DETAILED ACTION
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 .
This office correspondence is in response to the application filed on September 30, 2024. Claims 1-14 are amended as per preliminary amendment filed on 09/30/2024.
Claims 1-14 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/30/2024 was filed with the mailing date of the instant application on 09/30/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “control means is arranged for/to” in claims 1-4, and 6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification (paragraphs 28-35, 37-38, 50-53, 69, 75, and 94) as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-14 are rejected under 35 U.S.C. § 101 because they are directed to a judicial exception without significantly more.
Step 1 (Statutory Categories)
The four categories of statutory subject matter are: (1) a process, (2) a machine, (3) a manufacture and (4) a composition of matter. MPEP § 2106.03.
These claims are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. (2014).
Independent claims 1 and 14, recite a series of steps and, therefore, recite a process that is directed to the abstract idea because they cover the concepts of a mental process (process in the human mind) including grouping of certain methods of observing, organizing human activity. Hence, the steps in the independent claims fall within the mental process grouping of abstract idea.
Claims 1-14 are directed to an apparatus or a method, and the underlying invention is merely an Internet communication; in particular, relates to content processing device, a content processing system, and method, and is therefore an abstract idea (Analysis: Step 2A-Prong 1). The claimed invention is not directed to patent eligible subject matter. Based upon consideration of all of the relevant factors with respect to the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. The underlying invention is merely an Internet communication, and is therefore an abstract idea. The claim recites the limitation of making modification to the downloaded page. This limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the limitations are merely instructions to implement the abstract idea and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry (e.g. receiving, downloading, and sending related data). There is nothing in the claim element precludes the step from practically being performed in the mind. For example, transmitting information indicating properties of the computing resources, the claim encompasses simply exchanges of information resources in his/her mind. The mere nominal recitation of a generic performance and does not take the claim limitation out of the mental processes grouping. Thus, the claim recites a mental process.
The claim recites additional elements of sending the Internet page to which modification has been made. The claims do not recite any limitations that improve the functioning of a computer or to any other technology or technical field. The receiving step is recited at a high level of generality (i.e., as a general means of gathering computing resources to use in the modification step step), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The additional limitation is no more than mere instructions to apply the exception using a generic computer. Subject Matter Eligibility Examples: Abstract Ideas 2019-01-07 13 The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer component. 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 (2A – Prong 2).
Therefore, claim fails to provide an inventive concept (2B). As discussed with respect to Step 2A Prong 2, the additional element in the claim amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception on a generic computer 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 reevaluated in Step 2B. Here, the modification step was considered to be extra-solution activity in Step 2A, and thus it is reevaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. The background of the example does not provide any indication other than a generic, off the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions cited in MPEP 2106.05(d)(II) indicate that mere collection or receipt of data over a network is a well‐ understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Accordingly, a conclusion that the receiving and transmitting steps are well-understood, routine, conventional activity is supported under Berkheimer Option 2. For these reasons, there is no inventive concept in the claim, and thus it is ineligible.
Claims 2, 5, and 8-13 recites further collection of properties of the computing resources. The information collected do not add any significant more to the Judicial Exception as they do not add any improvement to the computer system or a technology field. Hence, the claims do not add significant more.
In light of the explanation and evidence provided above, the Examiner asserts that the claimed invention is directed in view of those case laws are directed towards the abstract idea. Lacking significantly more for the remainder of the claim, the invention is nothing more than an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Bourke et al. (US Publication 2014/0068420) hereafter Bourke, in view of Bodorik et al. (US Publication 2016/0292457) hereafter Bodorik.
As per claims 1, Bourke discloses an Internet content processing device including a control means arranged for: downloading, from an Internet server, the Internet page indicated in the received Internet page request (paragraphs: 5, 27, and 46, wherein it emphasizes that downloading the web page from an Internet server based on the request); making a modification to said downloaded Internet page (paragraphs: 15-19, and 28-29, wherein it elaborates that a modification has been made to the downloaded web page resources); and sending to said user device the Internet page to which the modification has been made (paragraphs: 43, 45, and 49, wherein it discusses sending the modified page to the destination). Although, Bourke discloses about the access the web page by a browser application, but he fails to specifically disclose receiving an Internet page request from a software application installed on a user device or running on a user device.
However, in the same field of endeavor, Bodorik discloses the claimed limitation of receiving an Internet page request from a software application installed on a user device or running on a user device (Abstract, paragraphs: 28, and 32).
Accordingly, it would been obvious to one of ordinary skill in the network art before the effective filing date of the claimed invention to have incorporated Bodorik’s teachings of receiving an Internet page request from a software application installed on a user device or running on a user device with the teachings of Bourke, for the purpose of effectively accessing the desired web page by the user browser.
