations as method claim 14, and is similarly rejected.
As per apparatus claim 31 that includes all the same or similar claim limitations as method claim 15, and is similarly rejected.
As per apparatus claim 32 that includes all the same or similar claim limitations as method claim 16, and is similarly rejected.
Conclusion
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.
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/DANT B SHAIFER HARRIMAN/ Primary Examiner, Art Unit 2434
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