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 the Claims
This action is in response to an application filed on 01/27/2025. Claims 1-20 are pending. All pending claims are examined.
Continued Examination Under 37 CFR 1.114
This application is a continuation application of U.S. application No. 18/218,890 filed on 07/06/2023, now U.S. Patent 12,211,064 (“Parent Application”). See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application.
Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicant(s) desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 -20 are rejected on the ground of nonstatutory double patenting as being anticipated over claims 1-20 of US Patent No. 12,211,064.
Claims 1, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of Patent No. 12,211,064. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claims under examination.
Claims 2-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-10 of Patent No. 12,211,064. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claims under examination.
Claims 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-20 of Patent No. 12,211,064. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claims under examination.
Claims 1 -20 are rejected on the ground of nonstatutory double patenting as being anticipated over claims 1-20 of US Patent No. 11,704,689.
Claims 1, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of Patent No. 11,704,689. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claims under examination.
Claims 2-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-10 of Patent No. 11,704,689. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claims under examination.
Claims 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-20 of Patent No. 11,704,689. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claims under examination.
Claims 1 -20 are rejected on the ground of nonstatutory double patenting as being anticipated over claims 1-18 of US Patent No. 11,107,117.
Claims 1, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of Patent No. 11,107,117. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claims under examination.
Claims 2-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-9 of Patent No. 11,107,117. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claims under examination.
Claims 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-18 of Patent No. 11,107,117. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claims under examination.
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 non-statutory subject matter.
Claims 1-20 are not compliant with 101, according with the last “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), published in the MPEP 2103 through 2106.07(c). Examiner’s analysis is presented below for all the claims.
Claim 1: Step 1 of 2019 PGE, does the claim fall within a Statutory Category? Yes. The claim recites a series of steps and, therefore, is a process (a method).
Step 2A - Prong 1: Is a Judicial Exception recited in the claim ? Yes. The claim recites the limitations of
“b) determining, …, a plurality of converter users from the test group …matching impression information with conversion event information … and selecting the plurality of converter users from the first subset of users in which the impression information of that user matched with the conversion event information of that user; c) determining, …, a lift associated with a plurality of content items based on a comparison of a first conversion rate of the plurality of converter users with a second conversion rate of a plurality of non-converter users; and d) … associating, … at least a portion of the non-converter users with an exposure profile that causes a modification in presentation of the plurality of content items based on the determined lift.”
The “determining, matching, selecting and associating ” limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitations as certain methods of organizing human activity, advertising, marketing or sales activities or behaviors. The method for presenting content. Thus, the claim recites an abstract idea.
Step 2A - Prong 2: Integrated into a Practical Application? No. The claim recites additional limitations, such as “a) placing… a first subset of users into a test group and a second subset of users into a control group, wherein the first subset of users in the test group includes users that received at least one viewable content item … and wherein the second subset of users in the control group include remaining users that were not placed in the first subset of users”; These are limitations toward accessing or receiving data. It is merely gathering data.
The Examiner analyses other supplementary elements in the claim in view of the instant disclosure:
“ using a hardware processor”, “on an associated user device”, “by generating a mapping of a user identifier for each of the first subset of users with a vendor user identifier”, “using the mapping”, and the term “automatically”. The limitations comprise generic recited computer elements and software including data manipulation functions. The use of a “generating a mapping” functionality is not sufficient to integrate the abstract idea because it merely reflects the use of conventional technology and amounts to only generally linking the use of an abstract idea to a particular technological environment. MPEP 2106.05(h).
The combination of these additional elements can also be considered no more than mere instructions “to apply” the exception, See MPEP 2106.05(f).
The Examiner gives the broadest reasonable interpretation to the above elements. They are insignificant extra-solution activity. See MPEP 2106.05(g).
Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claim as a whole does not integrate the method of organizing human activity into a practical application. Thus, the claim is ineligible because is directed to the recited judicial exception (abstract idea). Thus, the claim as a whole, is ineligible because it is directed to the recited judicial exception (abstract idea).
