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 . 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.
Status of the Claims
The pending claims in the present application are claims 1-6 of the Amendment dated 29 May 2026.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The paragraphs below provide rationales for the rejection. The rationales are based on the multi-step subject matter eligibility test outlined in MPEP 2106.
Step 1 of the eligibility analysis involves determining whether a claim falls within one of the four enumerated categories of patentable subject matter recited in 35 USC 101. (See MPEP 2106.03(I).) That is, Step 1 asks whether a claim is to a process, machine, manufacture, or composition of matter. (See MPEP 2106.03(II).) The “device” of claims 1-5 constitutes a machine under 35 USC 101, and the “method” of independent claim 6 constitutes a process under the statute. Accordingly, claims 1-6 meet the criteria of Step 1 of the eligibility analysis. The claims, however, fail to meet the criteria of subsequent steps of the eligibility analysis, as explained in the paragraphs below.
The next step of the eligibility analysis, Step 2A, involves determining whether a claim is directed to a judicial exception. (See MPEP 2106.04(II).) This step asks whether a claim is directed to a law of nature, a natural phenomenon (product of nature) or an abstract idea. (See id.) Step 2A is a two-prong inquiry. (See MPEP 2106.04(II)(A).) Prong One and Prong Two are addressed below.
In the context of Step 2A of the eligibility analysis, Prong One asks whether a claim recites an abstract idea, law of nature, or natural phenomenon. (See MPEP 2106.04(II)(A)(1).) Using independent claim 1 as an example, the claim recites the following abstract idea limitations:
“A content buying and selling ... comprising: ...” - See below regarding MPEP 2106.04(a), certain methods of organizing human activity, and mental processes
“... register target content whose ownership is bought and sold by auction; ...” - See below regarding MPEP 2106.04(a), certain methods of organizing human activity, and mental processes
“... store the content registered ...” - See below regarding MPEP 2106.04(a), certain methods of organizing human activity, and mental processes
“... obtain trend information including a relative value based on a frequency searched by a search engine or a frequency used in a social networking service, to determine whether a target word is a trend based on the obtained trend information, the target word being a content name of the content registered ... or a related word indicating an item related to the content, and to determine whether the target word has become a trend in a short period of time that is a predetermined time when determining that the target word is a trend, based on whether a difference between a first value of the relative value in the most recent period and a second value of the relative value in a period prior to that most recent period exceeds a threshold value; and ...” - See below regarding MPEP 2106.04(a), certain methods of organizing human activity, and mental processes
“... set a first auction starting price as an auction starting price of the content when ... determined that the target word is a trend and has not become a trend in a short period of time, and to set a second auction starting price, which is higher than the first auction starting price, as an auction starting price of the content when ... determined that the target word is a trend and has become a trend in a short period of time, thereby putting the content up for auction.” - See below regarding MPEP 2106.04(a), certain methods of organizing human activity, and mental processes
The above-listed limitations of independent claim 1, when applying their broadest reasonable interpretations in light of their context in the claim as a whole, fall under enumerated groupings of abstract ideas outlined in MPEP 2106.04(a). For example, limitations of the claim can be characterized as: fundamental economic principles or practices, including buying and selling via auctioning; commercial interactions, including sales activities or behaviors in the form of auctioning, which fall under the certain methods of organizing human activity grouping of abstract ideas (see MPEP 2106.04(a)). Limitations of the claim also can be characterized as: concepts performed in the human mind, including observation (e.g., the recited “register,” “store,” and “obtain” steps), and evaluation and/or judgments (e.g., the recited “determine” and “set” steps), which fall under the mental processes grouping of abstract ideas (see MPEP 2106.04(a)). Accordingly, for at least these reasons, claim 1 fails to meet the criteria of Step 2A, Prong One of the eligibility analysis.
