Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Response to Amendment
This communication is in response to the amendment filed on 12/15/2025 for the application No. 18/817,983. Claims 1-20 are currently pending and have been examined. Claims 1-20 have been rejected as follow,
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of Patent No. 12,165,178. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims anticipate the claims under examination.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of Patent No. 12,165,178. Although the claim at issue is not identical, it is not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of Patent 12,165,178. Although the claim at issue is not identical, it is not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of Patent 12,165,178. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claims 6 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 7 of Patent 12,165,178. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims anticipate the claims under examination.
Claims 8 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 and 9 of Patent 12,165,178. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims anticipate the claims under examination.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of Patent 12,165,178. Although the claims at issue is not identical, it is not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-20 are not compliant with 101, according with the last “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), published in the MPEP 2103 through 2106.07(c). Examiner’s analysis is presented below for all the claims.
Claim 11: Step 1 of 2019 PGE, does the claim fall within a Statutory Category? Yes. The claim recites a method.
Step 2A - Prong 1: Is a Judicial Exception recited in the claim? Yes. The claim recites the limitations of “for the first subscriber, identifying a first set of subscribers that commonly subscribe to the first content creator, the first set of subscribers corresponding with the first subscriber by virtue of common subscribership to the first content creator, the first set of subscribers including a second subscriber and a third subscriber; identifying a second content creator that the second subscriber subscribes to but the first subscriber does not; identifying a third content creator that the third subscriber subscribes to but the first subscriber does not; determining a first quantity of the subscribers in the first set of subscribers that subscribe to the second content creator; determining a second quantity of the subscribers in the first set of subscribers that subscribe to the third content creator; ranking the second content creator and the third content creator based on the first quantity and the second quantity, respectively; generating recommendation information defining an individualized subscription recommendation for the first subscriber that recommends the second content creator or the third content creator based on the ranking of the second content creator and the third content creator;”The “identifying, determining, ranking, generating” limitations, as drafted, is a process and system that, under its broadest reasonable interpretation, covers performance of the limitations as certain methods of organizing human activity, advertising, marketing or sales activities or behaviors. The method to generate an individualized subscription recommendation. Thus, the claim recites an abstract idea.
Step 2A - Prong 2: Integrated into a Practical Application? No. The claim recites additional limitations, such as,
“storing subscribership information describing subscribers … who consume content created by content creators of the membership platform, the content creators offering benefit items to the subscribers of the membership platform who subscribe to the content creators, the subscribership information characterizing subscribership of individual ones of the subscribers to individual ones of the content creators, the subscribers including a first subscriber subscribing to a first content creator; …effectuating communication of the recommendation information …to present the individualized subscription recommendation for the first subscriber “. These are limitations toward accessing or storing or receiving data. It is merely gathering data.
The Examiner analyses other supplementary elements in the claim in view of the instant disclosure:
“within a membership platform, a membership platform, establishing a network connection between a server managing the membership platform and a computing platform associated with the first subscriber; from the server to the computing platform to cause the computing platform … within a user interface of the membership platform”;
The limitations comprise generic recited computer elements, software and data.
These supplementary elements are not sufficient to integrate the abstract idea because They merely reflects the use of conventional technology and amounts to only generally linking the use of an abstract idea to a particular technological environment. MPEP 2106.05(h).
The combination of these additional elements can also be considered no more than mere instructions “to apply” the exception, See MPEP 2106.05(f).
The Examiner gives the broadest reasonable interpretation to the above elements. They are insignificant extra-solution activity. See MPEP 2106.05(g).
Accordingly, even in combination, 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 as a whole does not integrate the method of organizing human activity into a practical application. Thus, the claim is ineligible because is directed to the recited judicial exception (abstract idea).
Step 2B : claim provides an inventive concept? No.
As discussed with respect to Step 2A Prong Two, the additional elements in the claim,
“within a membership platform, a membership platform, establishing a network connection between a server managing the membership platform and a computing platform associated with the first subscriber; from the server to the computing platform to cause the computing platform … within a user interface of the membership platform”;
amount to no more than mere instructions to apply the exception. i.e., mere instructions to apply an exception using generic hardware, software and data cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B.
Here, the limitations:
“within a membership platform, a membership platform, establishing a network connection between a server managing the membership platform and a computing platform associated with the first subscriber; from the server to the computing platform to cause the computing platform … within a user interface of the membership platform”;
were considered to be extra-solution activity in Step 2A, and thus it is re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field.
