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 .
Response to Amendment
This Office action is in response to the Amendment filed on 07/29/2026.
Claims 14 is canceled.
Claims 15-21 are new.
Claims 1-13 and 15-21 are currently pending and examined below.
Claim Objections
Claim 15 is objected to because of the following informalities: Claim 15 does not end with a period as required by MPEP 608.01(m). Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 15 recites the limitations “selecting (identifying) the advertisement having the display performance which does not exceed the reference value; and causing the display device to display the advertisement selected (identified) on the display screen.” However, it is unclear if the advertisement is selected or identified. The Examiner suggests amending the above limitation to recite either selecting or identifying to overcome the rejection. Claims 16-20 are also rejected based on their dependency to claim 15.
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 1-13 and 15-21 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a nature phenomenon, or an abstract idea) without significantly more.
Step 1:
Claims 1-13 and 15-21 is/are directed towards a statutory category (i.e., a process, machine, manufacture, or composition of matter) (Step 1, Yes).
Step 2A Prong One:
Claim 1 recites (additional elements underlined):
An information processing device comprising:
a memory that stores a reference value associated with each of a plurality of classifications determined in advance for an attribute of a viewer of an advertisement displayed on a display screen of a display device; and
a hardware processor device configured to execute processor-executable instructions stored in the memory to cause the hardware processor device to perform operations comprising:
acquiring a captured image obtained by capturing an image of an image capturing region including a position at which the display screen is visible;
determining which of the plurality of classifications an attribute of a person included in the captured image falls under;
selecting any of the plurality of classifications on the basis of at least a track record of the advertisement displayed on the display screen and a result of the determining; and
causing the display screen to display the advertisement associated with the classification selected,
so as to prevent an increase in the display performance of the display screen from being biased toward a specific content data while displaying content data appropriate for the attribute of the viewer,
wherein, in a case that at least a first person and a second person are included in the captured image, the selecting comprises selecting a second classification when performing:
a first determination that involves determining that track record of a first advertisement which is the advertisement associated with a first classification determined by the determining with respect to an attribute of the first person exceeds a first reference value which is the reference value associated with the first classification, and
a second determination that involves determining that track record of a second advertisement which is the advertisement associated with the second classification determined by the determining with respect to an attribute of the second person does not exceed a second reference value which is the reference value associated with the second classification.
Under the broadest reasonable interpretation, the limitations outlined above that describe or set forth the abstract idea, cover performance of the limitations in the mind but for the recitation of generic computer(s) and/or generic computer component(s). That is, other than reciting the additional elements, nothing in the claim precludes the limitations from practically being performed in the mind. These limitations are considered a mental process because the limitations include an observation, evaluation, judgment, and/or opinion. These limitations are also similar to “collecting information, analyzing it, and displaying certain results of the collection and analysis” and/or “collecting and comparing known information” which were determined to be mental processes in MPEP 2106.04(a)(2)(III)(A). The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer” (see MPEP 2106.04(a)(2)(III)(C)). The mere nominal recitation of the additional elements do not take the claims out of the mental process grouping. Therefore, the claim recite a mental process (Step 2A Prong One, Yes).
The limitations outlined above also describe or set forth an advertising/marketing activity. Advertising/marketing fall within the certain method of organizing human activity enumerated grouping of abstract ideas. The limitations outlined above also describe or set forth a fundamental economic principle or practice because advertising/marketing is related to commerce and economy. The limitations outlined above also describe or set forth a commercial interaction (e.g., advertising, marketing or sales activities or behaviors, business relations). The limitations outlined above also describe or set forth the managing of personal behavior or relationships or interactions between people. Therefore, the claim recites a certain method of organizing human activity (Step 2A Prong One, Yes).
