Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Claims 2-21 are pending. Claims 2-21 are rejected.
Interview Summery
Examiner contacted applicant and requested amendments to overcome the potential 101 rejection. Examiner made some recommendations as simple as displaying. Applicant stated that the amendments of ‘displaying’ would not be possible as the claims would then be infringing on other applications.
Applicant has amended the claims, not based on Examiners renominations to avoid infringement, however the claims still fall under 101 rejections. After careful review of the claims, Examiner has contacted his SPE (on 12/15/2025) along with a meeting two other TQAZs (on 1/13/2026) one of which is a specialist in 101 rejections. All the claims have been reviewed and were found to be rejectable under 101. In practicing compact prosecution, the Specifications have also been reviewed in an attempt to find any subject matter that my overcome the 101, no subject matter to overcome the 101 has been found in the Specifications to overcome the 101 rejections.
Additionally, Applicant’s statements during the interview that “if the claims were amended to add display or allow any other control over the user’s device would cause infringement” is a clear indication that Applicant may be in position of prior art, as any art that may be infringed upon is prior art. Applicant is reminded of his duties to disclose any and all prior art, especially any art relating to ‘infringement’.
Nonstatutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The claim of this instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim of co-pending Application. Although the conflicting claims are not identical, they are not patentably distinct from each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Double Patenting Rejections will not be revisited and be held in abeyance until allowable subject matter is to be found.
Instant Application
Patent 12,096,097
Claims:
2. (New) A method of filling ad space with video ads to show on mobile devices that have limited display capability, including: responding to a request from a device for video ad content by sending at least an allocated URL from which the requested video ad content will be streamed and some information from an ad availability record to the requesting device; identifying a format for video streaming being used by a particular mobile device; and causing the ad content to be transcoded, in accordance with transcoding parameters to match the identified format, to a video stream accessible at the allocated URL in a format compatible with the requesting device.
3. (New) A method of filling ad space with video ads to show on mobile devices that have limited display capability, including: receiving an ad availability record, compatible with a video ad serving template standard, with a type parameter indicating video ad content format that is incompatible with a device that is requesting ad content; allocating a URL from which to stream the requested video ad content; responding to a request from a device for video ad content by sending at least an allocated URL from which the requested video ad content will be streamed and some information from an ad availability record to the requesting device; identifying a format for video streaming being used by a particular mobile device; and causing the ad content to be transcoded, in accordance with transcoding parameters to match the identified format, to a video stream accessible at the allocated URL in a format compatible with the requesting device.
4. (New) The method of claim 3, wherein the requesting device is a mobile device with a limited video display capability that is incompatible with the video ad content.
5. (New) The method of claim 3, further including retrieving the ad content from an ad source server after receiving the ad availability record.
6. (New) The method of claim 3, wherein the ad availability record is compatible with a display video ad serving template (VAST) standard.
7. (New) The method of claim 3, further including exchanging messages with a video player to synchronize a streaming start with the video player's readiness to stream.
8. (New) The method of claim 3, further including exchanging messages with a video player to pause or cancel transcoding responsive to directions from the video player.
9. (New) The method of claim 3, further including identifying the format compatible for video streaming to the particular mobile device and automatically adjusting transcoding parameters to match the particular mobile device.
10. (New) A computer readable storage medium including program instructions that, when executed, configure a processor to perform actions including: receiving an ad availability record, compatible with a video ad serving template standard, with a source URL for video ad content that is in a format incompatible with a device that is requesting ad content; allocating a URL from which to stream the requested ad content; responding to a request from a device for video ad content by sending at least an allocated URL from which the requested video ad content will be streamed and some information from an ad availability record to the requesting device; identifying a format for video streaming being used by a particular mobile device; and causing the ad content to be transcoded, in accordance with transcoding parameters to match the identified format, to a video stream accessible at the allocated URL in a format compatible with the requesting device.
11. (New) The computer readable storage medium of claim 10, the instructions further including configuring the processor to receive an indication of video format incompatibility from a mobile device with a limited video display capability.
12. (New) The computer readable storage medium of claim 10, the instructions further cause the processor to retrieve the video ad content from an ad source server after receiving the ad availability record.
13. (New) The computer readable storage medium of claim 10, wherein the ad availability record is compatible with a display video ad serving template (VAST) standard.