Other limitations in the claim, such as:
“storing subscribership information describing subscribers … who consume content created by content creators of the membership platform, the content creators offering benefit items to the subscribers of the membership platform who subscribe to the content creators, the subscribership information characterizing subscribership of individual ones of the subscribers to individual ones of the content creators, the subscribers including a first subscriber subscribing to a first content creator; …effectuating communication of the recommendation information …to present the individualized subscription recommendation for the first subscriber “. These are limitations toward accessing or storing or receiving data (gathering data). Accessing or receiving data is very well understood, routine and conventional computer task activity; It represents insignificant extra solution activity. Mere data-gathering step[s] cannot make an otherwise nonstaturory claim statutory In re Grams,888 F.2d 835, 840 (Fed. Cir. 1989) (quoting In re Meyer, 688 F.2d 789, 794 (CCPA 1982)).
Further, the instant specification does not provide any indication that the elements
“within a membership platform, a membership platform, establishing a network connection between a server managing the membership platform and a computing platform associated with the first subscriber; from the server to the computing platform to cause the computing platform … within a user interface of the membership platform”;
were are anything other than generic software and hardware, and the OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); and v. Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; court decisions cited in MPEP 2106.05(d)(II) indicate that merely computer receives and sends information over a network and presenting or displaying information, is a well‐understood, routine, conventional function when it is claimed in a merely generic manner (as it is here).
Accordingly, a conclusion that the
“within a membership platform, a membership platform, establishing a network connection between a server managing the membership platform and a computing platform associated with the first subscriber; from the server to the computing platform to cause the computing platform … within a user interface of the membership platform”;
limitations (pointed above) are well-understood, routine, conventional activity is supported under Berkheimer Option 2. See MPEP 2106.05 (d). The claim is ineligible.
Claim 1: Step 1 of 2019 PGE, does the claim fall within a Statutory Category? Yes. The claim recites a system.
Step 2A - Prong 1: Is a Judicial Exception recited in the claim ? Yes. Because the same reasons pointed above. Step 2A - Prong 2: Integrated into a Practical Application? No. Because the same reasons pointed above.
Step 2B : claim provides an inventive concept? No. Because the same reasons pointed above. The claim is ineligible.
Dependent claims 2-10 and 12-20, the claims recite elements such as
“wherein the one or more physical processors are further configured by the machine-readable instructions to: weight the second content creator based on weighting criteria; and rank the second content creator and the third content creator further based on weighting of the second content creator”, etc. These elements do not integrate the system of organizing human activity into a practical application. The claims are ineligible.
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 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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 5-10, 11 and 15-20 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by PG. Pub. No. 20180285933 (Lee-Chan).
As to claims 11 and 1, Lee-Chan discloses a method to generate an individualized subscription recommendation within a membership platform (see Fig. 1 and abstract), the method comprising:
a) storing subscribership information describing subscribers of a membership platform who consume content created by content creators of the membership platform, the content creators offering benefit items to the subscribers of the membership platform who subscribe to the content creators, the subscribership information characterizing subscribership of individual ones of the subscribers to individual ones of the content creators, the subscribers including a first subscriber subscribing to a first content creator;
(“1. A system for facilitating cross-promotion between channels hosted by an Internet based media provider, comprising: a memory that stores computer executable instructions and a data store comprising information identifying the channels and respective subscribers to the channels; …”, claim 1.
See also “[0003] Collaboration and cross-promotion between websites and other online entities is an excellent mechanism for increasing viewership and attracting new viewers, especially when the respective collaborating entities attract similar audiences. However, finding other entities to collaborate with is often difficult. For example, a content creator or business owner must first research other entities to learn which entity has an audience base the creator or business owner would be interested in reaching. After finding a suitable collaboration candidate, the creator or business owner must reach out to the collaboration candidate and persuade the candidate why collaboration and cross-promotion with one another would be beneficial to both entities. This second hurdle is often even more difficult than the first. Sometimes reaching out to other creators or businesses is like shouting into an empty void. Creators and businesses often get too many messages and business inquiries to respond to all of them. They also have no easy way to make decisions on whom to respond to first without investing at least some time into researching the respective inquiring entities.
[0005] FIG. 1 illustrates an example system for identifying and recommending channels for collaboration with one another based on similarity in audiences of the respective channels, in accordance with various aspects and embodiments described herein;
[0007] FIG. 3 presents a user interface that displays channels recommended for collaboration with a creator's channel [Examiner equates content creators ] in accordance with various aspects and embodiments described herein”, paragraphs 3, 5 7 and Figs. 1 and 3.
