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 .
DETAILED ACTION
Status of Claims
This action is in reply to the communication filed on 06/11/2026.
Claims 1,18, have been amended.
Claims 1-20 are currently pending and have been examined.
Response to Applicant’s Arguments
Applicant’s amendments and arguments filed on 06/11/2026 have been fully considered and discussed in the next section. Applicant is reminded that the claims must be given its broadest, reasonable interpretation.
With regard to “non-statutory double patenting” rejection of claims 1-20 Applicant has acknowledged the Double Patenting rejection and requested that this rejection be held in obeyance until the claims are otherwise in condition for allowance. However, the non-statutory obviousness-type double patenting rejection will be maintained in the Office Action until such time as the conflicting claims are amended or terminal disclaimer is filed or abandoned of the application.
With regard to claims 1-20 under 35 USC § 101:
Applicant argues that “ Amended Claim 1 does not merely automate a human activity. Humans reading a webpage do not inherently "parse an object tree of the webpage" to algorithmically evaluate the "typographic emphasis and a spatial location...within the object tree." Instead, this is a deeply computer-centric process specifically tailored to the hierarchical, machine-readable structures of modern web documents (e.g., Document Object Model trees) (page 1/6)”.
Examiner disagrees. There is no requirement that the activities be performed by a human. Instead, it is organizing human activities. As thus, the applicant's argument that the claims overcome the 35 USC 101 rejection under Step 2a, Prong 1 because the steps cannot be performed by a human being is not convincing. The only abstract idea bucket in which performance by a human is required is the "Mental Process" bucket which requires that the steps be capable of being performed in the human mind. The claims of the instant invention have not been identified as a "Mental Process". Instead the claims of the instant invention have been identified as "Certain Methods of Organizing Human Activities". The Subject Matter Eligibility Guidelines indicate that "advertising, marketing or sales related activities" is a subcategory of "Certain Methods of Organizing Human Activities". There is no requirement that these "advertising, marketing, or sales related activities" be performed by a human being. Therefore, all steps involved in the performance of advertising, marketing or sales related activities are part of the abstract idea itself irrespective of whether they are performed by a computer or performed by a human being. Thus, the applicant's arguments are moot. Accordingly, the claim rejection of claims 1-20 rejection under 35 USC § 101, is maintained.
Applicant argues that “Under Step 2A, Prong 2 of the Alice/Mayo framework, the claims integrate the alleged abstract idea into a practical application by providing a specific, technical methodology for programmatic data extraction. By evaluating the structural and styling metadata embedded in the object tree, rather than merely analyzing the semantic meaning of raw text, the claimed system improves the accuracy and efficiency of the computer's ability to identify actionable data payloads. This represents a specific improvement to the functioning of the computer itself (specifically, web scraping, data parsing, and dynamic content generation technologies), successfully moving the claims beyond the realm of abstract ideas (page 2/6)”.
Examiner disagrees. In order for a claim to overcome a rejection under Step 2a, Prong 2, the purported improvement must be rooted in the “additional elements” of the claim in a manner other than merely applying the abstract idea using a general-purpose computer with generic computer components. “Additional elements” are defined as those elements of a claim that are not part of the abstract idea itself.
The only “additional elements” in the claims are a computer system comprising a data store which is “system including one or more processors and computing device” (e.g. a general-purpose computer with generic computer components that is used as a tool to merely apply the abstract idea. As such, the “additional elements” of the claim, whether considered individually or as a whole, are incapable of transforming the abstract idea into a practical application under Step 2a, Prong 2. The argued limitations that purportedly result in the argued improvement are all part of the abstract idea itself which is merely applied using the general-purpose computer with generic computer components.
Improvements of this nature are improvements rooted solely in the abstract idea itself and are considered an improvement to an abstract idea which is an improvement in ineligible subject matter (see MPEP 2106.05(a) - “It is important to note, the judicial exception alone cannot provide the improvement”; and MPEP 2106.05(a)(II) - “However, 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”; and the SAP v Investpic decision - Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms.
Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.). As such, the applicant’s argument is not convincing and the rejections have been maintained. Accordingly, the claim rejection of claims 1-20 rejection under 35 USC § 101, is maintained.
Applicant argues that “under Step 2B, the ordered combination of elements amounts to significantly more than a generic instruction to "apply it" on a computer. The claims require a highly specific sequence of operations: receiving a URL, loading the webpage, parsing its underlying object tree, isolating structural and spatial metadata (typographic emphasis and spatial location) to calculate a score, and dynamically modifying audio/visual output based on those specific structural cues. Viewed as an ordered combination, these steps provide an inventive concept that imposes meaningful limits on the claim scope, ensuring the claim does not preempt all methods of extracting contact information. For at least the following reasons, Applicant submits that the pending claims are patent eligible and requests that the rejections under § 101 be withdrawn (page 2/6)”.