The limitations outlined above that describe or set forth the abstract idea are also considered mathematical concepts at least because the above limitations determine that track record of a first advertisement which is the advertisement associated with a first classification determined by the determining with respect to an attribute of the first person exceeds a first reference value which is the reference value associated with the first classification, and determine that track record of a second advertisement which is the advertisement associated with the second classification determined by the determining with respect to an attribute of the second person does not exceed a second reference value which is the reference value associated with the second classification. These limitations are similar to “organizing information and manipulating information through mathematical correlations” which was determined to be a mathematical concept in MPEP 2106.04(a)(2)(II). Therefore, the claim recites a mathematical concept (Step 2A Prong One, Yes).
Step 2A Prong Two:
In Step 2A Prong Two, the additional element(s) outlined above are recited at a high level of generality, and under the broadest reasonable interpretation, are generic computer(s) and/or generic computer component(s) that perform generic computer functions. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional element(s) amount adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computer(s) and/or generic computer component(s) does not integrate the judicial exception similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. The Examiner notes that “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 pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use (e.g., in a computer environment). The courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. There is no indication that the combination of elements improves the functioning of a computer, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses 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 claims as a whole is more than a drafting effort designed to monopolize the exception. Their collective functions merely provide generic computer implementation (Step 2A Prong Two, No).
Step 2B:
In Step 2B, the additional elements also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong Two. The Examiner notes that revised Step 2A Prong Two overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Their collective functions merely provide generic computer implementation (Step 2B, No).
Claim(s) 2-10 and 21 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 1 (i.e., mathematical concepts, certain methods of organizing human activities and/or mental processes).
Claims 2, 4-6, and 9-10 do not recite any other additional elements. Therefore, for the same reasons explained above with respect to claim 1, claims 2, 4-6, and 9-10also do not integrate the judicial exception into a practical application or amount to significantly more.
Claim 3 recites the additional elements “on the display screen.” Claim 7 recites the additional element “to the display device.” Claim 8 recites the additional element “wherein the operations further comprise.” Claim 21 recites the additional elements “wherein the operations further comprise,” “causing the display screen to,” and “on the display screen.” However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claim 11 recites (additional elements underlined):
An information processing device comprising:
a memory that stores a plurality of reference values associated with a plurality of classifications determined in advance for an attribute of a viewer of an advertisement displayed on a display screen of a display device; and
a hardware processor device configured to execute processor-executable instructions stored in the memory to cause the hardware processor device to perform operations comprising:
acquiring a captured image obtained by capturing an image of an image capturing region including a position at which the display screen is visible;
determining which of the plurality of classifications an attribute of a person included in the captured image falls under;
selecting any of the plurality of classifications on the basis of at least a track record of the advertisement displayed on the display screen and a result of the determining; and
causing the display screen to display the advertisement associated with the classification selected,
so as to prevent an increase in the display performance of the display screen from being biased toward a specific content data while displaying content data appropriate for the attribute of the viewer,
wherein, in a case that at least a first person is included in the captured image, the selecting comprises selecting any of the plurality of classifications in accordance with different conditions depending on whether a person other than the first person is included in the captured image when the track record of the advertisement displayed on the display screen associated with a first classification determined by the determining with respect to an attribute of the first person exceeds a first reference value which is the reference value associated with the first classification.
For the same reasons explained above with respect to claim 1, claim 11 also recites an abstract idea in Step 2A Prong One, and does not integrate the judicial exception into a practical application or amount to significantly more.
Claim(s) 12-13 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 11 (i.e., mathematical concepts, certain methods of organizing human activities and/or mental processes).