“…Users, …, can subscribe to one or more channels in which they are interested…”, paragraph 25 and “… Users can also subscribe to a channel to associate themselves with the channel, receive updates regarding the channel (e.g., updates regarding new additions to the channel, updates regarding new comments on the channel, updates regarding popularity of the channel, etc.), interact with other subscribers to the channel, and various additional perks of being a subscriber to the channel…”, paragraph 26);
b) for the first subscriber, identifying a first set of subscribers that commonly subscribe to the first content creator, the first set of subscribers corresponding with the first subscriber by virtue of common subscribership to the first content creator, the first set of subscribers including a second subscriber and a third subscriber;
(“… hardware processor that, when executing the computer executable instructions stored in the memory, is configured to: identify, based on information in the data store, a set of the channels respectively having at least one common subscriber to a first channel of the channels; for each channel in the set of channels, generate a cross-promotion score representative of a degree to which a channel is a match for cross-promotion, wherein the cross-promotion score is based on a number of common subscribers between the channel in the set of channels [Examiner interprets as a first set of subscribers that commonly subscribe to the first content creator] and the first channel and an engagement score which reflects interaction information with the media content associated with the channel; …”, claim 1.
“[0093] FIG. 7 illustrates a flow chart of an example method 700 that facilitates collaboration between entities based on similarity in respective audiences of the entities, in accordance with various aspects and embodiments described herein. At 702 a set of channels having at least one common subscriber to a channel are identified (e.g., via identification component 104)…”, paragraph 93 and Fig. 7.
See also “[0007] FIG. 3 presents a user interface that displays channels recommended for collaboration with a creator's channel in accordance with various aspects and embodiments described herein”, paragraph 7 and Fig. 3.
“…these metrics include similarity in audiences of the entities, and more particularly, a determined amount of shared audience members [common subscribership to the first content creator, the first set of subscribers including a second subscriber and a third subscriber]….”, paragraph 20.
“…he channel content can be digital content uploaded to the internet-based content platform by a channel curator and/or digital content selected by a channel curator from the content available on the Internet-based content platform. A channel curator can be a professional content provider (e.g., a professional content creator, a professional content distributor, a content rental service, a television (TV) service, etc.) or an amateur. Channel content can include professional content (e.g., movie clips, TV clips, music videos, educational videos) and/or amateur content (e.g., video blogging, short original videos, etc.). Users, other than the curator of the channel, can subscribe to one or more channels in which they are interested”, paragraph 25.
“…a first channel can be analyzed to identify other channels that have at least one common subscriber with the first channel. A filtering mechanism can also be applied to identify a subset of the other channels for recommending to the creator or owner (or entity otherwise afforded management rights to the channel) of the first channel for collaboration with the first channel….”, paragraph 27.
“…system further includes a processor that executes various computer executable components stored in the memory, including an identification component configured to identify a set of the channels having at least one common subscriber to a first channel of the channels based on the information in the data store,…”, paragraph 29 );
c) identifying a second content creator that the second subscriber subscribes to but the first subscriber does not;
(“[0097] FIG. 9 illustrates a flow chart of another example method 900 that facilitates collaboration between entities based on similarity in respective audiences of the entities, in accordance with various aspects and embodiments described herein. At 902, a set of entities having at least one common audience member to another entity are identified (e.g., via identification component 104”, paragraph 97 and Fig. 9);
d) identifying a third content creator that the third subscriber subscribes to but the first subscriber does not;
(“[0097] FIG. 9 illustrates a flow chart of another example method 900 that facilitates collaboration between entities based on similarity in respective audiences of the entities, in accordance with various aspects and embodiments described herein. At 902, a set of entities having at least one common audience member to another entity are identified (e.g., via identification component 104). At 904, the respective entities are ranked based on degree of similarity between an audience of the other entity and audiences of the respective entities (e.g., via ranking component 106). At 906, a subset of the respective entities are identified based on the ranking (e.g., via filter component 108). At 908, the subset of the respective entities are recommended to the other entity for entering into a collaboration or cross-promotion agreement (e.g., by recommendation component 110”, paragraph 97 and Fig. 9);
e) determining a first quantity of the subscribers in the first set of subscribers that subscribe to the second content creator;
(“…or example, parameters that can be employed to filter the other channels can include but are not limited to: number of common subscribers between the first channel and the respective other channels, total number of subscribers to the first channel, total numbers of respective subscribers to the other channels, number of common subscribers between the first channel and the other channels that are associated with a specific classification (e.g., top subscribers of the first channel, recent subscribers of the other channels, subscribers associated with different demographics, etc…”, paragraph 27);
f) determining a second quantity of the subscribers in the first set of subscribers that subscribe to the third content creator; (“…For example, parameters that can be employed to filter the other channels can include but are not limited to: number of common subscribers between the first channel and the respective other channels, total number of subscribers to the first channel, total numbers of respective subscribers to the other channels…”, paragraph 27);
g) ranking the second content creator and the third content creator based on the first quantity and the second quantity, respectively;
(“… a ranking component configured to rank respective channels [Examiner equates content creators ] in the set based on number of common subscribers between the respective channels in the set and the first channel. …”, abstract.