14. (New) The computer readable storage medium of claim 10, further including exchanging messages with a video player to synchronize a streaming start with the video player's readiness to stream.
15. (New) The computer readable storage medium of claim 10, further including exchanging messages with a video player to pause or cancel transcoding responsive to directions from the video player.
16. (New) The computer readable storage medium of claim 10, further including identifying the format compatible for video streaming to the particular mobile device and automatically adjusting transcoding parameters to match the particular mobile device.
17. (New) A system that delivers video ads to show on mobile devices that have limited display capability, the system including a processor, memory coupled to the processor, the computer readable storage medium of claim 10, coupled to the processor and loaded with the program instructions.
18. (New) The system of claim 17, the instructions stored in the memory further cause the processor to retrieve the video ad content from an ad source server after receiving the ad availability record.
19. (New) The system of claim 17, the instructions stored in the memory further cause the processor to exchange messages with a video player to synchronize a streaming start with readiness of the player to stream.
20. (New) The system of claim 17, the instructions further including configuring the processor to receive an indication of video format incompatibility from a mobile device with a limited video display capability.
21. (New) The system of claim 17, wherein the ad availability record is compatible with a display video ad serving template (VAST) standard.
Claims:
1. A method of filling ad space with video ads to show on mobile devices that have limited display capability, including: responding to a request from a device for video ad content by sending at least an allocated URL from which the requested video ad content will be streamed and some information from an ad availability record to the requesting device; identifying a format for video streaming being used by a particular mobile device and automatically adjusting transcoding parameters to match; and automatically transcoding the ad content to a video stream accessible at the allocated URL in a format compatible with the requesting device.
2. A method of filling ad space with video ads to show on mobile devices that have limited display capability, including: receiving an ad availability record, compatible with a video ad serving template standard, with a type parameter indicating video ad content format that is incompatible with a device that is requesting ad content; allocating a URL from which to stream the requested video ad content; responding to the request for the video ad content by sending at least the allocated URL and some information from the ad availability record to the requesting device; identifying a change in the format for video streaming being used by a particular mobile device and automatically adjusting transcoding parameters to match; and automatically transcoding the ad content to a live video stream accessible at the allocated URL in a format compatible with the requesting device.
3. The method of claim 2, wherein the requesting device is a mobile device with a limited video display capability that is incompatible with the video ad content.
4. The method of claim 2, further including retrieving the ad content from an ad source server after receiving the ad availability record.
5. The method of claim 2, wherein the ad availability record is compatible with a display video ad serving template (VAST) standard.
6. The method of claim 2, further including exchanging messages with a video player to synchronize a streaming start with the video player's readiness to stream.
7. The method of claim 2, further including exchanging messages with a video player to pause or cancel transcoding responsive to directions from the video player.
8. The method of claim 2, further including identifying the format compatible for video streaming to the particular mobile device and automatically adjusting transcoding parameters to match the particular mobile device.
9. A computer readable storage medium including program instructions that, when executed, configure a processor to perform actions including: receiving an ad availability record, compatible with a video ad serving template standard, with a source URL for video ad content that is in a format incompatible with a device that is requesting ad content; allocating a URL from which to stream the requested ad content; responding to the request for the ad content by: sending at least the allocated URL and some information from the ad availability record to the requesting device; identifying a change in the format for video streaming being used by a particular mobile device and automatically adjusting transcoding parameters to match; and automatically transcoding the ad content to a live video stream accessible at the allocated URL in a format compatible with the requesting device.
10. The computer readable storage medium of claim 9, the instructions further including configuring the processor to receive an indication of video format incompatibility from a mobile device with a limited video display capability.
11. The computer readable storage medium of claim 9, the instructions further cause the processor to retrieve the video ad content from an ad source server after receiving the ad availability record.
12. The computer readable storage medium of claim 9, wherein the ad availability record is compatible with a display video ad serving template (VAST) standard.
13. The computer readable storage medium of claim 9, further including exchanging messages with a video player to synchronize a streaming start with the video player's readiness to stream.
14. The computer readable storage medium of claim 9, further including exchanging messages with a video player to pause or cancel transcoding responsive to directions from the video player.
15. The computer readable storage medium of claim 9, further including identifying the format compatible for video streaming to the particular mobile device and automatically adjusting transcoding parameters to match the particular mobile device.