Claim 12 recites the additional elements “on the display screen.” Claim 13 recites the additional elements “on the display screen” and “the operations further comprise.” However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claim 15 recites (additional elements underlined):
An information processing system comprising:
a display device;
an image capturing device configured to capture an image of an image capturing region including a position at which a display screen of a display device is visible;
a memory that stores a set of processor-executable instructions; and
a hardware processor device configured to execute the sets of processor- executable instructions to cause the hardware processor device to perform operations comprising:
acquiring the image captured by the image capturing device;
determining whether a plurality of persons are included in the image captured;
determining, into which classification of a plurality of classifications of a plurality of advertisements, a respective attribute of each person of the plurality of persons is classified, in case that it was determined that the plurality of persons are included in the image captured;
calculating, for each classification of the plurality of classifications, a respective proportion of persons having the respective attribute which is classified into each classification of the plurality of classifications;
deciding a respective reference value for each classification of the plurality of classifications, on the basis of the respective proportion calculated;
determining whether a respective display performance of each advertisement of the plurality of advertisements exceeds the respective reference value which corresponds to a respective classification of the plurality of classifications of the plurality of advertisements, wherein the respective display performance is a track record of the advertisement displayed on the display screen;
selecting (identifying) the advertisement having the display performance which does not exceed the reference value; and
causing the display device to display the advertisement selected (identified) on the display screen,
so as to prevent an increase in the display performance of the display screen from being biased toward a specific content data while displaying content data appropriate for the attribute of the viewer,
For the same reasons explained above with respect to claim 1, claim 51 also recites an abstract idea in Step 2A Prong One, and does not integrate the judicial exception into a practical application or amount to significantly more.
Claim(s) 16-20 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 15 (i.e., mathematical concepts, certain methods of organizing human activities and/or mental processes).
Claims 16 and 18 does not recite any other additional elements. Therefore, for the same reasons explained above with respect to claim 15, claims 16 and 18 also do not integrate the judicial exception into a practical application or amount to significantly more.
Claim 17 recites the additional elements “wherein the operations further comprise,” “by the image capturing device,” “from the display device,” and “to the display device.” Claim 19 recites the additional elements “wherein the operations further comprise,” “by the image capturing deice,” and “in the memory.” Claim 20 recites the additional elements “wherein the image capturing device is configured integrally with the display device and is positioned on a surface of the display device on which the display screen is provided, … by the image capturing device … the display screen of the display device.” However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Allowable Subject Matter
The Examiner notes that after a thorough search on the claims as currently amended, they are found to recite novel and non-obvious subject matter. The closest prior art found to date are the following:
Tsuchida (US 2021/0304257 A1) discloses the concept of acquiring a captured image obtained by capturing an image of an image capturing region including a position at which a display screen of a display device is visible; and determining which of a plurality of classifications an attribute of a person included in the captured image falls under; displaying the advertisement associated with the selected classification.
Mongeau (US 2022/0148036 A1) discloses the concept of storing a plurality of reference values associated with a plurality of classifications determined in advance for an attribute of a viewer of an advertisement displayed on the display screen.
Sharma et al. (US 2008/0109397 A1) discloses a system and framework for automatically measuring and correlating visual characteristics of people and accumulating the data for the purpose of demographic and behavior analysis. The demographic and behavior characteristics of people are extracted from a sequence of images using techniques from computer vision. The demographic and behavior characteristics are combined with a timestamp and a location marker to provide a feature vector of a person at a particular time at a particular location. These feature vectors are then accumulated and aggregated automatically in order to generate a data set that can be statistically analyzed, data mined and/or queried.
Kobayashi (US 2011/0293148 A1) discloses a non-transitory computer-readable medium storing a content determination program causes a computer to perform processes of detecting persons appearing in chronologically photographed images, detecting a position of each of the persons, calculating a moving velocity of each of the persons, setting a group including a part of the persons on the basis of the moving velocities and the positions, acquiring attribute information of the group on the basis of a person image corresponding to the each of the part of the persons included in the group, and determining, on the basis of a correspondence relationship between the attribute information of the group and attribute information of content images stored in a storage unit, one of the content images to be projected to a position which each of the part of the persons of the group recognizes.
Sukegawa et al. (US 2007/0189585 A1) discloses a person identification device obtaining information including biometric information of a person, detecting the biometric information of at least one person from the obtained information, collates each detected biometric information with the biometric information of at least one registrant associated with group information and stored in a storage unit to thereby identify the person having the biometric information detected from the obtained information, classifies a plurality of successively identified persons into group candidates based on predetermined conditions, divides the persons of the group candidates into groups based on the group information of each person stored in the storage unit, and outputs a grouping result to an external device.
