DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
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 1-20 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 claims contain 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.
Claims 1, 9, and 14 recite limitations “determining, by a computing device, an opportunity for inserting an advertisement in content; sending, to an advertisement server via a network, a request for an advertisement for insertion into the opportunity for inserting an advertisement in the content, wherein the request comprises information for selection of the advertisement; receiving a response indicating an advertisement selected based on the request; and causing output of the advertisement during the opportunity for inserting the advertisement in the content”, the examiner is unable to find support for these limitations in the originally filed spec and/or drawings. Application fails to provide adequate support required by 112(a) or the first paragraph of 35 USC 112 for above mentioned limitations in the detailed description. Applicant to provide support for this limitation.
Claims 2-8, 10-13, and 15-20 are rejected due to their dependency on the independent claims 1, 9, and 14, respectively.
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 an abstract idea without significantly more. The claims 1, 9, and 14 recite determining an opportunity for inserting an ad in content, sending a request for an ad, receiving an ad based on the request, and outputting ad, are processes that, under its broadest reasonable interpretation, cover Mental Processes such as concepts performed in the human mind (including observation, evaluation, judgement, opinion). For example, “determining”, “sending”, “receiving”, and “outputting” in the context of this claim cover the human activity or mental processes. The series of these steps are broad enough that the claim could be completely performed mentally, verbally, or without a machine, nor is any transformation apparent. This judicial exception is not integrated into a practical application because generically recited computer elements such as a computing device, a server, do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because a computing device, and a server are generic computer functions that are well-understood, routine, and conventional computer functions as recognized by the court decisions listed in MPEP § 2106.05(d).
Dependent claims 2-8, 10-13, and 15-20 include additional limitations, but none of these limitations are deemed significantly more than the abstract idea because, as stated above, they require no more than generic computer structures or signals to be executed, and do not recite any improvements to the functioning of a computer.
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Furthermore, 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 a computer or improves any other technology, and their collective functions merely provide conventional computer implementation or implementing the judicial exception on a generic computer.
Therefore, whether taken individually or as an ordered combination, claims 2-8, 10-13, and 15-20 are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1-5 and 7-20 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by US PG Pub 2003/0028873 to Lemmons (“Lemmons”).
Regarding claim 1, “A method comprising: determining, by a computing device, an opportunity for inserting an advertisement in content” reads on the system/method where the ad space/opportunity is determined in the video stream (abstract) disclosed by Lemmons and represented in Fig. 9. Lemmons further discloses (¶0049, ¶0059) that the server identifies available advertising space/opportunity in the video content as represented in Fig. 7.
As to “sending, to an advertisement server via a network, a request for an advertisement for insertion into the opportunity for inserting an advertisement in the content, wherein the request comprises information for selection of the advertisement” Lemmons discloses (¶0057-¶0058, ¶0066) that the server interacts/communicates with the central computer over the Internet network, where the central computer stores advertisers data in the database as represented in Fig. 7; (¶0059, ¶0075, ¶0078) the server communicates attribute information associated with the ad space with the central computer database.
As to “receiving a response indicating an advertisement selected based on the request” Lemmons discloses (¶0058-¶0059, ¶0075, ¶0077) that the system selects an advertiser to place the ad in the ad space and provides it to the server.
As to “causing output of the advertisement during the opportunity for inserting the advertisement in the content” Lemmons discloses (¶0060) that the server outputs the enhanced video signal with the inserted ad to the STB device that receives and transmits the enhanced video signal to a display device.
Regarding claim 2, “The method of claim 1, wherein the content comprises one or more of: broadcast content; streaming content; video-on-demand content; or downloaded content” Lemmons discloses (¶0035) that the video content/signals includes TV broadcast, (¶0031) video stream over the Internet.
Regarding claim 3, “The method of claim 1, wherein the computing device comprises a content server, the method further comprising: receiving the advertisement via a second network” Lemmons discloses (¶0056-¶0057) that the system includes a server that receives un-enhanced video content over TV/broadcast network, and (¶0068) the server interacts with the central computer over a different network connection.
Regarding claim 4, “The method of claim 1, wherein the computing device comprises a content server, and wherein the receiving the response comprises receiving the response from the advertisement server, the method further comprising: inserting the advertisement into the content” Lemmons discloses (¶0056-¶0057) that the system includes a server that receives un-enhanced video content with ad space and interacts with the central computer, where (¶0058-¶0059, ¶0075, ¶0077) the central computer selects an advertiser by placing/inserting the ad in the ad space.
Regarding claim 5, “The method of claim 1, further comprising: obtaining the advertisement via a Universal Resource Locater (URL) address for the advertisement” Lemmons discloses (¶0046-¶0048) that the advertisement includes web address associated with the advertisement to obtain more information about the advertisement as represented in Fig. 3.
Regarding claim 7, “The method of claim 1, wherein the network comprises the Internet, the method further comprising: receiving, via the Internet, the advertisement” Lemmons discloses (¶0057-¶0058, ¶0066) that the server interacts/communicates with the central computer over the Internet network, where the central computer stores advertisers data in the database.
Regarding claim 8, “The method of claim 1, wherein causing the output comprises causing output, via a device associated with a user, of the advertisement during the opportunity for inserting the advertisement” Lemmons discloses (¶0060) that the server outputs the enhanced video signal with the inserted ad to the STB device that receives and transmits the enhanced video signal to a display device.
As to “wherein the information for selection of the advertisement indicates one or more of: one or more capabilities of the device associated with the user; one or more properties of the content; subject matter of the content; one or more habits of the user; or one or more interests of the user” Lemmons further discloses (¶0042, ¶0085) that the ad that is superimposed over the ad space is selected based on attributes of the content, where attributes include information such as profile, size, type, or other information (properties of the content).
Regarding claim 9, see rejection similar to claims 1 and 5.
Regarding claim 10, see rejection similar to claim 2.
Regarding claim 11, see rejection similar to claims 3 and 5.
Regarding claim 12, see rejection similar to claim 4.
Regarding claim 13, see rejection similar to claim 8.
Regarding claim 14, see rejection similar to claim 1.
Regarding claim 15, see rejection similar to claim 2.
Regarding claim 16, see rejection similar to claim 3.
Regarding claim 17, see rejection similar to claim 4.
Regarding claim 18, see rejection similar to claim 5.
Regarding claim 19, see rejection similar to claim 7.
Regarding claim 20, see rejection similar to claim 8.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 6 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lemmons in view of US PG Pub 2008/0140523 to Mahoney (“Mahoney”).
Regarding claim 6, Lemmons meets all the limitations of the claim except “The method of claim 1, further comprising: tracking one or more interactions, of a user, associated with the advertisement.” However, Mahoney discloses (¶0074) that the system that provides ad content monitors user’s interactions. Therefore, it would have been obvious to one of the ordinary skills in the art at the time of the invention to modify Lemmons’ system by tracking user’s interactions associated with the ad as taught by Mahoney in order for the advertisers to passively sell products targeted to specific users and content owners to actively search for product to link to the users (Mahoney - ¶0102).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2009/0077580 to Konig
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/PINKAL R CHOKSHI/
Primary Examiner, Art Unit 2425