“…a ranking component configured to rank respective channels in the set based on number of common subscribers between the respective channels…”, paragraph 29.
See also
” [0007] FIG. 3 presents a user interface that displays channels recommended for collaboration with a creator's channel [Examiner equates content creators ] in accordance with various aspects and embodiments described herein”, paragraphs 3, 5 7 and Figs. 1 “ranking component 106” and 3.
“…ranking component 106 is configured to rank the respective channels included in the set based on a ranking factor that reflects a degree to which the respective channels are considered good/strong matches for collaboration and/or cross-promotion with the particular channel. Ranking component 106 can apply various algorithms and/or look up tables that relate various ranking factors associated with audience similarity, audience engagement, subscriber size, channel popularity, and/or content similarity, with scores representative of a degree to which a channel is a good or strong match for collaboration and/or cross-promotion with another channel”, paragraph 50);
h) generating recommendation information defining an individualized subscription recommendation for the first subscriber that recommends the second content creator or the third content creator based on the ranking of the second content creator and the third content creator;
(“[0034] System 100 can include collaboration recommendation system 102, content provider 118, and client device 120…”, paragraph 34.
“…number of subscribers) are recommended to one another for collaboration/cross-promotion….”, paragraph 64.
“[0076] Cross-promotion component 502 is configured to facilitate connection and communication between entities recommended for collaboration by recommendation component 110. Cross-promotion component 502 can include messaging component 504, report component 506, and automatic cross-promotion component 508. Messaging component 504 is configured to facilitate communication Internet based entities recommended for collaboration/cross-promotion with one another via the mechanisms disclosed herein…”, paragraph 76 and Fig. 5 elements 502, 118 and 120.
See also
“…the processor is further configured to identify a subset of the set of channels based on the ranking of the respective channels, generate a recommendation comprising information identifying … the channels as candidates for cross-promotion with the first channel, and providing the recommendation …”, paragraph 31.
“…generate a recommendation user interface comprising information identifying the subset of channels as candidates for cross-promotion with the first channel from the set of channels and information associated with the cross-promotion score for each of the channels, wherein the recommendation user interface enables communication with entities associated with each of the subset of channels and restricts communication with entities associated with channels other than the subset of channels”, claim 1).
i) establishing a network connection between a server managing the membership platform and a computing platform associated with the first subscriber (claims 3 and 4. Fig. 11 and associated disclosure);
j) and effectuating communication of the recommendation information from the server to the computing platform to cause the computing platform to present the individualized subscription recommendation for the first subscriber within a user interface of the membership platform.
(“…cause the recommendation user interface to be presented to an entity affiliated with management of the first channel”, claims 1-3.
“[0034] System 100 can include collaboration recommendation system 102, content provider 118, and client device 120…”, paragraph 34.
Fig. 5 elements 502, 118 and 120.
See also”[0067] For example, FIG. 3 provides an example user interface 300 that provides a channel creator access to information and management operations pertaining to the creator's channel in accordance with aspects and embodiments disclosed herein. In example user interface 300, the creator's username is Erin…”, paragraph 67 and “[0069] Each of the recommended channels can also be accompanied by a message button 308. Selection of the message button associated with a recommended channel can facilitate communication between Erin and the creator of the selected channel. For example, selection of the message button 308 can generate a collaboration message or post that is provided to a messaging inbox or user profile account for the creator of the recommended channel…”, paragraph 69).
As to claims 15 and 5, Lee-Chan discloses
obtaining subscription context information, the subscription context information including subscribership criteria required to be satisfied in order for the individualized subscription recommendation to be generated
(“0063] Each potential channel in the set is then evaluated using the criteria/thresholds defined in blocks 206 and 210 to determine whether to include it in a recommendation list for recommending to the creator/owner of the first channel for collaboration/cross-promotion…”, paragraph 63.
“…In an aspect, when a subset includes two or more channels automatic-cross promotion component 508 can apply a filter criteria that selection of one or more channels of the subset of channels at which to automatically include/integrate content associated with the first channel. The filter criteria can be based on the various metrics discussed in association with filter component 108…”, paragraph 82 and Fig. 5);
As to claims 16 and 6, Lee-Chan discloses further comprising: obtaining creator information characterizing the second content creator (Fig. 3 and associated disclosure); determining whether the subscribership criteria is satisfied based on the creator information (paragraph 80); and effectuating presentation of the individualized subscription recommendation based on the creator information satisfying the subscribership criteria.