Step 2B : claim provides an inventive concept? No.
As discussed with respect to Step 2A Prong Two, the additional elements in the claim,
“ using a hardware processor”, “on an associated user device”, “by generating a mapping of a user identifier for each of the first subset of users with a vendor user identifier”, “using the mapping”, and the term “automatically”, amount to no more than mere instructions to apply the exception. i.e., mere instructions to apply an exception using generic hardware and software cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B.
Here, the limitations:
“ using a hardware processor”, “on an associated user device”, “by generating a mapping of a user identifier for each of the first subset of users with a vendor user identifier”, “using the mapping”, and the term “automatically” were considered to be extra-solution activity in Step 2A, and thus it is re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field.
Other limitations in the claim, such as:
“a) placing… a first subset of users into a test group and a second subset of users into a control group, wherein the first subset of users in the test group includes users that received at least one viewable content item … and wherein the second subset of users in the control group include remaining users that were not placed in the first subset of users” ; These are limitations toward accessing or receiving data (gathering data). Accessing or receiving data is very well understood, routine and conventional computer task activity; It represents insignificant extra solution activity. Mere data-gathering step[s] cannot make an otherwise nonstaturory claim statutory In re Grams,888 F.2d 835, 840 (Fed. Cir. 1989) (quoting In re Meyer, 688 F.2d 789, 794 (CCPA 1982)).
Further, the instant specification does not provide any indication that the elements
“ using a hardware processor”, “on an associated user device”, “by generating a mapping of a user identifier for each of the first subset of users with a vendor user identifier”, “using the mapping”, and the term “automatically” , are anything other than generic software and hardware, and the Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. Concluding that generating information as a function of other information and a "dynamic" limitation is not sufficient to remove the claims from the abstract realm. The use of an estimation function is similarly deficient, as it merely reflects the use of the computer as a tool to perform the abstract idea of estimating advertising elasticity. In this case, the “automatically associating” limitation, the use of “ using a hardware processor”, “on an associated user device” and “generating a mapping of a user identifier for each of the first subset of users with a vendor user identifier”, “using the mapping”, merely processing data for presenting content is a well‐understood, routine, conventional function when it is claimed in a merely generic manner (as it is here).
Accordingly, a conclusion that the “ using a hardware processor”, “on an associated user device” and “generating a mapping of a user identifier for each of the first subset of users with a vendor user identifier”, “using the mapping”, limitations (pointed above) are well-understood, routine, conventional activity is supported under Berkheimer Option 2. See MPEP 2106.05 (d). The claim is ineligible.
Claim 11: Step 1 of 2019 PGE, does the claim fall within a Statutory Category? Yes. The claim recites a system.
Step 2A - Prong 1: Is a Judicial Exception recited in the claim ? Yes. Because the same reasons pointed above.
Step 2A - Prong 2: Integrated into a Practical Application? No. Because the same reasons pointed above. The claim is ineligible.
Dependent claims 2-10, and 12-20, the claims recite elements such as
“wherein the method further comprises generating a first plurality of temporal distributions based on content viewability information for each of the plurality of converter users, wherein each of the first plurality of temporal distributions is a temporal distribution between exposure to a first content item and a conversion action for the converter user, wherein the plurality of non-converter users is determined in which each of the plurality of non-converter users has one of a second plurality of temporal distributions having similar distribution characteristics to the first plurality of temporal distributions associated with the plurality of converter users”, etc. These elements do not integrate the system of organizing human activity into a practical application. The claims are ineligible.
Examiner’s Note
Regarding to the state of the prior art,
US PG. Pub. No. 20170068987 Measuring Advertisement Lift, This publication discloses “An advertisement system measures an ad lift metric for advertisement campaigns, which indicates the increase in conversions that can be attributed to the advertisement campaign. As impression opportunities become available for users for the ad in the lift study, the advertisement system determines whether the user is in a test group or a control group. To limit bias in the lift study, rather than holding out ads from being provided to users after the ad has been selected for the user and right before the impression, the system holds out the ads at a higher level in the ad selection process. In this manner, not all test group users receive the advertisement. The system computes the lift metric as e.g., the incremental lift (difference between conversion rates in the test and control groups), and this is divided by conversion rate of an exposed target group minus the incremental lift.”
