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 .
Response to Amendment
The amendment filed on January 26, 2026 cancelled no claims. Claims 1, 15-16, and 23-27 were amended and no new claims were added. Thus, the currently pending claims addressed below are claims 1, 15-16, and 23-27.
Claim Interpretation
The claims include terms that have required interpretation based on the applciant’s disclosure:
Picture-in-Picture (PinP) window: widow other than the original window such as a pop-up window for displaying an advertisement (The applicant’s specification does not define the term PinP window. However, it is clear that it is merely a pop-up window based on at least figures 9-11.)
Claim Rejections - 35 USC § 112
The amendment filed on January 26, 2026 has overcome the 35 USC 112(a) rejections of 1, 15-16 and 23-27 that were raised in the Office Action dated October 24, 2025. Thus, the rejections are hereby withdrawn.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 15-16, and 23-27, as amended, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1, 15 and 16, as amended, recite a computer user terminal comprising a processor configure to output a content stored in the server apparatus to a display screen of the computer user terminal in response to a user operation. The examiner cannot find support for this limitation in the applicant’s disclosure. Based on the claim, as currently amended, the processor of the computer terminal unit is able to output on its display screen content that is currently stored on server apparatus. There is no support for this in the applicant’s disclosure. Instead, the applicant’s disclosure has support for the processor of the computer user terminal outputting a content received from the server apparatus to a display screen of the computer user terminal in response to a user operation. In this situation the content being output is not content stored in the server apparatus. The content being output is content received from the server apparatus. There is no indication in the applicant’s disclosure of a processor operating on one device capable of outputting content store on a different device. As such, claims 1, 15, and 16, as amended, fail to comply with the written description requirement.
Dependent claims 23-27 fail to cure the deficiencies of the claim from which they depend and, as such, are rejected by virtue of dependency.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 15-16, and 23-27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
First, independent claims 1, 15 and 16 recite: a terminal device outputting a content to a display screen of the terminal device in response to a user operation; and outputting to the display screen an advertisement on a part of a window of one running application displayed on an entirety of the display screen or on a part of a home screen displayed on the entire display screen. One of ordinary skill in the art would not be able to determine how the applicant’s invention can perform these two steps. If the terminal displays content on the display screen of the device, it would not appear to be possible for an application running on the terminal device to be displayed on the entirety of the display screen because the content must be being displayed on some portion of the display screen. Likewise, the home screen could not be being displayed on the entirety of the display screen is the content is being displayed on the display screen. Hence, once the terminal display device displays the content, it would appear that the invention will not output the advertisement in the manner claimed. Thus, the claims are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Second, independent claims 1, 15, and 16 first indicate that “a point held by the user” is already being manage by a point manager of the sever. However, the first wherein clause indicates that the point was obtained by the user viewing the advertisement on the display screen satisfying a predetermined condition and outputting the content transmitted from the server. Since the server is managing the point prior to the advertisement being output, one of ordinary skill in the art would not be able to determine how the point could have already been obtained before the advertisement is output if it can only be obtained by the user viewing the advertisement. Additionally, since the terminal device has already output the content in response to a user operation in a previous step of the claim, does the applicant intend that the same content previously output, and arguably still being displayed on the terminal device, is output a second time to the display screen after a user views the advertisement and the point satisfied a predetermined condition? Additionally, the claimed never required the claimed “a content” to be transmitted from a server. Thus, the phrase “the content transmitted from the server apparatus” does not have proper antecedent basis. Finally, one or ordinary skill in the art would not be able to determine whether the applicant intends to output the content twice once based on a user operation and a second time based on the user viewing the advertisement as apparently required by the claim as currently amended, or whether the applicant intends the content to only be displayed one time (i.e., after the advertisement is displayed) and that the “user viewing the advertisement” is the “user operation”. Thus, the claims are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Third, independent claims 1, 15, and 16 recite in the “an advertisement” in the second wherein clause does not have antecedent basis to the previously claim “an advertisement”, and, as such appears to indicate that a second advertisement is being output in a PinP instead of originally claimed “an advertisement”. Additionally, one or ordinary skill in the art would not be able to determine whether the applicant intends for the claimed “the advertisement” in the second wherein clause to have antecedent basis to the first claimed “an advertisement” or the second claimed “an advertisement”. Additionally, the second wherein clause recites “when a window of a first application is displayed”. This limitation does not have antecedent basis to the previously claimed “a window of one application”. As such, appears that the advertisement displayed in the PinP is displayed when some other application is being displayed. However, there is no criteria indicating how the applicant determines a second advertisement for display nor an indication of what the first application might be. It would appear that the limitation just requires any advertisement to be selected and displayed in a PinP window any time an application is displayed on the display screen. Thus, does the applicant intend to display content on a display screen, display an advertisement in the window of a running application based on the claimed criteria, and also display an additional advertisement, since the running application is an application, thus resulting in the display of a content, an advertisement in a window of the running application, and an additional advertisement in a PinP on the screen? Additionally, the claim requires that when the first application is replaced by a window of another application the invention outputs the advertisement in a PinP window on a part of the window of the other application. One or ordinary skill it the would not be able to determine whether the applicant intends the first claimed PinP to be on the screen and the second PinP window to be on a part of the window of the other application as claimed, or whether the first PinP window was to be displayed on a window of the first application as well instead of on the screen? Or which advertisement the applicant intends to display in the PinP window on a part of the window of the other application. Is it the first claimed “an advertisement” or the second claimed “an advertisement. Thus, the claims are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Dependent claims 23-27 fail to cure the deficiencies of the claim from which they depend and, as such, are rejected by virtue of dependency.