(“[0067] For example, FIG. 3 provides an example user interface 300 that provides a channel creator access to information and management operations pertaining to the creator's channel in accordance with aspects and embodiments disclosed herein. In example user interface 300, the creator's username is Erin. Erin has signed into her channel account at a website (or other type of Network accessible platform) established by a media provider that hosts Erin's channel. Interface 300 can include several menu options that relate to various information and management functions regarding Erin's channel. For example, menu 302 includes several options or features to access, including a dashboard feature, a video manager feature, a community feature, a channel settings feature, an analytics feature, an inbox feature, and creation tools feature. Erin has selected the community option which has several menu subcategories including fans, insights and collaborations”, paragraph 67.
“[0080] Report component 506 is configured to generate data identifying why two channels are considered a suitable collaboration/cross-promotion match. This information can further be provided to the respective channel creators to facilitate evaluating whether to enter into a collaboration and/or cross-promotion agreement…”, paragraph 80).
As to claims 17 and 7, Lee-Chan discloses
wherein the subscribership criteria include age-appropriateness.
(“[0046] In another aspect, identification component 104 can be configured to identify a set of other channels having common subscribers with a particular channel that are associated with a particular attribute, characteristic or class. For example, the particular attribute, characteristic or class can relate to a particular user demographic (e.g., age, gender, location, language), a particular user preference or interest (e.g., a music type, a video genera, preferred actor, etc….”, paragraph 46).
As to claims 18 and 8, Lee-Chan discloses
obtaining subscriber information characterizing the first subscriber; (“…particular user demographic (e.g., age, gender, location, language,..”, paragraph 46);
determining the subscribership criteria based on the subscriber information for the first subscriber.(“…For example, identification component 104 can identify a subset of subscribers associated with the particular channel that have the specific attribute of interest (e.g., that are female, that are classified as top fans, that are between the ages of 10-18, that are a fan of a particular actor, etc….”, paragraph 46).
As to claims 19 and 9, Lee-Chan discloses
wherein the subscribership criteria include preferences of the first subscriber.
(“[0046] In another aspect, identification component 104 can be configured to identify a set of other channels having common subscribers with a particular channel that are associated with a particular attribute, characteristic or class. For example, the particular attribute, characteristic or class can relate to a particular user demographic (e.g., age, gender, location, language), a particular user preference or interest (e.g., a music type, a video genera, preferred actor, etc…”, paragraph 46).
As to claims 20 and 10, Lee-Chan discloses
wherein individualized subscription recommendation includes a link to a creator page of the second content creator, wherein selection of the link causes the computing platform to present the creator page within the user interface
(“…For example, a user interface employed by the media sharing system that provides the creator of the first channel access to information and management functions for the first channel can include a collaboration section that lists the recommended channels. Each of the recommended channels can be associated with a link to …”, paragraph 28.
“…For example, selection of the message button 308 can generate a collaboration message or post that is provided to a messaging inbox or user profile account for the creator of the recommended channel….”, paragraph 69).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2-4 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over 20180285933 (Lee-Chan) in view of US Patent No. 11838591 (Karlin).
As to claims 12 and 2, Lee-Chan discloses further comprising:wherein the ranking the second content creator and the third content creator is further based on ….[criteria] (“[0061] At 202, a set of potential channels is identified that have one or more common subscribers with a first channel. In an aspect, the set of potential channels can be initially identified based on a more restrictive initial filter criteria….”, paragraph 61).
Lee-Chan does not disclose but Karlin discloses
weighting the second content creator based on weighting criteria;
the weighting of the second content creator.
(Karlin that is in the business of content creation teaches “…whereby independent content creators and content consumers can interact with one another directly...”, 1:25-26.
“…The weighting and source of the data along with various higher level composite attributes of customers could be created, modified or improved based on interactions between customers and providers, along with stated preferences…”, 17:5-11, Fig. 5 and associated disclosure.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate Karlin’s teaching with the teaching of Lee-Chan. One would have been motivated to provide functionality to allow a user to enter various criteria for what he/she would like to be recommended and weighting the criteria (see abstract and 16:59-67) .
As to claims 13 and 3, Lee-Chan discloses further comprising:wherein the… criteria include one or more of subscribership size, benefit item type, recommendation history, or pledge amount.
(“…For example, the media provider can include (e.g., in memory 112) or have access to a data store that stores information regarding respective channels hosted by the media provider, including the subscribers to the respective channels and various information about the respective subscribers such as information regarding their interaction with the media provider (e.g., engagement, media watch/play history, media watch/play patterns) and other personal information about the respective subscribers (e.g., their preferences, demographics, classifications, etc…”, paragraph 44
“total number of subscribers to the first channel”, paragraph 64).
Lee-Chan does not disclose but Karlin discloses
weighting criteria;
(Karlin that is in the business of content creation teaches “…whereby independent content creators and content consumers can interact with one another directly...”, 1:25-26.