Saurabh et al. (US Patent No. 11,367,083 B1) discloses a method and system for evaluating relative effectiveness of content in a digital signage network, using a series of measurements to compare and evaluate different contents. The measurements are performed on a plurality of input images of the people captured by a plurality of means for capturing images in the vicinity of at least a digital signage. The present invention is a content rating system based on how the audience responds to the digital content in the intended context of digital media network in-store or in other public viewing areas. The present invention allows the measurement of the response to the content for different segments, further allowing for better planning of the content and optimizing the advertising dollars.
Bhat et al. (US 2019/0378171 A1) discloses a system, method, and machine readable media for targeted advertising. One of more images of individuals in a location in a facility are captured with an imaging device. Face detection is performed on the one or more images. Based on a face detection result, Convolutional Neural Network models are used to determine a gender and estimate an age of each detected face. A targeted audience is determined, based on pre-determined criteria using the age estimation and gender identification of each detected face. A relevant advertisement is selected for the targeted audience for display on a display device. The relevant advertisement may be selected based at least in part on a footfall score indicative of customer traffic in the facility.
Yamazaki (US 2010/0082514 A1) discloses the concept of counting a number of times that an advertisement is displayed.
While the prior art teach some of the elements of the claimed invention, one of ordinary skill in the art would not have arrived at Applicant’s claimed invention unless one was using Applicant’s claims and specification as a roadmap, thus using impermissible hindsight. Additionally, the prior arts do not disclose at least the following limitations when viewed in context of the claimed invention as a whole: “wherein, in a case that at least a first person and a second person are included in the captured image, the selecting comprising selecting a second classification when performing: a first determination that involves determining that track record of a first advertisement which is the advertisement associated with a first classification determined by the determining with respect to an attribute of the first person exceeds a first reference value which is the reference value associated with the first classification, and a second determination that involves determining that track record of a second advertisement which is the advertisement associated with the second classification determined by the determining with respect to an attribute of the second person does not exceed a second reference value which is the reference value associated with the second classification” as recited in claim 1, “wherein, in a case that at least a first person is included in the captured image, the selecting comprising selecting any of the plurality of classifications in accordance with different conditions depending on whether a person other than the first person is included in the captured image when the track record of the advertisement displayed on the display screen associated with a first classification determined by the determining with respect to an attribute of the first person exceeds a first reference value which is the reference value associated with the first classification” as recited in claim 11, or “determining whether a respective display performance of each advertisement of the plurality of advertisements exceeds the respective reference value which corresponds to a respective classification of the plurality of classifications of the plurality of advertisements, wherein the respective display performance is a track record of the advertisement displayed on the display screen; selecting (identifying) the advertisement having the display performance which does not exceed the reference value; and causing the display device to display the advertisement selected (identified) on the display screen, so as to prevent an increase in the display performance of the display screen from being biased toward a specific content data while displaying content data appropriate for the attribute of the viewer,” as recited in claim 15.
Response to Arguments
Applicant's arguments filed 07/29/2026 have been fully considered but they are not persuasive. In the Remarks, Applicant argues:
Argument: “Applicant respectfully submits that, as amended, claim 1 (and claims 11 and 15) no longer recite generic "units," but instead recite a hardware processor device and memory configured to perform the recited operations so as to prevent an increase in the display performance of the display screen from being biased toward specific content data while displaying content data appropriate for the attribute of the viewer.”