16. A system that delivers video ads to show on mobile devices that have limited display capability, the system including a processor, memory coupled to the processor, the computer readable storage medium of claim 9, coupled to the processor and loaded with the program instructions.
17. The system of claim 16, the instructions stored in the memory further cause the processor to retrieve the video ad content from an ad source server after receiving the ad availability record.
18. The system of claim 16, the instructions stored in the memory further cause the processor to exchange messages with a video player to synchronize a streaming start with readiness of the player to stream.
A patentee or applicant may disclaim or dedicated to the public the entire term, or any terminal part of the term of a patent. 35 U.S.C. 253. The statue does not provide for a terminal disclaimer of only a specified claim or claims. The terminal disclaimer must operate with respect to all claims in the patent. MPEP 804.02.
Additional applications that are subject to the DP rejections are 11,758,246 and 10,880,621.
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 10-21 are rejected under 35 U.S.C. 101 because independent claim 10 recited a computer program comprising a computer-readable tangible storage medium and a program instruction executable by a processor to cause the processor to perform a method. The limitation of non-transitory not recited. Although the program maybe program instruction that is stored on the tangible storage medium, there is no indication that the program itself cannot change, i.e. be transitory.
Subject Matter Eligibility of Computer Readable Media
The United States Patent and Trademark Office (USPTO) is obliged to give claims their broadest reasonable interpretation consistent with the specification during proceedings before the USPTO. See In re Zletz, 893 F.2d 319(Fed. Cir. 1989) (during patent examination the pending claims must be interpreted as broadly as their terms reasonably allow). The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP 2111.01. When the broadest reasonable interpretation of a claim covers a signals per se, the claim must be rejected under 35 U.S.C. @ 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Insinuations for Evaluating Subject Matter Eligibility Under 35 U.S.C. 101, Aug. 24, 2009; p. 2.
The USPTO recognizes that applicants may have claims directed to computer readable media that cover signals per se, which the USPTO must reject under 35 U.S.C. 8 101 as covering both non-statutory subject matter and statutory subject matter. In an effort to assist the patent community in overcoming a rejection or potential rejection under 35 U.S.C. 4 101 in this situation, the USPTO suggests the following approach. A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. 101 by adding the limitation "non-transitory" to the claim. CJ: Animals -Patentability, 1 077 0) Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation "non-human" to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. 5 101). Such an amendment would typically not raise the issue of new matter, even when the specifications silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure. See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).
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 “2-21” are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
On January 7, 2019, the USPTO released new examination guidelines setting forth a two-step inquiry for determining whether a claim is directed to non-statutory subject matter. According to the guidelines, a claim is directed to non-statutory subject matter if:
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), or
STEP 2: the claim recites a judicial exception, e.g. an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis:
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon?
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Claim 3 reads:
A method of filling ad space with video ads to show on mobile devices that have limited display capability, including:
receiving an ad availability record, compatible with a video ad serving template standard, with a type parameter indicating video ad content format that is incompatible with a device that is requesting ad content;
allocating a URL from which to stream the requested video ad content;
responding to a request from a device for video ad content by sending at least an allocated URL from which the requested video ad content will be streamed and some information from an ad availability record to the requesting device;
identifying a format for video streaming being used by a particular mobile device; and
causing the ad content to be transcoded, in accordance with transcoding parameters to match the identified format, to a video stream accessible at the allocated URL in a format compatible with the requesting device.
Using the two-step inquiry, it is clear that claim 3 is directed toward non-statutory subject matter, as shown below:
STEP 2A (PRONG 1): Is the claim directed to a law of nature, a natural phenomenon or an abstract idea? Yes, the claims 2-21 are directed to an abstract idea.
With regard to STEP 2A (PRONG 1), the guidelines provide three groupings of subject matter that are considered abstract ideas:
Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
Mental processes – concepts that are practicably performed in the human mind (including an observation, evaluation, judgment, opinion, calculating, determining).
The method in claim 3 is a mental process that can be practicably performed in the human mind and, therefore, an abstract idea. The abstract ideas are:
identifying a format for video streaming being used by a particular mobile device; Analyzing the abstract idea we can understand that the abstract idea with the given examples.
identifying a format for video streaming being used by a particular mobile device; user knows what device format his device can handle and therefore knows to request the same format.