The numerous 35 USC 112(b) issues identified above along with the 35 USC 112(a) make it nearly impossible for the examiner to determine the intended meets and bounds of the claims. However, based on a review of the applicant’s specification, the examiner will be interpreting claims 1, 15, and 16 as if they recited the following:
receiving, by a terminal device and from a server apparatus an advertisement;
displaying, by the terminal device, the advertisement in a PinP window on a window of a running application displayed on an entirety of the display screen of the terminal device, on a part of a home screen displayed on the entire display screen, or in a PinP window on a window of another application if the window of the running application was replaced by the window of the another application;
transmitting, by the terminal device and to the server, an indication that the user has viewed the advertisement, wherein a point manager of the server determines, in response to receiving the first indication, the user has earned a point for viewing the advertisement and transmits, to the terminal device and based on the determining the user earned the point, a content for display to the user; and
displaying, by the terminal device and in response to receiving the content, the content on a display screen of the computer user terminal.
(The examiner notes that, for the purpose of prosecuting the claims, the server and its functions are outside the scope of claims 1, 15, and 23-27 but are part of the scope of claim 16.)
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, 15, and 23-27 are directed to an apparatus and a method which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 1, 15, and 23-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim(s) 1, 15, and 27 recite(s) the following abstract idea: (Examiner note: The server comprising a point manager and its functions is outside the scope of the claimed invention and, as such, have been included as part of the abstract idea because they cannot be considered “additional elements” of the claimed invention.)
receiving, from a server apparatus, an advertisement;
displaying the advertisement in a PinP window on a window of a running application displayed on an entirety of the display, on a part of a home screen displayed on the entire display, or in a PinP window on a window of another application if the window of the running application was replaced by the window of the another application;
transmitting, to the server, an indication that the user has viewed the advertisement, wherein a point manager of the server determines, in response to receiving the first indication, the user has earned a point for viewing the advertisement and transmits, based on the determining the user earned the point, a content for display to the user; and
displaying, in response to receiving the content, the content on a display screen of the computer user terminal.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely advertising, marketing and sales activities or behaviors because they merely gather data, analyze the data, determine results based on the analysis, generate tailored content based on the results, and transmit the tailored content. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of a computer with a processor and display screen executing software which has PinP capability (i.e., a computer user terminal) which is merely a general-purpose computer.
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, storing, communicating (e.g., transmitting and receiving), and displaying data and, as such, are insignificant extra-solution activities (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
receiving, by a terminal device and from a server apparatus an advertisement (receiving data);
displaying, by the terminal device, the advertisement in a PinP window on a window of a running application displayed on an entirety of the display screen of the terminal device, on a part of a home screen displayed on the entire display screen, or in a PinP window on a window of another application if the window of the running application was replaced by the window of the another application (displaying data);
transmitting, by the terminal device and to the server, an indication that the user has viewed the advertisement, wherein a point manager of the server determines, in response to receiving the first indication, the user has earned a point for viewing the advertisement and transmits, to the terminal device and based on the determining the user earned the point, a content for display to the user (transmitting data); and
displaying, by the terminal device and in response to receiving the content, the content on a display screen of the computer user terminal (displaying data).