In the context of Step 2A of the eligibility analysis, Prong Two asks if the claim recites additional elements that integrate the judicial exception into a practical application. (See MPEP 2106.04(II)(A)(2).) Continuing to use independent claim 1 as an example, the claim recites the following additional element limitations:
The claimed “content buying and selling” is performed by a “device” - See below regarding MPEP 2106.05(a)-(c) and (f)-(h)
The claimed “register” and “registered” involves use of a “hardware or hardware and software registration unit” - See below regarding MPEP 2106.05(a)-(c) and (f)-(h)
The claimed “store” involves use of “a hardware or hardware and software database configured to” - See below regarding MPEP 2106.05(a)-(c) and (f)-(h)
The claimed “obtain” and “determined” involves use of a “hardware or hardware and software trend determination unit” or “trend determination unit” - See below regarding MPEP 2106.05(a)-(c) and (f)-(h)
The claimed “set” involves use of “a hardware or hardware and software auction processing unit configured to” - See below regarding MPEP 2106.05(a)-(c) and (f)-(h)
The above-listed additional element limitations of independent claim 1, when applying their broadest reasonable interpretations in light of their context in the claim as a whole, are analogous to: capabilities of a general-purpose computer, and mere automation of manual processes, which courts have indicated may not be sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)(I)); a commonplace business method being applied on a general purpose computer, and selecting a particular generic function for computer hardware to perform from within a range of fundamental or commonplace functions performed by the hardware, which courts have indicated may not be sufficient to show an improvement to technology (see MPEP 2106.05(a)(II)); a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions, and merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions, which do not qualify as a particular machine or use thereof (see MPEP 2106.05(b)(I)); a machine that is merely an object on which the method operates, which does not integrate the exception into a practical application (see MPEP 2106.05(b)(II)); use of a machine that contributes only nominally or insignificantly to the execution of the claimed method, which does not integrate a judicial exception (see MPEP 2106.05(b)(III)); transformation of an intangible concept such as a contractual obligation or mental judgment, which is not likely to provide significantly more (see MPEP 2106.05(c)); use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea, a commonplace business method or mathematical algorithm being applied on a general purpose computer, and requiring the use of software to tailor information and provide it to the user on a generic computer, which courts have found to be mere instructions to apply an exception, because they do no more than merely invoke computers or machinery as a tool to perform an existing process (see MPEP 2106.05(f)); mere data gathering in the form of obtaining information about transactions using the Internet to verify transactions and consulting and updating an activity log, which courts have found to be insignificant extra-solution activity (see MPEP 2106.05(g)); and specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer, which courts have described as merely indicating a field of use or technological environment in which to apply a judicial exception (see MPEP 2106.05(h)). For at least these reasons, claim 1 fails to meet the criteria of Step 2A, Prong Two of the eligibility analysis.
The next step of the eligibility analysis, Step 2B, asks whether a claim recites additional elements that amount to significantly more than the judicial exception. (See MPEP 2106.05(II).) The step involves identifying whether there are any additional elements in the claim beyond the judicial exceptions, and evaluating those additional elements individually and in combination to determine whether they contribute an inventive concept. (See id.) The ineligibility rationales applied at Step 2A, Prong Two, also apply to Step 2B. (See id.) For all of the reasons covered in the analysis performed at Step 2A, Prong Two, independent claim 1 fails to meet the criteria of Step 2B. Further, claim 1 also fails to meet the criteria of Step 2B because at least some of the additional elements are analogous to: storing and retrieving information in memory, which courts have recognized as well-understood, routine, conventional activity, and as insignificant extra-solution activity (see MPEP 2106.05(d)(II)). As a result, claim 1 is rejected under 35 USC 101 as ineligible for patenting.
Regarding claims 2-5, the claims depend from independent claim 1, and expand upon limitations introduced by claim 1. The dependent claims are rejected at least for the same reasons as claim 1. For example, the dependent claims recite abstract idea limitations similar to the abstract idea limitations of claim 1, that fall under the same abstract idea groupings as the abstract idea limitations of claim 1 (e.g., the recited “content buying and selling ... according to claim 1, wherein ... set: a first auction period as an auction period of the content when ... determined that the target word has not become a trend in the short period of time; and a second auction period, which is shorter than the first auction period, as an auction period of the content when ... determined that the target word has become a trend in the short period of time” of claim 2, the recited “content buying and selling ... according to claim 1, wherein ... determine: whether the target word is a trend by assigning a first weighting to the relative value of the trend information when the target word is the content name; and whether the target word is a trend by assigning a second weighting, which is smaller than the first weighting, relative to the to trend information when the target word is the related word” of claim 3, the recited “content buying and selling ... according to claim 2, wherein ... determine: whether the target word is a trend by assigning a first weighting to the relative value of the trend information when the target word is the content name; and whether the target word is a trend by assigning a second weighting, which is smaller than the first weighting, to the relative value of the trend information when the target word is the related word, and ... register in the content, the first auction starting price, the second auction starting price, the first auction period, the second auction period, the content name, or the related word as metadata” of claim 4, and the “content buying and selling ... according to claim 3, wherein ... divide the related word into a plurality of groups, and differentiate the second weighting in each group” of claim 5). The dependent claims recite further additional elements that are similar to the additional elements of claim 1, that fail to warrant eligibility for the same reasons as the additional elements of claim 1 (e.g., the recited “device ... hardware or hardware and software auction processing unit is configured to ... the hardware or hardware and software trend determination unit has ... the hardware or hardware and software trend determination unit” of claim 2, the recited “device ... the hardware or hardware and software trend determination unit is configured to” of claim 3, the recited “device ... the hardware or hardware and software trend determination unit is configured to” of claim 3, the “device ... the hardware or hardware and software trend determination unit is configured to ... the hardware or hardware and software registration unit is configured to” of claim 4, and the “device ... the hardware or hardware and software trend determination unit is configured to” of claim 5). Accordingly, claims 2-5 also are rejected as ineligible under 35 USC 101.