“…The weighting and source of the data along with various higher level composite attributes of customers could be created, modified or improved based on interactions between customers and providers, along with stated preferences…”, 17:5-11, Fig. 5 and associated disclosure.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate Karlin’s teaching with the teaching of Lee-Chan. One would have been motivated to provide functionality to allow a user to enter various criteria for what he/she would like to be recommended and weighting the criteria (see abstract and 16:59-67) .
As to claims 14 and 4, Lee-Chan discloses
wherein the … criteria include the recommendation history, the recommendation history including a number of times the second content creator has been recommended in the past, or a success rate of gaining new subscribers based on past recommendation.
(“[0071] Inference component 402 is configured to provide for or aid in various inferences or determinations associated with aspects of collaboration recommendation system 102. For example inference component 402 can facilitate identification component 104 and filter component 108 with identifying a set or subset, respectively, of entities (e.g., channels) for potential collaboration and/or cross-promotion with another entity (e.g., channel) [Examiner interprets as …times the … content creator has been recommended in the past]. In another example, inference component 402 can facilitate ranking component 106 with determining a ranking for a channel that reflects a degree to which the respective channels are considered a good match for collaboration and/or cross-promotion with the first channel. According to this example, inference component 402 can infer a ranking for a channel based on audience similarity, audience engagement, subscriber size, channel popularity, and/or content similarity. Inference component 402 can further infer a ranking based on historical data regarding previous collaborations between two channels and previous channel collaboration recommendations that were provided to the respective channels and disregarded by the respective channels…”, paragraph 71).
weighting criteria;
(Karlin that is in the business of content creation teaches “…whereby independent content creators and content consumers can interact with one another directly...”, 1:25-26.
“…The weighting and source of the data along with various higher level composite attributes of customers could be created, modified or improved based on interactions between customers and providers, along with stated preferences…”, 17:5-11, Fig. 5 and associated disclosure.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate Karlin’s teaching with the teaching of Lee-Chan. One would have been motivated to provide functionality to allow a user to enter various criteria for what he/she would like to be recommended and weighting the criteria (see abstract and 16:59-67) .
Response to Arguments
Applicant’s arguments of 12/15/2025 have been very carefully considered but are not persuasive.
Rejection of claims under Double Patenting is maintained because applicant has not filed a Terminal Disclaimer.
Rejection of claims under 101 is maintained because claims are directed to a judicial exception.
Applicant argues (remarks 12-13)
Rejections Under 35 U.S.C. § 101
Claims 1-20 currently stand rejected under AIA 35 U.S.C. § 101 as allegedly
being directed to an abstract idea without significantly more. Applicant disagrees. The
claims as originally filed are distinguished from any judicial exception, and/or the Office
Action fails to provide a reasoned conclusion otherwise….
b. Reliance On "Certain Methods Of Organizing Human Activity"
Grouping.
The Office Action alleges the claims "cover[] performance of
the limitations as certain methods of organizing human activity, advertising,
marketing or sales activities or behaviors." [Office Action, p. 11, bold emphasis in
original].
2. The Rejection Fails Under Prong One Because The Office Action Fails To
Show The Claims "Recite" An Abstract Idea.
The rejection of the claims under§ 101 constitutes legal error and should be
withdrawn at least because the Office Action fails to clearly show under Step 2A, Prong
One of the US PTO framework for administering the Alice/Mayo test that the claims…
"recite" (set forth or describe) an abstract idea…
The Office Action Does Not Identify A Coherent Abstract Idea To
Which The Claims Are Allegedly Directed…
The Office Action's inability to articulate a coherent concept to which the claims
are allegedly directed reflects a clear failure in the Office Action to show that the claims
"recite" (set forth or describe) an abstract idea. This alone is a basis upon which the
rejection should be withdrawn.
b. The Office Action's Reliance On "Certain Methods of Organizing
Human Activity" Is Erroneous…
In response the Examiner asserts that first of all Applicant needs to be familiar with the last “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), published in the MPEP 2103 through 2106.07(c). Examiner’s analysis and established prima facie of unpatentability used those MPEP guidance to apply 101 law.
Secondly, this case is not rejected under 101 only because the invention ability to run on a general purpose computer or server, but also because the detail facially sufficient analysis provided above, where the Examiner looked both the instant claims and the specification to elaborate Examiner's facially sufficient analysis. The additional elements in the instant claims do not provide significantly more to the abstract idea identified above, -The method to generate an individualized subscription recommendation-. The additional elements in the claims: “storing subscribership information describing subscribers … who consume content created by content creators of the membership platform, the content creators offering benefit items to the subscribers of the membership platform who subscribe to the content creators, the subscribership information characterizing subscribership of individual ones of the subscribers to individual ones of the content creators, the subscribers including a first subscriber subscribing to a first content creator; …effectuating communication of the recommendation information …to present the individualized subscription recommendation for the first subscriber “. And
“within a membership platform, a membership platform, establishing a network connection between a server managing the membership platform and a computing platform associated with the first subscriber; from the server to the computing platform to cause the computing platform … within a user interface of the membership platform”;
These identified additional elements do not: Improve another technology or technical field; Improve the functioning of a computer itself; Add a specific limitation other than what is well-understood, routine, and conventional in the field; Add meaningful limitations that amount to more than generally linking the use of the exception to a particular technological environment; Improve computer related technology by allowing computer performance of a function not previously performable by a computer. see MPEP 2106.05.