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor and generic computer components performing a generic computers function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using 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 (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on one or more computers, or merely uses computers as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using a computer with a processor and display screen executing software which has PinP capability (i.e., a computer user terminal) which is merely a general-purpose computer to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and one or more generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on one or more computers, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires one or more general-purpose computer and generic computer components (as evidenced from paragraphs 20, 59, 157, 179-181, and 276-279 of the applicant’s specification; and Richard, The History of Online Pop-up Ads: the Web’s Most Hated Invention, September 18, 2025, https://www.snagged.com/ post/the-history-of-online-pop-up-ads-the-webs-most-hated-invention, pages 1-5 which discloses on page 3, line 15 through page 4, line 22 that pop-up window advertisements were well-known by at least 2004); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility. Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, storing and/or transmitting data:
receiving, by a terminal device and from a server apparatus an advertisement (receiving data);
displaying, by the terminal device, the advertisement in a PinP window on a window of a running application displayed on an entirety of the display screen of the terminal device, on a part of a home screen displayed on the entire display screen, or in a PinP window on a window of another application if the window of the running application was replaced by the window of the another application (displaying data);
transmitting, by the terminal device and to the server, an indication that the user has viewed the advertisement, wherein a point manager of the server determines, in response to receiving the first indication, the user has earned a point for viewing the advertisement and transmits, to the terminal device and based on the determining the user earned the point, a content for display to the user (transmitting data); and
displaying, by the terminal device and in response to receiving the content, the content on a display screen of the computer user terminal (displaying data).
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e., “PEG” Step 2B=No).
The dependent claims 23-26 appear to merely further limit the abstract idea by further limiting the outputting of the advertisement which is considered part of the abstract idea (Claims 23-26), and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No)..
Thus, based on the detailed analysis above, claims 1, 15, and 23-27 are not patent eligible.
Claim 16 is directed to a system which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claim 16 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim(s) 16 recite(s) the following abstract idea:
establishing a communication connection;
receiving an advertisement;
displaying the advertisement in a PinP window on a window of a running application displayed on an entirety of the display, on a part of a home screen displayed on the entire display, or in a PinP window on a window of another application if the window of the running application was replaced by the window of the another application;
transmitting an indication that the user has viewed the advertisement;
determining, in response to receiving the first indication, the user has earned a point for viewing the advertisement;
transmitting, based on the determining the user earned the point, a content for display to the user; and
displaying in response to receiving the content.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely advertising, marketing and sales activities or behaviors because they merely gather data, analyze the data, determine results based on the analysis, generate tailored content based on the results, and transmit the tailored content. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of a server executing software (e.g., point manager), and a computer (e.g., terminal device with a processor) with PinP capability which are merely two general-purpose computers.
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, communicating (e.g., transmitting and receiving), and displaying:
establishing, by a terminal device, a communication connection with the server apparatus (transmitting and/or receiving data);
receiving, by a terminal device and from a server apparatus an advertisement (receiving data);
displaying, by the terminal device, the advertisement in a PinP window on a window of a running application displayed on an entirety of the display screen of the terminal device, on a part of a home screen displayed on the entire display screen, or in a PinP window on a window of another application if the window of the running application was replaced by the window of the another application (displaying data);
transmitting, by the terminal device and to the server, an indication that the user has viewed the advertisement (transmitting data)
transmits, by the server with a point manager and to the terminal device, a content for display to the user based on determining the user earned the point (transmitting data); and
displaying, by the terminal device and in response to receiving the content, the content on a display screen of the computer user terminal (displaying data).
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor and generic computer components performing a generic computers function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using 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 (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on one or more computers, or merely uses computers as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using a server executing software (e.g., point manager), and a computer (e.g., terminal device with a processor) with PinP capability which are merely two general-purpose computers which are merely two general-purpose computers to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and one or more generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on one or more computers, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires one or more general-purpose computer and generic computer components (as evidenced from paragraphs 20, 59, 157, 179-181, and 276-279 of the applicant’s specification and Richard, The History of Online Pop-up Ads: the Web’s Most Hated Invention, September 18, 2025, https://www.snagged.com/ post/the-history-of-online-pop-up-ads-the-webs-most-hated-invention, pages 1-5 which discloses on page 3, line 15 through page 4, line 22 that pop-up window advertisements were well-known by at least 2004); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility. Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, storing and/or transmitting data:
establishing, by a terminal device, a communication connection with the server apparatus (transmitting and/or receiving data);
receiving, by a terminal device and from a server apparatus an advertisement (receiving data);
displaying, by the terminal device, the advertisement in a PinP window on a window of a running application displayed on an entirety of the display screen of the terminal device, on a part of a home screen displayed on the entire display screen, or in a PinP window on a window of another application if the window of the running application was replaced by the window of the another application (displaying data);
transmitting, by the terminal device and to the server, an indication that the user has viewed the advertisement (transmitting data)
transmits, by the server with a point manager and to the terminal device, a content for display to the user based on determining the user earned the point (transmitting data); and
displaying, by the terminal device and in response to receiving the content, the content on a display screen of the computer user terminal (displaying data).
