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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12265982. Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to record exposure measurements that determine ad exposure, collection of IP, and a map to devices tethered to a same IP that are connected to televisions or over the devices linked to video games.
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 abstract idea without significantly more. The claim(s) recite(s) the following limitations that are considered to be abstract ideas:
Claims 1 and 11
an instance of a request for a video game from an online gaming content server;
transmit, a signal from an instrument in the video game, wherein the signal triggers at an instance that one or more events occur within the video game;
receive, b an advertisement request for displaying advertising via a connected television or an over-the-top device linked to display the video game;
transmit, an advertisement bid response to the advertisement bid request; and
generate an advertising exposure file to record advertising exposure as advertising is displayed via the connected television or the over-the-top device linked to the video game, the exposure file including collection of an IP address relating to connected television or the over-the-top device, and a map to a plurality of devices tethered to the IP address.
The limitations of independent claims 1 and 11 as detailed above, as drafted, falls within “Certain Methods of Organizing Human Activity” specifically commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) and/or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). The applicant’s claims are directed to advertisement bidding and recording exposure with a video game and connected devices. Accordingly, the claims recite an abstract idea
This judicial exception is not integrated into a practical application. In particular the claims recite the additional elements of:
processor
memory
computing device
OTT device
television
server
non-transitory storage medium
computer
The aforementioned additional generic computing elements perform the steps of the claims at a high level of generality (i.e. As a generic medium performing generic computer function of detecting, transmitting, receiving, generating) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
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 to any other technology, or technical field. Their collective functions merely provide generic computer implementation.
Thus, taken individually and in combination, the additional elements do not amount to
significantly more than the above-identified judicial exception (the abstract idea).
The dependent claims 2-10 and 12 -20 appear to merely further limit the abstract and as such, the analysis of dependent claims2-10 and 12 -20 results in the claims “reciting” an abstract idea. The claims the claims do not recite additional elements that integrate the exception into a practical application the additional elements do not amount to an inventive concept (significantly more) other than the above-identified judicial exception (the abstract idea).
Thus, based on the detailed analysis above, claims 1-20 are not patent eligible.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chu. (US 2006/0085261) in view of Moonka et al. (2008/0066107) in view of Ivins (US 2014/0237498)
Claim 1, 11: Chu discloses a method, comprising: in a computing device comprising
a processor and a memory storing executable code with instructions causing the processor to execute one or more control actions via an interface connection to: ([0197], processor)
detect, by the processor, an instance of a request for a video game from an online gaming content server; ([0077], it requests the advertising assets that represent the advertisement. The content of the messages passed between the client and game server may be in one embodiment an XML message containing ad campaign listing metadata)
transmit, by the processor, a signal from an instrument in the video game, wherein the signal triggers at an instance that one or more events occur within the video game; [0043], For example, a player must have accumulated a certain amount of points or playing time before being allowed to view an advertisement for a more sophisticated weapon to be used within the game or a player must 21 years or older to be allowed to view the advertisement that contains a free coupon for a six pack of beer. Such requirements are enforced via encrypted keys or other secure methods to check a users qualification before displaying of certain advertisements)
receive, by the processor, an advertisement request for displaying advertising via a connected television or an over-the-top device linked to display the video game; [0043 and 0044] but does not explicitly disclose
transmit, by the processor, an advertisement bid response to the advertisement bid request; and generate an advertising exposure file to record advertising exposure as advertising is displayed via the connected television or the over-the-top device linked to the video game, the exposure file including collection of an IP address relating to connected television or the over-the-top device, and a map to a plurality of devices tethered to the IP address. However Moonka discloses transmit, by the processor, an advertisement bid response to the advertisement bid request; ([0014, 0062] providing advertisement based on bids)
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Chu to include s transmit, by the processor, an advertisement bid response to the advertisement bid request, in order to determine which advertisements to display. Chu and Moonka do not explicitly disclose generate an advertising exposure file to record advertising exposure as advertising is displayed via the connected television or the over-the-top device linked to the video game, the exposure file including collection of an IP address relating to connected television or the over-the-top device, and a map to a plurality of devices tethered to the IP address. However Ivins discloses generate an advertising exposure file to record advertising exposure as advertising is displayed via the connected television or the over-the-top device linked to the video game, the exposure file including collection of an IP address relating to connected television or the over-the-top device, and a map to a plurality of devices tethered to the IP address. ( [0005]. The first device may comprise a set-top box or an associated display device, and the identifier of the first device may comprise a MAC identifier. A message including an identifier that identifies a second device and indicates that the second device accessed the second content item may be received from the second device, which may be of the second type. The second device may be configured to run a web browser application, and the identifier of the second device may comprise an IP address. Based on the received messages, a report indicating that the first content item and the second content item were accessed may be generated.)
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Chu and Mooka discloses to include generate an advertising exposure file to record advertising exposure as advertising is displayed via the connected television or the over-the-top device linked to the video game, the exposure file including collection of an IP address relating to connected television or the over-the-top device, and a map to a plurality of devices tethered to the IP address in order to track and monetize advertising.
Claim 2, 12. Chu discloses the method of claim 1, wherein said signal is generated in a first instance that a user arrives on a landing page of a website hosting the video game and in a second instance that the user downloads the video game from the website hosting the video game. [0047]
Claim 3, 13: Chu discloses the method of claim 2, wherein when the user navigates a web page that is supplied by the website hosting the video game, wherein one or more requests are transmitted to the website hosting the video game for content. [0080]
Claims 4, 14: Chu discloses the method of claim 3, wherein the content includes one or more executable tags that are loaded via a web browser on the connected television or the over-the-top device used by the user, the executable tags notifying an advertisement server than an impression requires filling with the advertising. [0081]
Claims 5, 15: Chu discloses the method of claim 4, wherein the impression is submitted to a real-time bidding market bidding platform, via which one or more advertiser platforms provide one or more bids to fill the impression with the advertising. [0081 and 0082]
Claims 6, 16: Chu discloses the method of claim 5, wherein the real-time bidding market bidding platform conducts a market floor auction event for placement of the advertising via the connected television or the over-the-top device linked to display the video game, wherein the real-time bidding market platform generates an event with information about a context related to the market floor auction event. [0070]
Claims 7, 17: Chu discloses the method of claim 2, wherein an action by the user that downloads the video game links the connected television or the over-the-top device to receive the advertising in the video game. [0079]
Claims 8, 18: Chu discloses the method of claim 2, wherein an action by the user to activate the video game triggers a call signal that sends the IP address, wherein the call signal is configured to trigger via the connected television or the over-the-top device of the user in the instance that the video game is activated, to initiate a linking operation when a defined event occurs and further sets a trigger against the event that specifies different actions that may be achieved by the user during in-game pursuits and an in-game purchase by the user. [0056]
Claims 9, 19: Chu discloses the method of claim 2, wherein the signal is also generated in another instance when one or more defined events occur in the video game as the user is playing it. [0043]
Claims 10, 20: Chu discloses the method of claim 9, wherein an operation is further configured to track the signal generated when the one or more defined events occur in the game as the user is playing it. [0046]
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARNELL A POUNCIL whose telephone number is (571)270-3509. The examiner can normally be reached Monday - Friday 10:00 - 6:00.
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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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/D.A.P/Examiner, Art Unit 3622
/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622
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