In response, the Examiner respectfully disagrees. As explained above, the additional elements are recited at a high level of generality, and are merely used as tools, in their ordinary capacity to perform the abstract idea. “Use of a computer or other machinery in its ordinary capacity for economic or other task (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 (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more” (MPEP 2106.05(f)(2)). There is no indication from the claims or specification that the combination of elements improves the functioning of a computer, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses 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 claims as a whole is more than a drafting effort designed to monopolize the exception. Their collective functions merely provide generic computer implementation
Argument: “As explained in the specification, the claimed invention does not merely automate a pre-existing human practice of choosing which advertisement to show a viewer. Rather, it solves a specific technical problem that arises only in the context of automated digital-signage systems that track display performance over time: prior systems could either (a) prevent display performance from becoming biased toward a particular advertisement, or (b) select an advertisement appropriate to a detected viewer's attribute - but, per paragraph [0005] of the specification, "it has been difficult for information processing devices to both prevent an increase in display performance from being biased toward the specific content data and display content data appropriate for the attribute of a viewer." Specification at [0005]-[0006]. The ordered combination recited in amended claim 1 - in which the hardware processor device, upon determining that the track record (display performance) of the advertisement associated with a first viewer's classification already exceeds its reference value, does not simply default to a generic "next" advertisement, but instead performs a second, viewer-attribute-driven determination with respect to a second person actually present in the captured image, and selects that second person's associated advertisement only if its track record does not exceed its own reference value - is itself the technical mechanism by which this dual objective is achieved, as now expressly recited in the claim. See Specification at [0020]-[0021], [0034]-[0040]. This is precisely the type of improvement to the operation of a technological system - here, an automated, image-driven digital signage/display system - that the courts and the MPEP recognize as integrating a judicial exception into a practical application. The claimed selection unit hardware processor device does not merely "apply" a business rule using a generic computer; it implements a particular technique, grounded in real-time image capture and stored display-performance data, that changes what the connected display device physically outputs, and that does so in a manner the specification identifies as previously unattainable by the information processing devices of the prior art. Cf. MPEP § 2106.04(d)(1) (an improvement in the functioning of a computer or an improvement to other technology or technical field can integrate a judicial exception into a practical application, even where the claim as a whole is evaluated rather than the improvement viewed in isolation).”
In response, the Examiner respectfully disagrees. Unlike in DDR in which the claimed invention solved the business challenge of retaining website visitors that is particular to the Internet, here the claimed invention amounts to merely reciting the performance of a business practice along with the requirement to perform it on the Internet. The claimed invention here is not necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks. “We caution, however, that not all claims purporting to address Internet-centric challenges are eligible for patent” (see p. 22 of DDR Holdings, LLC v. Hotels.com, L.P. (Fed. Cir. 2014)).
Similar to the claimed invention in SAP America Inc. v. InvestPic LLC (Fed. Cir. 2018), the claims here are ineligible because their innovation is an innovation in ineligible subject matter (e.g. improvement to advertising/marketing). The advance here lies entirely in the realm of the abstract idea with no plausible alleged innovation in the non-abstract application realm.
Argument: “The Office Action's Step 2B analysis relies on the proposition that the additional element "obtained by capturing an image" amounts to "well-understood, routine, and conventional activity," as evidenced by several patents and publications cited generally for the proposition that cameras and image capture are conventional. Applicant does not dispute that image capture, in isolation, is conventional. However, the relevant inquiry under Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), and MPEP § 2106.05(d) is not whether each additional element is individually conventional, but whether the specific combination of elements - here, an image-capturing unit feeding a determination unit and selection unit that jointly implement the first-determination/second-determination logic recited in claim 1, which in turn drives a display control unit - was, as an ordered combination, well-understood, routine, and conventional to a person of ordinary skill in the art at the time of filing. Applicant respectfully submits that the record does not support such a finding as to the ordered combination. To the contrary, the Examiner's own Allowable Subject Matter analysis concludes, after "an exhaustive search," that none of Tsuchida, Mongeau, Sharma, Kobayashi, Sukegawa, Saurabh, Bhat, or Yamazaki - each of which discloses some combination of image- based viewer-attribute detection, attribute-based content selection, reference-value-based content selection, or display-performance tracking - discloses or suggests the specific first- determination/second-determination ordered combination recited in claim 1, claim 11, or claim 13. A combination of elements that the prior art of record does not disclose, even in combination across eight references spanning the relevant technical field, cannot simultaneously be "well- understood, routine, and conventional" for purposes of Step 2B. See MPEP § 2106.05(d)(II) (a conclusion that an element or combination of elements is well-understood, routine, and conventional must be supported by a factual determination, and a finding of novelty or non- obviousness over the prior art of record weighs against such a finding). Applicant therefore respectfully submits that the additional elements of claims 1-14, considered as an ordered combination with the recited first-determination/second-determination (and corresponding) limitations, amount to significantly more than any recited abstract idea.”