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e., “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claim 16 are not patent eligible.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 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.
Claim(s) 1, 15, 16 and 23-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Holland (PGPUB: 2013/0211925).
Claims 1, 15, and 16: A computer user terminal, a method executing on the computer user terminal and a system comprising:
the computer user terminal capable of establishing a communication connection with a server apparatus, (Paragraph 31: Client computer interfaces through Internet with server computer to have access to plural advertisement contents in an advertisement content database and to plural entertainment contents in an entertainment content database) the computer user terminal performing the steps of:
receiving, by the terminal device and from a server apparatus an advertisement (Paragraph 31: Client computer interfaces through Internet with server computer to have access to plural advertisement contents in an advertisement content database and to plural entertainment contents in an entertainment content database; Paragraph 32: An end user consumer at consumer location retrieves advertisement content from advertisement content database 34 through Internet for presentation with client computer, such as at display or television;
displaying, by the terminal device, the advertisement in a PinP window on a window of a running application displayed on an entirety of the display screen of the terminal device, on a part of a home screen displayed on the entire display screen, or in a PinP window on a window of another application if the window of the running application was replaced by the window of the another application (Paragraph 32: advertisement analyzer executing on the client device can preload advertisement contents, such as plural advertisement movies by plural car repair shops, and present the preloaded advertisements to the end user for the end user to select if the end user so desires; Figure 5 and Paragraphs 46-54: end users are empowered to select an advertisement content layout for presentation of information at a client of the end user from plural available advertisement content layouts; one such selectable layout includes a full video window which covers the entire feed content displayed on display; another is a small video window which covers a portion of feed content displayed on display); and
transmitting, by the terminal device and to the server, an indication that the user has viewed the advertisement (Paragraphs 34-36: If the consumer has watched the selected advertisement content with a predetermined attention level, then verifier of the client device sends a message to server to award points to the consumer end user for the presentation and observation of the selected advertisement content so that a tracking module can track points awarded to consumers for views of the advertisement content and store the points in association with the end user in a points database);
a server apparatus performing the steps of:
determining, by a point manager of the server apparatus, in response to receiving the first indication, the user has earned a point for viewing the advertisement (Paragraphs 34-36: If the consumer has watched the selected advertisement content with a predetermined attention level, then verifier of the client device sends a message to server to award points to the consumer end user for the presentation and observation of the selected advertisement content so that a tracking module can track points awarded to consumers for views of the advertisement content and store the points in association with the end user in a points database); and
transmits, to the terminal device and based on the determining the user earned the point, a content for display to the user (Paragraph 37-38 and 45: the content could be a selectable list of entertainment content such as movies and sitcoms; the next content the actual movie or sitcom selected; Paragraph 42: content is a live broadcast, next content is additional premium entertainment content played in place of commercial breaks; Paragraphs 49 and 54: content is a first potion of an entertainment content viewable for a first designated period of time for viewing a first advertisement; next content is a next portion of the entertainment content viewable for a second designated period of time for viewing a second advertisement); and
the terminal device further performing the step of displaying, in response to receiving the content, the content on a display screen of the computer user terminal (Paragraph 37-38 and 45: the content could be a selectable list of entertainment content such as movies and sitcoms; the next content the actual movie or sitcom selected; Paragraph 42: content is a live broadcast, next content is additional premium entertainment content played in place of commercial breaks; Paragraphs 49 and 54: content is a first potion of an entertainment content viewable for a first designated period of time for viewing a first advertisement; next content is a next portion of the entertainment content viewable for a second designated period of time for viewing a second advertisement).