Examiner disagrees. Under Step 2B, the claim is also analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract idea. See MPEP 2106.05. Although additional elements are recited, representative claim 1 merely invokes such additional elements as a tool to perform the abstract idea. Implementing an abstract idea on a generic computer is not indicative of integration into a practical application. Similar to the limitations of Alice, representative claim 1 merely recites a commonplace business method (i.e. computer) being applied on a general purpose computer. See MPEP 2106.05(f).
As such, an purported improvement in what the applicant calls a technical field is an improvement in ineligible subject matter. In order for an improvement to a technology or technological filed to overcome a 35 USC 101 rejection, the purported improvement must be rooted in the "additional elements" which in this case they are not. The claimed additional elements are merely a general purpose computer upon which an abstract idea is merely being applied which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2. The instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Since representative claim 1 recites an abstract idea and fails to integrate the abstract idea into a practical application, representative claim 1 is “directed to” an abstract idea (Step 2A: YES). “However, 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. MPEP 2106.05(a)(II) ” . As such, under Prong Two of Step 2A of the Alice/Mayo test, when considered both individually and as a whole, the limitations of representative claim 1 are not indicative of integration into a practical application (Step 2A, Prong Two: NO). As such Applicant's claimed solution is NOT technological and does not addresses a technological problem. Hence, Examiner maintains that the claims do not define substantially more than the abstract idea.
Also, MPEP 2106.04 I which recites in part (emphasis added): “While preemption is the concern underlying the judicial exceptions, it is not a standalone test for determining eligibility. Rapid Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042, 1052, 119 USPQ2d 1370, 1376 (Fed. Cir. 2016). Instead, questions of preemption are inherent in and resolved by the two-part framework from Alice Corp. and Mayo (the Alice/Mayo test referred to by the Office as Steps 2A and 2B). Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379, 115 USPQ2d 1152, 1158 (Fed. Cir. 2015).” It is respectfully submitted that in the present case, as seen in the Final Rejection and above, the Office analyzed the claims under 2A and 2B, thus resolving the question of preemption. Specifically, under 2A it was concluded that claims recite a judicial exception that is not integrated into a practical application, and under 2B it was determined that additional elements recited in the claim beyond the judicial exception, when evaluated individually and in combination, did not amount to significantly more than the judicial exception. Therefore, the claim rejection of claims 1-20 rejection under USC § 101 is maintained.
With regard to claims 1-20 rejection under 35 USC § 103, Applicant arguments are considered. Therefore, the claim rejection of claims 1-20 under 35 USC § 103 is withdrawn.
Double Patenting
“Nonstatutory-type” double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinguishing from claims in a first patent. Nonstatutory double patenting includes rejections based on either a one-way determination of obviousness or a two-way determination of obviousness. Nonstatutory double patenting could include a rejection which is not the usual “obviousness-type” double patenting rejection. See MPEP § 804
A nonstatutory obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 provisionally rejected on the ground of nonstatutory double patenting over claims 21-40 of patent Application No: 10943144. This is a provisional double patenting rejection since the conflicting claims have not yet been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because they are obvious variation of each other.
Independent claims 1 and 18 of the instant application do not recite the limitations of : modify the content item to indicate the one of the first contact information or the second contact information selected based on the location information associated with the computing device; and provide the content item to the computing device to cause the computing device to generate audio output comprising the content item to indicate, via the audio output, the one of the first contact information or the second contact information selected based on the location information associated with the computing device, the computing device to dial a number of the content provider computing device with the one of the first contact information or the second contact information responsive to input from the computing device.
It would have been obvious to one of ordinary skill in the art at the time of the invention to include in the instant application to include modify the content item to indicate the one of the first contact information or the second contact information selected based on the location information associated with the computing device; and provide the content item to the computing device to cause the computing device to generate audio output comprising the content item to indicate, via the audio output, the one of the first contact information or the second contact information selected based on the location information associated with the computing device, the computing device to dial a number of the content provider computing device with the one of the first contact information or the second contact information responsive to input from the computing device with the motivation of displaying advertising message to the user in a convenient way to call advertisers and based on user’s precise location and thus increasing marketability and revenue.
This is a provisional double patenting rejection since the conflicting claims have not yet been patented. Applicant is required to either cancel the conflicting claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
The subject matter claimed in the instant application is fully disclosed in the referenced patent application and would be covered by any patent granted on that application since the referenced patent application and the instant application are claiming common subject matter, as follows: implementing a click to call functions in a mobile phone via a webpage, by extracting advertiser contact information based on determining prominence score.