In response, the Examiner respectfully disagrees. First, the revised 101 rejection above does not take the position that any of the additional elements amount to adding insignificant extra-solution activity in Step 2A Prong Two that would warrant an analysis under Step 2B to determine that the additional element also amounts to simply appending well-understood, routine, and conventional activity in the field. The Examiner notes that revised Step 2A Prong Two overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Their collective functions merely provide generic computer implementation (Step 2B, No).
Second, “[a]lthough the courts often evaluate consideration such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obvious determination…. As made clear by the courts, the ‘novelty’ of any element or step in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possible patentable subject matter” (MPEP 2106.05(I)).
Argument: “The Office Action separately notes that claim 4 "does not recite any other additional
elements" beyond those of claim 1, and that claim 7 recites the additional element "to the display device." Applicant respectfully submits that, because claims 4 and 7 each depend from and incorporate all limitations of amended claim 1, the arguments presented above with respect to claim 1 - including the practical-application and significantly-more arguments based on the first- determination/second-determination ordered combination and the technical-solution language now expressly recited in claim 1 - apply with equal force to claims 4 and 7, and that the additional narrowing limitations of claims 4 (classification based on age etc) and 7 (ordering of persons by proximity to the display device) further reinforce the technical, image-and-display- driven character of the claimed selection process.”
In response, the Examiner respectfully disagrees. Claim 4 does not recite any other additional elements other than the additional elements recited in claim 1. Claim 4 adds further limitations that fall within the abstract idea in Step 2A Prong One. Claim 7 adds the additional element “to the display” to the additional elements of claim 1. However, claim 7 also does not integrate the judicial exception into a practical application or amount to significantly more because the additional element amounts to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Argument: “ New Independent Claim 15 and New Dependent Claims 16-21 Applicant has added new independent claim 15, directed to an information processing system that physically comprises a display device, an image capturing device, a memory storing a set of processor-executable instructions, and a hardware processor device configured by those instructions to perform the recited operations, culminating in causing the display device to display a particular advertisement selected by the hardware processor device so as to prevent an increase in the display performance of the display screen from being biased toward specific content data while displaying content data appropriate for the attribute of the viewer. Unlike claims 1 and 11, which select an advertisement based on the stored display-performance track record of that advertisement, claim 15 decides each reference value from the proportion of previously-imaged viewers falling into each classification, providing a further, distinct technical mechanism for achieving the same technical objective identified in the specification at paragraph [0005]. See Specification at [0005]-[0006], [0020]-[0021], [0056], [0074]-[0084]. For at least the reasons discussed above with respect to claims 1 and 11, and for the further reason that claim 15 physically recites the display device, image capturing device, memory, and hardware processor device as elements of a single claimed system whose output (the advertisement displayed) is a direct, dynamic function of the images that system itself captures - reflecting a particular machine that is itself improved by the claimed operations - Applicant respectfully submits that claim 15 integrates any recited judicial exception into a practical application and, even if it did not, recites significantly more than the judicial exception under Step 2B, and is patent-eligible under 35 U.S.C. § 101.”