Regarding independent claim 6, while the claim is of different scope relative to independent claim 1, the claim recites limitations similar to the limitations of claim 1. As such, the rejection rationales applied to reject claim 1 also apply for purposes of rejecting claim 6. Claim 6 is, therefore, also rejected as ineligible under 35 USC 101.
Claim Rejections - 35 USC § 103
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, 2, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. No. 11,367,060 B1 to Barbashin et al. (hereinafter referred to as “Barbashin”), in view of Noel, Asher, et al. “Analyzing College Prestige and Virality Through Google Trends.” Harvard Undergraduate Data Project, 22 November 2019 (last accessed on 27 July 2026 at https://www.hodp.org/project/analyzing-college-prestige-and-virality-through-google-trends/).
Regarding independent claim 1, Barbashin discloses features that read on the following limitations:
“A content buying and selling device comprising: ...” - Barbashin discloses, “the disclosure provides computer-implemented systems and methods for creating a collaborative Non-Fungible Token (NFT) that provides proof of ownership of a digital object” (col. 3, ll. 17-20), and “An embodiment may involve auctioning the NFT online and transferring ownership of the NFT” (col. 4, ll. 30 and 31). The system and method for creating NFTs for digital objects, and then auctioning them to transfer ownership, in Barbashin, reads on the recited limitation.
“... a hardware or hardware and software registration unit configured to register target content whose ownership is bought and sold by auction; ...” - See the aspects of Barbashin that have been referenced above. Barbashin also discloses, “In FIG. 2, in an embodiment, a Non-Fungible Token creation and monetization method 200 begins at step 202, in which the process is programmed to facilitate uploading of digital content” (col. 8, ll. 50-53), “At step 212, the process is programmed to receive a selection, from a user computer, of digital content for auction. The selection may include one or more uploaded content items that the creator may remix or combine using programmed tools provided by the digital creation logic 104. The content may be a video, music, digital imagery, electronic text, or other digital content” (col. 8, l. 64 to col. 9, l. 3), and “a computer system 500 and instructions for implementing the disclosed technologies in hardware, software, or a combination of hardware and software” (col. 17, ll. 1-4). The hardware and software for the system for creating NFTs for digital content for auctioning of the digital content to effect transfer of ownership, in Barbashin, read on the recited limitation.
“... a hardware or hardware and software database configured to store the content registered in the hardware or hardware and software registration unit; ...” - See the aspects of Barbashin that have been cited above. Barbashin also discloses, “data storage logic 106 is programmed, in response, to cause the uploaded content to be stored in third-party database 130 or an internal database 116. The internal database 116 may an FTP site, cloud storage, relational database, data lake, or other system for data storage” (col. 7, ll. 20-25). The hardware and software for the databases, wherein the databases store the content, in Barbashin, read on the recited limitation.