Claim 23: Holland discloses the computer user terminal according to claim 1, wherein the processor outputs the advertisement on the part of the window of the one running application or on the part of the home screen after outputting the content. (Holland - Figure 5 and Paragraphs 46-54: end users are empowered to select an advertisement content layout for presentation of information at a client of the end user from plural available advertisement content layouts; one such selectable layout includes a full video window 134 which covers the entire feed content 120 displayed on display 110; another is a small video window 132 which covers a portion of feed content 120 displayed on display 110, wherein the server outputs advertisements in accordance with the user selected content layout; the user can view a piece of content, wherein a timer indicates how much more entertainment contend the end user can view before additional advertisement content is presented; Paragraphs 38-39, 41 and 46: the application may be a browser executing on the client device to access a website such as a movie streaming website, a news website, a retailer website, a social media website; Paragraphs 53-54: the application may be an application for managing presentations of small video windows or full video windows)
Claim 24: Holland discloses the computer user terminal according to claim 1, wherein the processor outputs a different advertisement according to the one running application or the home screen. (Holland - Paragraphs 38-39, 41 and 46: the application may be a browser executing on the client device to access a website such as a movie streaming website, a news website, a retailer website, a social media website; wherein the advertisements are specific to the website being displayed in the browser; Paragraph 32: the advertisement analyzer executing on the client device analyzes information about a user and select relevant advertisements based on analyzed information)
Claim 25: Holland discloses the computer user terminal according to claim 1, wherein the processor does not output the advertisement on the part of the window of the one running application based on control information for determining an application on which an advertisement is not output. (Holland – Paragraph 34: verifier stops the presentation of advertisement content when an end user is paying inadequate attention and issues a voice notification from a speaker of client computer that the end user must watch the advertisement content to obtain an award of points; a similar function can aid the consumer when the consumer watches entertainment content by automatically pausing the entertainment content when the consumer is not viewing the content; verifier uses images captured by camera and/or sounds captured by microphone to analyze the attention of the end user consumer to the presentation of advertisement content; for instance, if the end user is not in the view of the camera or has a profile looking away from the presentation, verification is not provided)
Claim 26: Holland discloses the computer user terminal according to claim 1, wherein the processor outputs the advertisement on the part of the window of the one running application based on control information for determining an application on which an advertisement is output. (Holland - Figure 5 and Paragraphs 46-54: end users are empowered to select an advertisement content layout for presentation of information at a client of the end user from plural available advertisement content layouts; one such selectable layout includes a full video window 134 which covers the entire feed content 120 displayed on display 110; another is a small video window 132 which covers a portion of feed content 120 displayed on display 110, wherein the server outputs advertisements in accordance with the user selected content layout; the user can view a piece of content, wherein a timer indicates how much more entertainment contend the end user can view before additional advertisement content is presented)
Clam 27: Holland a disclose the computer user terminal according to claim 1, wherein the processor enables the output of a next content in response to the output of the advertisement. (Holland - Figure 5 and Paragraphs 46-54: end users are empowered to select an advertisement content layout for presentation of information at a client of the end user from plural available advertisement content layouts; one such selectable layout includes a full video window 134 which covers the entire feed content 120 displayed on display 110; another is a small video window 132 which covers a portion of feed content 120 displayed on display 110, wherein the processor outputs advertisements in accordance with the user selected content layout; the user can view a piece of content, wherein a timer indicates how much more entertainment content the end user can view before additional advertisement content is presented, at which time the user interacts with the additional advertisement content, additional content time is awarded, the next content is displayed with a timer indicating how much more content the user can view before additional advertisement content is presented)
Response to Arguments
Applicant's arguments filed January 26, 2026 have been fully considered but they are not persuasive.
The applicant’s arguments with regards to the 35 USC 112(a) rejections are moot, as the claim amendment has overcome the previous 35 USC 112(a) rejections. However, the examiner notes that the current amendments have introduced a new 35 USC 112(a) rejection and a new 35 USC 112(b) rejection.
The applicant's arguments with regards to the 35 USC 101 rejections fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims as amended overcome the 35 USC 101 rejection. The newly added additional element of a display screen is a generic computer component and the newly added PinP functionality is nothing more than a generic computer function that was well-understood, routine, and conventional before the effective filing date of the invention. As such, the is merely using a general-purpose computer with generic computer components executing generic computer functions as a tool to implement the abstract idea which is incapable of transforming an abstract idea into a practical application under Step 2a, Prong 2 and incapable of being considered significantly more under Step 2b. The examiner notes that the discussion during the interview was in regards to the display screen having some type of built in PinP functionality that the applicant’s attorney indicated was supported by the applicant’s disclosure. Such display screen functionality may have been harder to find prior art indicating its common use. However, the claims merely require a computer displaying pop-up windows on a display screen which was trivial to find prior art indicating its common use prior to the effective filing date of the invention. Thus, the 35 USC 101 rejections have been maintained.
