Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/07/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 the abstract idea of content personalization and information association without significantly more.
The claim at its core recites:
Receiving a request for content
Analyzing metadata
Determining user affinity based on a “persona”
Generating a query
Retrieving related content
Associating it with a point tin the content
Displaying it as an overlay
This maps closely to information analysis, personalization, targeted content delivery and retrieval which are classic abstract ideas.
Courts routinely find similar concepts abstract.
Personalization/recommendation
Abstract mental process/business practice (e.g., Netflix V Rovi, Affnity Labs)
Analyzing user profiles and metadata to select content
data processing/organizing information
Querying and retrieving related content
generic computer functionality
The phrases in the claim language signal or indicate abstraction for example
“persona of user profile”
“user affinity”
“generating a query”
“associating content”
These are result-oriented steps not technical mechanisms.
The claim is directed to an abstract idea of :
Collecting, analyzing and using information to personalize and present related content.
Even though the claim uses:
“at least one computer processor”
“user device”
“metadata”
“overlay”
These components are generic computer components performing their ordinary functions of scanning metadata, generating queries, retrieving content and displaying overlays. There is no technical improvement such as a new data structure for scanning the metadata, or a specific algorithm for affinity determination, or a novel way to synchronize the overlay, or improvement in the network or the device, instead the claim merely just recites “perfuming personalization by a computer.”
In addition, there is no inventive concept beyond the generic computing used to implement a personalization and content matching idea, therefore, the claim is not statutory under 35. USC 101 because it is an abstract idea.
Similar rational applies to independent claims 10 and 16 making them also not statutory under 35. USC 101.
The dependent claims (2-9, 11-15, and 17-20 ) add further details to the independent claims but the dependent claims taken alone or in combination with their various base claims fail to present additional elements that are sufficient to amount to significantly more than the abstract idea of Collecting, analyzing and using information to personalize and present related content.
Therefore claims 1-20 are not statutory under 35. USC 101.
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 1-20 of instant application are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,244,885 in view of Ruck. USPG_Pub. 20170352083.
The parent patent claims discloses all in the claims 1-20 of the instant application, except degerming/selecting persona of user profile based on metadata.
Ruck discloses that persona can be selected form a pre-determined list of personas based on metadata (Para. 55). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the claims 1-20 of the parent a s disclosed by Ruck to derive claims 1-20 of the application.
Conclusion
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/ANTHONY BANTAMOI/ Examiner, Art Unit 2422