Third, the instant claims fail to show that they comprise more than the judicial exception that they are claiming.
And fourth, the prima facie of unpatentability established in this case is not erroneous and it is explained in detail in the facially sufficient analysis above .
Applicant argues (remarks 13-16)
Rejections Under 35 U.S.C. § 102
Claims 1, 5-10, 11, and 15-20 currently stand rejected under AIA 35 U.S.C. §
102(a)(1) as allegedly being anticipated by U.S. Patent Application Publication No.
2018/0285933 to Lee-Chan et al. ("Lee-Chan"). Applicant traverses the rejection under
§ 102 at least because the cited reference fails to disclose each and every claimed
feature.
For example, the rejection of claim 1 should be withdrawn at least because claim
1 recites features related to recommendations that are individualized for subscribers
based on other subscribers to which there is common subscribership to creators. LeeChan
fails to disclose these features. In pertinent part, claim 1 recites…
With respect to claim 1, the Office Action relies on descriptions of "a set of
channels having at least one common subscriber to a channel are identified" in LeeChan
for alleged disclosure of "for the first subscriber, identify a first set of subscribers
that commonly subscribe to the first content creator." [Office Action, p. 18]. Moreover,
with respect to claim 1, the Office Action relies on descriptions of "identifying ... the
channels as candidates for cross-promotion with the first channel, and providing the
recommendation to an entity affiliated with management of the first channel" in LeeChan
for alleged disclosure of "generate recommendation information defining an
individualized subscription recommendation for the first subscriber." [Office Action, pp.
20-21 ]. Applicant disagrees. Lee-Chan fails to describe these very features.
In particular, the Office Action's reliance on descriptions related to Lee-Chan's
"first channel" to reject claim features related to the "first subscriber" is erroneous and
unsubstantiated. There is a distinct difference between media channels, as described
in Lee-Chan, and an individual subscriber, as recited in the present claims and
supported by a broadest reasonable interpretation consistent with the Specification.
Here, the Specification uses the term "subscriber" to refer to a user who pays for and/or
receives services or goods (e.g., content) from a creator of that content, through an
online platform…Lee-Chan's use of the term "subscriber" is consistent with the
Specification's use of the term. The same is true of terms "content creator" and "media
channel." The Specification uses the term "content creator'' to refer to users that create
content that is provided to an audience or end user (e.g., subscribers) via the
membership platform. [See, e.g., Specification as filed, ,I 19]. Lee-Chan describes a
media channel that includes "data content available from a common source or data
content having a common topic or them." [Lee-Chan, ,I 25]. Lee-Chan's use of "media
channels" is consistent with the Specification's use of "content creator" -- both refer to
sources of content that is disseminated to subscribers. Therefore, extending the
meaning of the term media channel to also mean a subscriber is inconsistent with the
use of the term in the Applicant's Specification and the cited references.
In response the Examiner asserts that the mapping of the claims versus Lee-Chan’s teaching is consistent with the instant specification. See at least” [0005] FIG. 1 illustrates an example system for identifying and recommending channels for collaboration with one another based on similarity in audiences of the respective channels, in accordance with various aspects and embodiments described herein; the Examiner equates content creators to creator's channel and users can subscribe to one or more channels in which they are interested, see “[0007] FIG. 3 presents a user interface that displays channels recommended for collaboration with a creator's channel [Examiner equates content creators ] in accordance with various aspects and embodiments described herein”, paragraphs 3, 5 7 and Figs. 1 and 3.
“…Users, …, can subscribe to one or more channels in which they are interested…”, paragraph 25 and “… Users can also subscribe to a channel to associate themselves with the channel, receive updates regarding the channel (e.g., updates regarding new additions to the channel, updates regarding new comments on the channel, updates regarding popularity of the channel, etc.), interact with other subscribers to the channel, and various additional perks of being a subscriber to the channel…”, paragraph 26.
Lee-Chan does not disclose at least "recommendation information defining an
individualized subscription recommendation for the first subscriber." [Office Action, p.