The applicant argues with regards to the 35 USC 103 rejection that Holland does not disclose outputting an advertisement to the display screen in a Picture-in-Picture (PinP) when a window of a first application is displayed on the screen. The examiner disagrees. First, the prior art need not disclose outputting an advertisement to the display screen in a Picture-in-Picture (PinP) when a window of a first application is displayed on the screen. The claim is written in the alternative such that the prior art need only teach outputting an advertisement on a part of a window of one running application displayed on an entirety of the display screen of the terminal device or conversely need only teach outputting on a part of a home screen displayed on the entirety of the terminal device. Nonetheless, Holland specifically disclose in at least paragraphs 53-54 discloses overlaying a small video window over an application executing on the client device to display feed content. As such, it is clear that Holland does disclose outputting an advertisement to the display screen in a Picture-in-Picture (PinP) when a window of a first application is displayed on the screen and the 35 USC 102 rejections have been maintained.
The applicant argues with regards to the 35 USC 103 rejection that Holland does not disclose when the window of the first application is replaced by a window of another application by an operation on the computer user terminal, the advertisement is output to the display screen in a PinP on a part of the other application. The examiner disagrees. First, the prior art need not disclose when the window of the first application is replaced by a window of another application by an operation on the computer user terminal, the advertisement is output to the display screen in a PinP on a part of the other application. The claim is written in the alternative such that the prior art need only teach outputting an advertisement on a part of a window of one running application displayed on an entirety of the display screen of the terminal device; conversely need only teach outputting on a part of a home screen displayed on the entirety of the terminal device; and conversely only need to teach when the window of the first application is replaced by a window of another application by an operation on the computer user terminal, the advertisement is output to the display screen in a PinP on a part of the other application (see 35 USC 112(a) and 35 USC 112(b) regarding the manner in which the claim is being interpreted). Nonetheless, Holland specifically disclose in at least paragraphs 53-54 discloses overlaying a small video window over an application executing on the client device to display feed content. If the advertisement is output when a first application is closed by a uer and the feed application opened, then the small window is overlayed over the feed application window. This meets the requirements of the limitation as currently written because, as currently claimed, the outputting of the PinP window occurs after the first application window is replaced by a second application window. Had the applicant required the PinP window to first display over he first application, and then continue to be displayed over the second window application then this specific set of steps is not disclosed by Holland. However, the claim, as currently written, does not indicate that this is the manner in which the invention operates. As such, the 35 USC 102 rejections have been maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Akagane (PGPUB: 2007/0027767) which discloses an invention similar to the one claimed where the user computer terminal has the point manager instead of the server apparatus, and the server transmits the points of a user to the computer user terminal, and the point manager on the computer user terminal selects the content for display.
Jones (U.S. Patent: 7,346,548) which discloses requiring a user to view and/or interact with an advertisement before they are able to view content.
Goldhaber et al. (U.S. Patent: 5,794,210) which discloses rewarding users for paying attention to an advertisement or other "negatively priced" information distributed over a computer network such as the Internet, wherein a special icon such as a CyberCoin or other symbol displayed on a computer screen may represent compensation and allow users to choose whether they will view an ad or other negatively priced information and receive associated compensation, wherein the user may use the earned compensation (e.g., CyberCoins) to pay for viewing information content .
Kim et al. (U.S. Patent: 8,918,902) which discloses using advertisements as keys for streaming protected content, wherein viewing an advertisement functions as a decryption key for the protected content. Thus, the protected content cannot be viewed by the user until after the user has viewed the advertisement.
Post, Jr (PGPUB: 2021/0209655) which discloses receiving a request to access media content via a device and a determination is made whether a point balance associated with the user exceeds a threshold, if the point balance exceeds the threshold, the user is permitted to access the media content via the device, if the point balance does not exceed the threshold, the user is not permitted to access the media content via the device, wherein the point balance is based on a determination whether an advertisement has been viewed.
Playwire (Rewarded Video Ads: The Complete Guide to Using Rewarded Video on Web, App, and More, March 14, 2023, https://web.archive.org/web/ 20230314041119/https://www.playwire.com/rewarded-video-ads, Pages 1-34) which discloses watching video advertisements that take over the entire screen to earn rewards, wherein the rewards are used to grant access to additional content.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN W VAN BRAMER whose telephone number is (571)272-8198. The examiner can normally be reached Monday-Thursday 5:30 am - 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Spar Ilana can be reached at 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John Van Bramer/Primary Examiner, Art Unit 3622