Furthermore, there is no apparent reason why applicant would be prevented from presenting claims corresponding to those of the instant application in the other patent application.
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 directed to a system 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the following abstract idea:
receive a content item and uniform resource locator (URL) from a content provider, the URL identifying a webpage;
detect a first contact information from the webpage;
parse an object tree of the webpage to calculate a prominence score for the first contact information based on a typographic emphasis and a spatial location of the first contact information within the object tree;
receive, via speech input, a request;
modify, based on the prominence score, the content item to include the first contact information; and
provide the content item to cause the computing device to generate output comprising the content item to indicate, via the output, the first contact information;
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising, marketing and sales activities or behaviors. 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 one or more hardware processors system including one or more processors (e.g. a general purpose computer with generic computer components) and a database 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.
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)):
receive a content item and uniform resource locator (URL) from a content provider computing device, the URL identifying a webpage (receiving data);
receive, via speech input from a computing device, a request ( receiving data);
provide the content item to the computing device to cause the computing device to generate output comprising the content item to indicate, via the output, the first contact information ( displaying data);
More 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.
Specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using a computer with one or more hardware processors system including one or more processors (e.g. a general purpose computer with generic computer components) and a database 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, 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 85 and 105 of the applicant’s specification) and the affinity v Direct TV decision which states that a database is a generic computer component); 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, displaying, storing, and/or transmitting data (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
receive a content item and uniform resource locator (URL) from a content provider computing device, the URL identifying a webpage (receiving data);
receive, via speech input from a computing device, a request ( receiving data);
provide the content item to the computing device to cause the computing device to generate output comprising the content item to indicate, via the output, the first contact information ( 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). For the same reason these elements are not sufficient to provide an inventive concept. For these reasons, there is no inventive concept in the claim, and thus the claim is not patent eligible. Same Judicial analysis is applied here to independent claim 18.
The dependent claims 2-17 and 19-20 appear to merely further limit the abstract idea, 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 2-17 and 19-20 are not patent eligible.
Possible Allowable Subject Matter
Claims 1-20 would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 rejections identified above.
The following is a statement of reasons for the indication of allowable subject matter: The most relevant prior the examiner has found is:
Altberg et al, US Pub No: 2008/0194260 A, teaches Methods and apparatuses to connect a user of a telephony device to a selected one of service providers of a predefined category. One embodiment includes: providing a user interface element on a dial interface of a telephonic device to represent a communication reference associated with a pre-defined category of services; and responsive to a user selection of the user interface element, initiating a request from the telephonic device using the communication reference for a telephone connection to a service provider of the pre-defined category; where the service provider is to be selected from a plurality of service providers of the pre-defined category in response to the request and to be charged in response to a telephone lead connected to the service provider.
Zhang, US Pat No: 9449080 B1, teaches A system, methods, and user interface for automatically extracting important terms from a document content as terms representing the important information in the content, and using the extracted term or terms to label the document, either as a tag or a summary or category, or for renaming the document. Methods for determining the terms as important include content analysis methods based on grammatical, semantic, contextual, positional, frequency, and other attributes associated with the terms. Documents can include any type of document containing text, including personal or company documents, Web pages, emails, reviews and comments, etc. In some embodiments, a document can also be a collection of documents
Shahshahani, US Pub No : 2010/0030647 A1, teaches The method involves receiving a request associated with a user for one of advertisements. Profile information associated with the user is identified. An inverted index is queried based on the identified profile information, where the inverted index includes a list of user attributes and a list of advertisement and corresponding weight factor that corresponds to each listed user attribute. The set of advertisements is determined in the inverted index. The determined advertisements are filtered to generate an advertisement configuration that includes one of the determined advertisements.
As thus, none of the cited reference discloses the claimed features of the independent claims 1 and 18. Accordingly, the claims subject matter of claims 1-20 would be allowable over the prior art, if the applicant would able to overcome the claim rejections under 35 USC 101 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant' s disclosure.
Baluja, US Pub no: 2006/0004627 A1, teaches advertisements for devices with call functionality such as mobile phones where serving of one or more ads to a user device considers determined characteristics of a user device, such as whether or not the user device supports telephone calls. At least some ads may include call-on-select functionality. When such an ad is selected (e.g., via a button click), instead of loading a document (e.g., Web page) for rendering, a telephone number associated with the ad by an advertiser can be automatically dialed
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 files within TWO MONTHS from 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Affaf Ahmed whose telephone number is 571-270-1835. The examiner can normally be reached on [ Mon-Thursday 8-6 pm ].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar 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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/AFAF OSMAN BILAL AHMED/Primary Examiner, Art Unit 3622