“... a hardware or hardware and software trend determination unit configured to obtain trend information including a relative value based on a frequency searched by a search engine or a frequency used in a social networking service, ...” - See the aspects of Barbashin that have been cited above. Barbashin also discloses, “The NFT may also comprise a pointer to a digital animated frame that may be associated with a level of rarity, popularity, status, or prestige. When the digital object is viewed by a user on a website using a viewing program or rendering program, the digital object may be graphically displayed inside the digital animated frame. The frame may dynamically update based on the popularity of the digital object defined by a number of views or likes that are received in real-time from other accounts or users via a programmed application, or by a metric other than views or likes” (col. 3, ll. 45-55), “An embodiment may involve the animated digital frame being programmatically configured to dynamically update based on a popularity of the digital object defined by popularity metadata associated with the digital object, the popularity metadata being related to at least one of a number of views or a number of likes of the digital object on a content host” (col. 4, ll. 44-50), and “the content host 160 is a social media content sharing computer, service or website that is programmed to receive, store and host audiovisual programs, such as short-form user-created videos that are uploaded to content host 160 from mobile computing devices, desktop computers, or other devices” (col. 6, ll. 52-57). The hardware and software elements for determining popularity of digital objects based on the number of views on programmed applications and content hosts, including ones affiliated with social media, in Barbashin, read on the recited limitation.
The combination of Barbashin and Noel (hereinafter referred to as “Barbashin/Noel”) teaches limitations below of independent claim 1:
“... to determine whether a target word is a trend based on the obtained trend information, the target word being a content name of the content registered in the hardware or hardware and software registration unit or a related word indicating an item related to the content, and to determine whether the target word has become a trend in a short period of time that is a predetermined time when determining that the target word is a trend, based on whether a difference between a first value of the relative value in the most recent period and a second value of the relative value in a period prior to that most recent period exceeds a threshold value; and ...” - See the aspects of Barbashin that have been cited above. While Barbashin discloses determining popularity based on metrics other than just views or likes, Barbashin does not appear to disclose specifics on the other metrics. Noel discloses, “We then created a function that returns a list of all “viral” topics related to one query over a time period, wherein a “viral” topic is defined to be one that increased in search traffic volume a specified percentage over a controllable smaller time interval” (pp. 2 and 3), and “We defined a “viral” keyword to be a keyword that increased a specified amount over a specified time period related to the original key word. A related keyword had to increase in search traffic over 1,000% over a time interval of 15 days to be considered “viral”” (p. 8). Determining whether the keyword is viral based on data from queries, the keyword being related to the topic, and determining whether the keyword became viral in the time interval, based on whether the search traffic associated with the keyword increased 1,000% within the time interview (indicating jumps in search traffic from one stage of the time interval to another), in Noel, when applied to the digital objects, in Barbashin, reads on the recited limitation.
“... a hardware or hardware and software auction processing unit configured to set a first auction starting price as an auction starting price of the content when the hardware or hardware and software trend determination unit has determined that the target word is a trend and has not become a trend in a short period of time, and to set a second auction starting price, which is higher than the first auction starting price, as an auction starting price of the content when the trend determination unit has determined that the target word is a trend and has become a trend in a short period of time, thereby putting the content up for auction.” - See the aspects of Barbashin and Noel that have been cited above. Barbashin also discloses, “The process is programmed to receive from the originator certain parameters for the auction, which may include a starting date, a completion date, a starting price, or other parameters. Once the originator is satisfied with the selection of digital content, they may provide digital input to initiate the NFT minting process and the auction according to the set parameters and the method 200 is programmed to receive the digital input” (col. 9, ll. 11-18). The hardware and software for performing the auctioning, including setting the starting price to a first value based on the digital object being popular (but not viral), and setting the starting price to a second, higher value based on the digital object being viral, in Barbashin, wherein the popularity is based on historical frequency of use of the keyword in queries, and virality is based on the keyword usage increasing to a threshold within a selected time interval, in Noel, reads on the recited limitation.
Noel discloses analyzing prestige and virality (see p. 1), similar to the claimed invention and to Barbashin. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the determining of popularity or virality of digital objects, to include the keyword-based defining of virality, of Noel, to distinguish between raw search volume and general interest, and actual virality, per Noel (see p. 8).
Regarding claim 2, Barbashin/Noel teaches the following limitations:
“The content buying and selling device according to claim 1, wherein the hardware or hardware and software auction processing unit is configured to set: a first auction period as an auction period of the content when the hardware or hardware and software trend determination unit has determined that the target word has not become a trend in the short period of time; and ...” - See the aspects of Barbashin and Noel that have been cited above. The hardware and software of the system that establish the start date and the completion date for the auction after other elements of the system determined that the digital object has gained in popularity but has not become viral, in Barbashin, according to the virality timing parameter, of Noel, reads on the recited limitation. The rationale for combining the cited references, from the rejection of independent claim 1, also apply to this rejection of claim 2.