In response, the Examiner respectfully disagrees. Similar to claim 1, claim 15 recites a certain method of organizing human activity, mental process, and mathematical concepts in Step 2A Prong One, and the additional elements do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Their collective functions merely provide generic computer implementation
Argument: “Claims 16-20 depend from claim 15; claim 21 depends from claim 1. A brief summary of how each bears on the § 101 analysis is provided below; full support for each claim can be found in the specification passages identified. Claim 16: Recites that deciding the respective reference value comprises clamping each reference value within a common upper and lower limit range, and specifically setting the reference value based on the amount by which the calculated proportion for a classification falls outside that range (Specification at [0056], [0074]-[0084]). This claim recites a specific, bounded algorithm - implemented by the recited hardware processor device and memory - for deriving the reference values used to drive the display device, which is the type of 'particular, claimed solution to a problem' (as opposed to merely the idea of a solution) that supports eligibility under Step 2A Prong Two and Step 2B. Claim 17: Recites that the hardware processor device, based on the image captured by the image capturing device, determines the actual physical distances of two or more persons in the image capturing region from the display device and orders those persons accordingly before performing the classification determination (Specification at [0034], [0095]). This ties the claimed determination directly to spatial/positional information derived from the image capturing device's hardware-a real-world, sensor-derived input-rather than to data that could be generated purely mentally, reinforcing that the claim is rooted in the operation of the image capturing device and display device as a physical system. Claim 18: Narrows the plurality of classifications to those based on age and/or sex (Specification at [0030]-[0031]). While this limitation alone is not dispositive of eligibility, it further specifies the particular attribute-classification scheme that drives the selection-and- display operations of claim 15, and underscores that the claimed classifications are tied to viewer attributes derived from captured images rather than to abstract categories existing independent of the image capturing device's output. Claim 19: Recites that the hardware processor device decides each reference value based on a count, over a prior period, of determinations that an attribute derived from the image capturing device's captured images fell under each classification, and stores the decided reference values in the memory (Specification at [0056], [0074]-[0084]). This claim recites a specific algorithm implemented by the recited hardware processor device and memory-for deriving the very reference values used to drive the display device. Claim 20: Recites that the image capturing device is configured integrally with the display device, positioned on the surface of the display device on which the display screen is provided, such that the image capturing region includes the position at which the display screen is visible (Specification at [0022]-[0024]). This claim recites a particular physical arrangement of hardware-an integrated camera-and-display unit-that is itself a concrete technological configuration, further supporting the conclusion that claim 15 (and its dependents) are directed to a particular machine and its improved operation, not to an abstract idea implemented on unspecified generic computer components. Claim 21: Recites that the hardware processor device repeatedly performs the acquiring, determining, selecting, and display-causing operations such that the advertisement displayed on the display screen is updated based on currently captured images, while image capture continues (Specification at [0085]-[0093]). This claim makes explicit the real-time, closed-loop relationship between the image capturing and display functions of claim 1-the displayed output is continuously and automatically updated in response to the current contents of the image capturing region-which is a hallmark of a claim directed to an improvement in how a display system operates, rather than to the underlying idea of selecting content based on a viewer's attributes.”
In response, the Examiner respectfully disagrees. As explained above, claims 16 and 18 do not recite any other additional elements other than the additional elements recited in claim 15. The limitations of claims 16 and 18 fall within the abstract idea in Step 2A Prong One. Therefore, for the same reasons explained above with respect to claim 15, claim 16 also does not integrate the judicial exception into a practical application or amount to significantly more.
With regard to claims 17 and 19-21, the additional elements are recited at a high level of generality, and are merely used as tools, in their ordinary capacity to perform the abstract idea.
Unlike in McRO in which the claimed invention allowed computers to produce accurate and realistic lip synchronization and facial expression in animated characters that previously could only be performed by human animators which provided an improvement to an existing technological process, here looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Their collective functions merely provide generic computer implementation. The specification fails to provide a teaching about how the claimed invention improves a computer or other technology, nor do the claims recite a particular solution to a problem or a particular way to achieve a desired outcome defined by the claimed invention. The alleged improvements are entirely in the realm of the abstract idea (i.e., improvements to advertising/marketing). The claims merely use the computer as a tool instead of an improved computer capability.
Therefore, the claims do not integrate the judicial exception into a practical application, nor do they amount to significantly more.
Conclusion
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 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.
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/SAM REFAI/Primary Examiner, Art Unit 3621
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