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? No, the claim does not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
an additional element merely recites the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
an additional element adds insignificant extra-solution activity to the judicial exception [receiving data, data gathering, data output] further addressed in WUEC; and
an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Claim 3 does not recite any of the exemplary considerations that are indicative of an abstract idea having been integrated into a practical application. While the claim does recite that the method is for:
receiving an ad availability record, compatible with a video ad serving template standard, with a type parameter indicating video ad content format that is incompatible with a device that is requesting ad content; [data gathering, i.e. receiving data]
responding to a request from a device for video ad content by sending at least an allocated URL from which the requested video ad content will be streamed and some information from an ad availability record to the requesting device; [data gathering, i.e. receiving data, sending data]
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No, the claim does not recite additional elements that amount to significantly more than the judicial exception.
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre-guideline procedure is still in effect. Specifically, that examiners should continue to consider whether an additional element or combination of elements:
adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
Claim 3 does not recite any specific limitation or combination of limitations that are not well-understood, routine, conventional (WURC) activity in the field.
Claim 3 further recites WURC extra steps of:
allocating a URL from which to stream the requested video ad content; [insignificant extra solution, linking to a WURC technology, Apply it level]
causing the ad content to be transcoded, in accordance with transcoding parameters to match the identified format, to a video stream accessible at the allocated URL in a format compatible with the requesting device. [insignificant extra solution, linking to a WURC technology, apply it level, transcoding is WURC as definition in the specifications]
Analyzing the WURC steps of the abstract idea with the given examples.
we can understand that the abstract idea falls within the WURC Activity MPEP 2106.05(d)(1) Evaluation
improvement consideration WURC consideration MPEP.05(a);
mere instructions to apply an exception consideration MPEP 2106.05(f)
insignificant extra-solution activity consideration MPEP 2106.05(g)
Generic computer performing merely generic computer functions, data gathering, populating tables, sending and receiving data or performing functions ‘known’ in the art.
CONCLUSION
Thus, since claim 3 is: (a) directed toward an abstract idea, (b) does not recite additional elements that integrate the judicial exception into a practical application, and (c) does not recite additional elements that amount to significantly more than the judicial exception, it is clear that claim 3 is directed towards non-statutory subject matter.
Claims 2 and 10 are also rejected using the same rejections as made to claim 3.
Claims:
4-5, 7-8, 11-12, 14-15, 18-20 Data gathering
6, 9, 13, 16-17, 21 WURC [insignificant extra solution, linking to a WURC technology, Apply it level]
It is noted that some claims fall under both Data gathering and WURC such as claim 19 which ‘causes’ i.e. Linking to a technology, apply it level and also “exchange messages” which is Data gathering and receiving.
Claim Rejections - 35 USC § 112
Claims 2-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships. Claim 3 is given as an example, however all the claims are subject to the rejection and must be properly reviewed.
Claim 3 introduces multiple devices such as 1) mobile devices, 2) a device that is requesting ad content, 3) a device for video ad content, 4) the requesting device. 5) a particular mobile device. One of ordinary skill in the art would not know if the mobile devices, a device that requesting ad content, a device for video ad content, the requesting device, a particular mobile device are the same device or different devices. If they are the same device, why are they introduced multiple times? If they are different devices, the steps would be unclear as different devices request what different devices receive at random.
Claims 2-21 recites the limitation “ad device that is requesting ad content, a device for video ad content; the requesting device, a particular mobile device” show to violate antecedent basis standards. The claims are confusing and one may not know if the devices are the same or different. For example, “the requesting device” is established however there is no indication of “a requesting device”. There is a “a request from a device”. However, there are multiple devices associated with a request such as “a device that is requesting ad content” and “a request from a device for video ad content”. There is insufficient antecedent basis for this limitation in the claim.
Art rejections
The claims unclear to the point where on of ordinary skill can not understand the claimed invention. The Specifications and Drawings seam suggest that the mobile device is a single mobile device and their method acts on the single device as in Fig. 1 and Fig. 3. However; the claims seem to suggest that multiple devices communicate and receive ad content randomly. Additionally, the claims, specifications nor the drawings suggest that the inventive idea is more then an abstract idea. As such, no proper art can be searched. All claims have been fully addressed and examined.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20030001880 and US20130268963.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIHAR A KARWAN whose telephone number is (571)272-2747. The examiner can normally be reached on M-F; 11-7pm.
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, Ramon Mercado can be reached on 571-270-5744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIHAR A KARWAN/Examiner, Art Unit 3664