“... a second auction period, which is shorter than the first auction period, as an auction period of the content when the hardware or hardware and software trend determination unit has determined that the target word has become a trend in the short period of time.” - See the aspects of Barbashin and Noel that have been cited above. The hardware and software of the system that establish the start date and the completion date for the auction after other elements of the system determined that the digital object has exceeded popularity and has achieved virality, in Barbashin, according to the virality timing parameter, of Noel, reads on the recited limitation. The rationale for combining the cited references, from the rejection of independent claim 1, also apply to this rejection of claim 2.
Regarding independent claim 6, while the claim is of different scope relative to independent claim 1, the claim recites limitations similar to those recited by claim 1. As such, the rationales applied to reject claim 1 also apply for purposes of rejecting claim 6. Claim 6 is, therefore, also rejected under 35 USC 103 as obvious in view of Barbashin/Noel.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Barbashin, in view of Noel, and further in view of WIPO Int’l Pub. No. 2015/105718 A1 to Hijazi (hereinafter referred to as “Hijazi”).
Regarding claim 3, Barbashin/Noel teaches features that read on the following limitations:
“The content buying and selling device according to claim 1, wherein the hardware or hardware and software trend determination unit is configured to determine: whether the target word is a trend by assigning ... the relative value of the trend information ...” - See the aspects of Barbashin and Noel that have been cited above. The hardware and software for determining popularity or virality, including determining whether a digital objects is a trend by assigning to the digital object the number of views, in Barbashin, wherein the digital object is associated with a keyword when determining popularity or virality, as in Noel, reads on the recited limitation.
“... whether the target word is a trend by assigning ... relative to the to trend information ...” - See the aspects of Barbashin and Noel that have been cited above. Determining whether the digital object is popular or viral by assigning to the digital object the number of views, in Barbashin, wherein the digital object is associated with a keyword when determining popularity or virality, as in Noel, reads on the recited limitation. The rationales for combining the cited references, from the rejection of independent claim 1, also apply to claim 3.
The combination of Barbashin, Noel, and Hijazi (hereinafter referred to as “Barbashin/Noel/Hijazi”) teaches features that read on the following limitations of claim 3:
“... assigning a first weighting to the relative value ...” - Barbashin/Noel does not appear to teach any weighting. Hijazi discloses, “each item of digital content (e.g., image) can be associated with a respective popularity score. In some examples, a popularity scoring service can process the image and/or parameters associated with the image to determine the popularity score for the image. Example parameters can include a number of impressions (e.g., a number of times users have viewed the image), a number of times that the image has been shared by other users, a number of times the image has been surfaced in search results, a number of unique tags associated with the image, a number of times that the image has been embedded in third-party services (e.g., third-party web sites), a number of embedded impressions (e.g., a number of times users have viewed the image in third- party services), a number of conversions that were initiated from the image, a number of comments associated with the image, a rate of rise associated with the image, and locations (geo-locations) of users that have viewed the image. In some examples, parameters that are used to determine the popularity score can be weighted. In this manner, less relevant parameters have less influence on the popularity score than do more relevant parameters” (p. 11, l. 28 to p. 12, l. 8). Determining the popularity of content by weighting parameters for determining popularity, in Hijazi, reads on the recited limitation.
“... when the target word is the content name ...” - See the aspects of Hijazi that have been cited above. Hijazi also discloses, “the post 502' includes a post title 602 ("Jet Ski"), an image 604, comments 606, keywords 608 ("jet ski," "ski," "water sport"). In the depicted example, the image 604 is associated with tags 610, 612, 614, and a tag counter 616 is provided. In some examples, the tag counter 604 indicates the number of tags associated with the image 604. In some examples, the keywords 608 are selected by a user to be associated with the post 502'. In this manner, the post 502' can be searched for based on keyword, as discussed above with reference to FIG. 5” (p. 18, ll. 17-23). The wording of the post title (“Jet Ski”) and the keyword “jet ski,” in Hijazi, reads on the recited limitation.
