Response to Arguments
Applicant's arguments filed 03/23/2026 have been fully considered but they are not persuasive. The ACR generation of fingerprinting is performed using generic computer functions it does not add to significantly more than the abstract idea-So claims 1-5 remain rejected under 35 U.S.C. 101.
Note: A terminal disclaimer will obviate the double patenting but it has not been filed. Amending claim 1 with the inventive concept of tracking exposure counts across different channels or applications as applicant did in claims 6 and 17 will overcome the 101 rejection.
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
The core of the claim is:
receiving a media fingerprint,
identifying content,
determining how many times a user has seen the content,
comparing the frequency threshold and selecting or preventing future presentation of that content
using a media channel to display content.
These operations amount to a business/marketing logic flow (frequency capping, exposure management, personalized content delivery).
Courts have consistently held that:
“targeted advertising”
“content selection based on behavior”
“organizing and classifying information”
are abstract ideas. Examples: Customedia, Affinity labs Ultramercial, Bridge &Post.
Nothing in the claim appear to improve the functionality of the computers, encoding, fingerprinting, or network transmission. It simply uses conventional processor to implement behavioral decision rules.
The additional element of generating media fingerprint using ACR is not more than the abstract idea because ACR uses generic computer functions to identify content by comparing a sample to samples in content database.
Therefore, the claim 1 is not statutory under 35 USC 101.
Claims 2-5, further detail the determination of threshold by evaluating time differences but the additional limitations alone or in combination with their base claims do not result into significantly more than the abstract.
The further limitations add a degree of particularity to the claimed invention, but they do not change the underlying invention that is directed to the abstract idea. The additional elements of the dependent claims were additionally considered, but they do not transform the character of the claims as a whole nor recite anything beyond routine computer functions necessary to perform the abstract idea.
Therefore claims 1-5 are not statutory under USC 35 101 because they recite the abstract idea of managing content exposure/targeted content delivery and they do not include any specific improvement to the specific technology and they rely on generic computing.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 2-7, 9-15, 17-18 and 20 of the instant application are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12137271. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader variants of the claims of the 271’ patent.
Similarly claims 2-7, 9-15, 17-18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of the grandparent U.S. Patent No. 11758225 by way of the terminal disclaimer between 12137271 and 11758225.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY BANTAMOI whose telephone number is (571)270-3581. The examiner can normally be reached M-F 9-5 EST..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Miller can be reached at 571-272-7353. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY BANTAMOI/Examiner, Art Unit 2422
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