14]. The individualized subscription recommendation, as recited in the present claims,
is generated for a first subscriber. Lee-Chan includes no language to disclose or
suggest recommendations that are individualized for subscribers. Rather, Lee-Chan
specifically states that recommendations are for other media channels and recommend
collaboration and/or cross promotion between the channels. [Lee-Chan, ,I31 ]. The
recommendations of Lee-Chan are not (1) generated for a first subscribe nor (2)
recommend the second content creator or the third content creator to subscribe to. The
Office Action fails to show otherwise.
In response the Examiner asserts that this allegation is not accurate because Lee-Chan teaches recommendations for the user or subscriber or client device and the content creator “[0034] System 100 can include collaboration recommendation system 102, content provider 118, and client device 120…”, paragraph 34. paragraphs 25 and 41. “…number of subscribers) are recommended to one another for collaboration/cross-promotion….”, paragraph 64.
“[0076] Cross-promotion component 502 is configured to facilitate connection and communication between entities recommended for collaboration by recommendation component 110. Cross-promotion component 502 can include messaging component 504, report component 506, and automatic cross-promotion component 508. Messaging component 504 is configured to facilitate communication Internet based entities recommended for collaboration/cross-promotion with one another via the mechanisms disclosed herein…”, paragraph 76 and Fig. 5 elements 502, 118 and 120.
“…the processor is further configured to identify a subset of the set of channels based on the ranking of the respective channels, generate a recommendation comprising information identifying … the channels as candidates for cross-promotion with the first channel, and providing the recommendation …”, paragraph 31.
“…generate a recommendation user interface comprising information identifying the subset of channels as candidates for cross-promotion with the first channel from the set of channels and information associated with the cross-promotion score for each of the channels, wherein the recommendation user interface enables communication with entities associated with each of the subset of channels and restricts communication with entities associated with channels other than the subset of channels”, claim 1.
At least for these reasons, Lee-Chan fails to disclose "for the first subscriber,
identify a first set of subscribers that commonly subscribe to the first content creator,"
and/or generate recommendation information defining an individualized subscription
recommendation for the first subscriber that recommends the second content creator or
the third content creator based on ranking of the second content creator and the third
content creator."
The disclosure of Lee-Chan is deficient with respect to claim 11 at least for the
reasons presented above in connection with claim 1 .
In response the Examiner asserts that this allegation is wrong, the disclosure of the prior art used in this case teaches all the limitation in the instant claims. There is not a deficient disclosure in this case. A prima facie of anticipation and obviousness have been established. When a prima facie case is established, the burden shifts to applicant to come forward with persuasive rebuttal evidence or argument to overcome the prima facie case (MPEP 2145). The Examiner respectfully notes that Applicant has not provided persuasive rebuttal evidence to overcome the prima facie case.
Rejections Under 35 U.S.C. § 103
Claims 2-4 and 12-14 currently stand rejected under AIA 35 U.S.C. § 103 as
allegedly being unpatentable over U.S. Patent Application Publication No.
2018/0285933 to Lee-Chan et al. ("Lee-Chan") in view of U.S. Patent No. 11,838,591 to
Karlin et al. ("Karlin"). Applicant expressly reserves the right to challenge the
analogousness of any of the cited references. Applicant traverses the rejection under §
103 at least because the proposed combination of references fails to teach or suggest
all of the claimed features. For example, the disclosure of Karlin fails to make up for the deficiencies of LeeChan
as presented above in connection with claims 1 and 11. For at least the reasons
presented above, independent claims 1 and 11 are not anticipated or rendered obvious
by Lee-Chan and Karlin.
In response the Examiner asserts that the strong prima facie of anticipation and obviousness supported in this case with documentary evidence is a bar that prevents patentability of this case. There is not novelty in the instant claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“Best offer recommendation service”. IEEE. 2016. This article discloses “There are multiple online offer aggregators, which can aggregate deals, coupons and offers from multiple parties. However, these aggregators generally cannot determine the best deal/s available among the existing deals. Many deals or coupons specify the percentage of discount or cashback on purchase of the item using the user's credit card, where the percentage varies between different cards. This makes it difficult to determine the best offer for a given credit card. In this paper we propose a service which can determine which offers would be relevant for a user with a given profile and/or online payment mechanism. The cloud server stores relevant data about available offers using crawlers and publicly available APIs, and given a desired product determines the best set of coupons or offers available given a user profile and payment mechanism such as credit card. This enables the service to recommend the best deals to the user. We have implemented a simple proof of concept for our service using a cloud server component and a component that is part of the web browser application on a device. We also discuss a revenue sharing model for our service”.
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 extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA VICTORIA VANDERHORST whose telephone number is (571)270-3604. The examiner can normally be reached on business hours from Monday through Friday from 8:30 AM to 4:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ashraf Waseem can be reached on 571-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARIA V VANDERHORST/Primary Examiner, Art Unit 3621 2/7/2026