“... assigning a second weighting, which is smaller than the first weighting, ...” - See the aspects of Hijazi that have been referenced above. Determining the popularity of content by weighting parameters for determining popularity, including the number of comments associated with the image, wherein said parameter is one that is less relevant for having less influence on popularity, in Hijazi, reads on the recited limitation.
“... when the target word is the related word” - See the aspects of Hijazi that have been referenced above. The wording of the post title (“Jet Ski”) and the keywords “ski” and “water sport,” in Hijazi, reads on the recited limitation.
Hijazi discloses “a social networking and e-commerce platform that enables users to share digital content and received compensation based on the digital content” (p. 1, ll. 11-13), similar to the claimed invention and to Barbashin/Noel. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the determining of popularity, in Barbashin/Noel, to include consideration of parameters and weights, and of keywords naming and describing content, as in Hijazi, for more accurately determining popularity by accounting for higher or lower relevance of some parameters as compared to others, per Hijazi (see p. 11, l. 28 to p. 12, l. 8).
Regarding claim 4, Barbashin/Noel/Hijazi teaches features that read on the following limitations:
“The content buying and selling device according to claim 2, wherein the hardware or hardware and software trend determination unit is configured to determine: whether the target word is a trend by assigning a first weighting to the relative value of the trend information when the target word is the content name; and ...” - See the aspects of Barbashin, Noel, and Hijazi that have been referenced above. The hardware and software determining the popularity or virality of digital objects, in Barbashin, wherein the determining includes consideration of keywords when determining popularity or virality, as in Noel, and wherein weighting parameters of content including keywords in names of the content, wherein the parameters are ones more relevant for having greater impact on popularity, as in Hijazi, reads on the recited limitation. The rationales for combining the cited references, from the rejection of claims 1 and 3, also apply to this rejection of claim 4.
“... whether the target word is a trend by assigning a second weighting, which is smaller than the first weighting, to the relative value of the trend information when the target word is the related word, and ...” - See the aspects of Barbashin, Noel, and Hijazi that have been referenced above. The hardware and software determining the popularity or virality of digital objects, in Barbashin, wherein the determining includes consideration of keywords when determining popularity or virality, as in Noel, and wherein weighting parameters of content including keywords relating to content, wherein the parameters are ones more relevant for having lesser impact on popularity, as in Hijazi, reads on the recited limitation. The rationales for combining the cited references, from the rejection of claims 1 and 3, also apply to this rejection of claim 4.
“... the hardware or hardware and software registration unit is configured to register in the content, the first auction starting price, the second auction starting price, the first auction period, the second auction period, the content name, or the related word as metadata.” - See the aspects of Barbashin that have been referenced above. Barbashin also discloses, “programmatically associating the set of files with a corresponding unique project identifier; ... the metadata file comprising one or more links to one or more corresponding digital assets associated with the NFT” (Abstract), and “In response to the selection of content for auction, the project management logic 102 is programmed to assign the selected content to a project 136 which may have a unique project ID. The process is programmed to receive, from the originator, a description or other related data for the digital content of the project which the process is programmed to associate certain metadata with the project, including content type metadata” (col. 9, ll. 4 to 11). The hardware and software that links digital assets and project IDs, descriptions, content type, and/or other related data, using associated metadata, in Barbashin, read on the recited limitation.
Regarding claim 5, Barbashin/Noel/Hijazi teaches features that read on the following limitations:
“The content buying and selling device according to claim 3, wherein the hardware or hardware and software trend determination unit is configured to divide the related word into a plurality of groups, and differentiate the second weighting in each group.” - See the aspects of Barbashin and Hijazi that have been cited above. The hardware and software for determining popularity and virality, in Barbashin, when modified to include weighting of popularity parameters of tags or other parameters associated with content, in Hijazi, reads on the recited limitation. The rationales for combining the cited references, from the rejections of claims 1 and 3, also apply to this rejection of claim 5.
Response to Arguments
In view of the amendments to the claims, the prior claim interpretation under 35 USC 112(f), and the prior claim rejections under 35 USC 112(a) and 112(b), have been reconsidered and withdrawn.