US Patent No. 10467659 Methods, systems, and devices for counterfactual-based incrementality measurement in digital ad-bidding platform. This publication discloses “A digital ad-buying platform uses counterfactual-based incrementality measurement by implementing randomization and/or a correction for auction win bias to avoid the need to identify counterfactual winner types in the control group. This approach can estimate impact at the individual consumer level. Confidence levels can be determined using Gibbs sampling in the context of causal analysis in the presence of non-compliance”.
US PG. Pub. No. 20150088635 Systems and methods of measurement and modification of advertisements and content. This publication discloses
“Systems and methods of measurement and modification of advertisements and content are described. In one example, advertisements/content items (or web servers or applications that present the advertisements/content items) send signals to a measurement server in response to certain events or actions. The signals identify the advertisement/content item and the user that caused the event or performed the action. The measurement server aggregates received signals from different advertisements/content items to determine metrics such as digital brand lift (e.g., a change in brand awareness due to an advertisement/advertising campaign). The measurement server can send computed information back to an advertisement/content item, so that the advertisement/content item (or web server/application) can self-modify and/or deploy additional advertisements/content items”.
US Patent No. 10614481 System and method for measuring the relative and absolute effects of advertising on behavior based events over time. This publication discloses
The systems and techniques described herein measure advertisement effectiveness of behavior-based outcomes (e.g., site visit, number of pages consumed, searches, online and offline transactions). The system implemented an automated model to measure the impact of exposures and impressions on outcomes using uses panel data, cookie-based data, and combinations thereof. The techniques use test and control approach to calculate effectiveness, where the test group are those exposed to a campaign and a control group who is not exposed. For those exposed, a running analysis of impressions (and other variables) in a pre period is used to determine behavior based outcomes over a set time period after that exposure. As a result, the automated model is able to generate metrics that show absolute and relative impacts on future behavior.
The above mentioned references fail to teach at least:
“determining, using the hardware processor, a plurality of converter users from the test group by generating a mapping of a user identifier for each of the first subset of users with a vendor user identifier, matching impression information with conversion event information using the mapping, and selecting the plurality of converter users from the first subset of users in which the impression information of that user matched with the conversion event information of that user;”The claims as a whole and the missing claimed elements from the above references are not found in a reasonable number of reference(s).
Allowable Subject Matter
Claims 1-20 would be allowed if Applicant can overcome the nonstatutory double patenting and 101 rejections found in the instant action.
Also, allowance subject to the completion of all the mandatory searches for allowance “In the examination of an application for patent, an examiner must conduct a thorough and complete search of the prior art.”, see MPEP 904 and 719.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“Strategic Online Advertising: Modeling Internet User Behavior with Advertising.com”. IEEE. 2006.
This article discloses “We investigated how online advertising could be made more receptive to Internet users' needs, thereby improving the efficacy. Only three to five viewers in a thousand click on a given online banner advertisement. To improve the low response rate, marketers need to reach the right audience, which will yield a higher return on advertising dollars by eliminating wasted ads and maximizing campaign effectiveness. Users see relevant ads based on their preferences and fewer ads that do not interest them. We identified and modeled user behavior and characterized a subpopulation of users to help predict advertising response. We then developed an exploratory optimization and targeting technology for use by advertising.com by serving users ads probabilistically on the basis of their online behaviors. After preliminary algorithm validation, the increase in early user clicks indicates the potential effectiveness of these models in improving the online advertising response rate. The resultant potential increase in action could lead to increased revenue”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA VICTORIA VANDERHORST whose telephone number is (571)270-3604. The examiner can normally be reached on business hours from Monday through Friday from 8:30 AM to 4:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ashraf Waseem can be reached on 571-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARIA V VANDERHORST/Primary Examiner, Art Unit 3621 2/19/2026