As per claim 2, Bourke in view of Bodorik disclose the Internet content processing device, wherein said control means is arranged to select the modification to be made to the Internet page from a plurality of predetermined modifications (Bourke, paragraphs: 15, and 27-28, wherein it describes that the Internet page will be modified based on the polarity of predetermined modification rules).
As per claim 3, Bourke in view of Bodorik disclose the Internet content processing device, wherein: the selection of the modification to be made to the Internet page from the plurality of predetermined modifications is performed according to a random logic; or with each modification of the plurality of predetermined modifications a plurality of predetermined requirements is associated, wherein the control means is further arranged for: a) verifying which of the predetermined requirements are met by the Internet page; b) making to the Internet page the modification which has the greatest number of predetermined requirements satisfied by the Internet page; or, the selection of the modification to be made to the Internet page from the plurality of predetermined modifications is performed based on a user profile determined based on at least one of: one or more machine learning algorithms; one or more machine learning modules; one or more combinatorial algorithms; one or more classifier algorithms (Bourke, paragraphs: 45-45, 53, and 56; wherein it elaborates that web page modification will be accomplished based on the background random logic. The requirements of modification have to be satisfied above the threshold number).
As per claim 4, Bourke in view of Bodorik disclose the Internet content processing device, wherein said control means is arranged to exclude from the selection one or more modifications of said plurality of predetermined modifications when they have already been previously provided to a same user device (Bourke, paragraphs: 30, and 58).
As per claim 5, Bourke in view of Bodorik disclose the Internet content processing device, wherein said modification is an insertion of a game logic into the Internet page (Bourke, paragraphs: 61-63).
As per claim 6, Bourke in view of Bodorik disclose the Internet content processing device, wherein said control means is arranged to make the modification to said downloaded Internet page by a machine learning or artificial intelligence technique (Bourke, paragraphs: 48-49).
As per claim 7, Bourke discloses an Internet content processing system including: at least one Internet server associated with the Internet page indicated in the Internet page request; and the Internet content processing device of claim 1 (paragraphs: 44-45). Bourke fails to specifically disclose at least one user device on which a software application is installed or at least one user device arranged to run a software application, wherein said software application is arranged to issue an Internet page request.
However, in the same field of endeavor, Bodorik discloses the claimed limitation of at least one user device on which a software application is installed or at least one user device arranged to run a software application, wherein said software application is arranged to issue an Internet page request (Abstract, paragraphs: 28, and 32).
Accordingly, it would been obvious to one of ordinary skill in the network art before the effective filing date of the claimed invention to have incorporated Bodorik’s teachings of user device on which a software application is installed or at least one user device arranged to run a software application, wherein said software application is arranged to issue an Internet page request with the teachings of Bourke, for the purpose of effectively requesting the specific web page from the user browser application.
As per claim 8, Bourke in view of Bodorik disclose the Internet content processing system, wherein the software application is a videogame (Bourke, paragraphs: 38).
As per claim 9, Bourke in view of Bodorik disclose the Internet content processing system, wherein the software application is arranged to send the Internet page request to the Internet content processing device when a user reaches a predetermined step of the videogame (Bourke, paragraphs: 43).
As per claim 10, Bourke in view of Bodorik disclose the Internet content processing system, wherein the at least one user device is at least one of: a smartphone; a tablet; a computer; a wearable device; a videogame console (Bourke, paragraphs: 45).
As per claim 11, Bourke in view of Bodorik disclose the Internet content processing system, wherein said at least one user device is connected to said Internet content processing device via a first communication network (Bourke, paragraphs: 44).
As per claim 12, Bourke in view of Bodorik disclose the Internet content processing system, wherein said at least one Internet server is connected to said Internet content processing device via a second communication network (Bourke, paragraphs: 51-52).
As per claim 13, Bourke in view of Bodorik disclose the Internet content processing system, wherein said first communication network is a wireless network and/or said second communication network is a wireless network (Bourke, paragraphs: 53).
Claim 14 is an Independent claim with similar limitation but different in preamble and hence are rejected based on the rejection provided in claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references are cited but not been replied upon for this office action:
Aleksandrov et al (US Publication 2013/0311985): discusses updating web resources includes extracting web resources from an application to local files in response to an initial start-up of the application, downloading updates to the web resources to the local files from an external server; and running the application using contents from the local files.
Sundermeyer et al (US Patent No. 7,941,748): elaborates that maintaining a Web site is disclosed that includes browsing to a Web page to be edited, automatically downloading a source file for the Web page including related files associated with display of the Web page, editing the source file, and automatically publishing the edited source file to a file transfer server associated with the Web site including the related files associated with the display of the Web page.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARZANA B HUQ whose telephone number is (571)270-3223. The examiner can normally be reached Monday - Friday: 8:30-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emmanuel L Moise can be reached at 571-272-3865. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FARZANA B HUQ/Primary Examiner, Art Unit 2455