On pp. 8-12 of the Amendment, the applicant requests reconsideration and withdrawal of the claim rejection under 35 USC 101. Initially, the applicant provides a reminder that the eligibility analysis requires consideration of the claims as a whole, and that there are eligibility warranting improvements. (See Amendment, p. 8.) The applicant argues that the present claims, when viewed as a whole, provide an improved method for registering target content whose ownership is bought and sold by auction, representative of an improvement in the technological field of detecting a trend used for content auctions. (See id., p. 9.) The examiner finds the arguments unpersuasive. The claims improve registering target content whose ownership is bought and sold by auction, but that is an improvement to advertising and sales, not to a technological field. Nor is detecting a trend used for content auctions a technological field. Rather, it is advertising and sales activity. Such improvements do not warrant eligibility because it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. (See MPEP 2106.05(a)(II).)
The applicant also argues that the eligibility rationales from Thales Visionix Inc. v. US also apply to the claims of the present application. (See Amendment, p. 9.) In Thales, the key to eligibility stemmed from the way the claims recited positioning and use of inertial sensors, and it was stated that the tracking algorithm itself did not render the claims abstract. (See id.) The examiner finds the arguments unpersuasive. The claims of the present application do not include anything analogous to the particular configuration of inertial sensors in Thales. The present application only recites generic, conventional computer hardware and software. For at least this reason, the eligibility rationales from Thales do not apply to the claims of the present application.
The applicant also argues that the claimed use of target words and the determining of the difference between first values and subsequent values integrates a set of steps into an overall claimed process, when viewed as a whole, with the clear practical application of valuation of registered content. (See Amendment, p. 10.) The examiner finds the arguments unpersuasive. Abstract idea elements alone, like use of target words and the determining of the difference between first values and subsequent values, cannot provide integration at Step 2A, Prong Two. Eligibility at Step 2A, Prong Two must be based on, at least in part, additional elements. (See MPEP 2106.04(II)(A)(2).)
The applicant also argues that the claimed invention warrants eligibility per the PTAB having held that specific technological improvements warrant eligibility. (See Amendment, p. 10.) According to the applicant, the present claims recite steps drawn to the practical application of content valuation based on frequency of search. (See id.) The examiner finds the arguments unpersuasive. While the present claims do recite a practical application in the colloquial sense (i.e., a useful application), they do not integrate the abstract idea into a practical application in the sense required for patent eligibility at Step 2A, Prong Two. Providing content valuations based on frequency of search does not amount to integration into a practical application because it is not an improvement to computer functionality, technology, or a technical field under MPEP 2106.05(a). It is an improvement to an abstract idea of providing valuation of content for advertising for purposes of an auction, which is an improvement to an abstract idea that does not warrant eligibility because, again, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. (See MPEP 2106.05(a)(II).)
The applicant also argues that the claimed invention establishes a technical solution to a technical problem, similar to the scenario in Bascom v. AT&T, which involved filtering Internet content. (See Amendment, pp. 10 and 11.) The examiner finds the arguments unpersuasive. The applicant’s claimed invention does not provide a technical solution to a technical problem, but rather, provides something more like a pricing solution for an auction problem, and does so with the assistance of convention, generic computer componentry. Put another way, filtering internet content may pose a technical problem that needs solved, but pricing for auctions does not.
The applicant also argues that abstract ideas that are applied with, or by use of, a particular machine, warrant eligibility. (See Amendment, p. 11.) The examiner finds the arguments unpersuasive because of the generality of the machine or apparatus in the claims of the present application. It is important to note that a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014). (See MPEP 2106.05(b)(I).)
The applicant also argues that support must be provided for assertions of well-understood, routine, conventional activity. (See Amendment, pp. 11 and 12.) The examiner finds the arguments unpersuasive. The examine provided a citation to a court decision from MPEP 2106.05(d)(II) (“Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93”).
For at least the reasons above, the claim rejection under 35 USC 101 remains asserted. Any of the applicant’s arguments that do not appear to be addressed explicitly have been addressed implicitly in the paragraphs above. For example, arguments that are redundant are not addressed each individually, for the sake of brevity, as addressing such arguments once should be sufficient to communicate the examiner’s positions.
On pp. 12-15 of the Amendment, the applicant requests reconsideration and withdrawal of the claim rejections under 35 USC 103. The applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. See citations to the new Noel reference in the 35 USC 103 section above.
Conclusion
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 THOMAS Y. HO, whose telephone number is (571)270-7918. The examiner can normally be reached Monday through Friday, 9:30 AM to 5:30 PM Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jerry O'Connor, can be reached at 571-272-6787. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS YIH HO/
Primary Examiner, Art Unit 3624
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