DETAILED ACTION
This communication is in response to application no. 19/205183 filed 12 May 2025.
Claims 1-20 are currently pending and have been examined.
Claims 1-20 are rejected as shown in this 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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“user interface module” “configured to receive” in claims 1 and 11;
“DA module” “configured to receive … search …, and provide” in claims 1 and 11;
“AI module” “configured to receive … generate …, and provide” in claims 1 and 11;
“DA module” “configured to provide” in claims 1 and 11;
“chatbot configured to provide” in claims 2 and 12;
“security module configured to verify” in claims 3 and 13;
“knowledge base” “configured to retrieve” in claims 5 and 15;
“expert module” “configured to retrieve” in claims 5 and 15;
“ranker configured to receive and rank” in claims 6 and 16;
“posting module configured to post” in claims 8 and 18;
“posting module” “configured to post” in claims 9 and 19;
“domain parking module configured to render” in claims 10 and 20;
“posting module” “configured to post” in claims 10 and 20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. See the rejection of these claims in the Claim Rejections – 35 USC § 112 section below.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f).
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim limitations identified in the Claim Interpretation section above invoke 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. No association between the structure and the function can be found in the specification. Additionally, the computer-implemented claim limitations, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 112(b). See MPEP 2181(II)(B). The specification is devoid of any algorithms for performing the recited functions. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b).
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f);
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1
Claims 1-10 recite a system comprising a memory and a processor which is considered a machine or manufacture. Claims 11-20 recite a method which is considered a process.
Step 2A-Prong One
(Claims 1 and 11) These claims recite the concept of providing, via AI, an advertising suggestion to a user upon the user inputting a domain name (see, for example, “the user interface module is configured to receive the domain name from the user; the DA module is configured to receive the domain name from the user interface module, search the cache for the domain name and the domain advertising suggestion based on the domain name, and provide the user interface module the domain advertising suggestion based on the domain name when the cache includes the domain name; the Al module is configured to receive the domain name from the DA module, generate the domain advertising suggestion based on the domain name, and provide the domain advertising suggestion to the DA module; the cache is configured to receive the domain name from the user interface module, store the domain name, and receive and store the domain advertising suggestion when generated by the Al module; and the DA module is further configured to provide the user interface module the domain advertising suggestion based on the domain name when generated by the Al module” in claim 1; similar limitation are found in claim 11). This concept falls into the certain methods of organizing human activity including advertising activities. Thus, these claims recite an abstract idea.
(Claims 2-10 and 12-20) The dependent claims further limit the abstract idea found in the independent claims by, for example, providing/posting the ad suggestion to a communication channel/domain parking website, verifying the user, ranking AI output, etc. These limitations do not take the claims out of the identified abstract idea grouping as these claims continue to recite advertising activities. Thus, the dependent claims recite an abstract idea.
Step 2A-Prong Two
This judicial exception is not integrated into a practical application. The claims recite the additional element of a system comprising a processor and a memory (found in claims 1-10) and a processor and a memory (found in claims 11-20) and includes no more than mere instructions to apply the exception using a generic computer component. The system or processor and memory does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed previously with respect to Step 2A-Prong Two, the additional element in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. See MPEP 2106.05(f). The claims do not provide an inventive concept (significantly more than the abstract idea). The claims are ineligible.
Conclusion
The claims are not rejected under 35 USC § 102/103. The closest prior art found by Examiner includes US 2009/0265415 (“Harry”) and US 2010/0223143 (“Lee”). Lee was cited by Applicant in an IDS. Harry discloses in Fig. 3 and ¶ 0012 receiving a domain name and optimizing advertisements to be “parked” on the domain. Harry does not utilize a cache check and does not utilize AI as recited in the claims. Harry mentions AI in ¶ 0052 to recognize and categorize keywords, but does not utilize AI to suggest advertisements as claimed. Similarly, Lee receives a domain name and generates advertisements in response. However, Lee also does not utilize a cache check and does not utilize AI as recited in the claims.
Also relevant and considered pertinent to applicant’s invention:
US 2008/0033822 (“Merdinger”): Merdinger discloses recommending advertisements for parked domains but does not disclose the cache check and AI and recited in the claims.
US 2017/0032428 (“Nicks”): Nicks discloses recommending advertisements for parked domains but does not disclose the cache check and AI and recited in the claims.
US 2024/0428345 (“Sami”): Sami discloses automatically generating, scheduling, posting, and recycling social media posts, the method comprising: requesting an artificial intelligence (AI) engine for a plurality of prompts to create a social media post on a social media platform; selecting one prompt in the plurality of prompts returned by the AI engine; requesting the AI engine for social media post content based on the selected prompt; selecting a textual content and a non-textual content; combining the selected textual content and the selected non-textual content according to pre-configured settings to create one social media post; repeating selecting the textual content and the non-textual content and combining, to create a plurality of social media posts; generating a schedule for each one in the plurality of social media posts; and automatically posting each one in the plurality of social media posts on the social media platform according to the schedule.
US 2025/0165509 (“Yoneda”): Yoneda discloses determining an advertisement based on user input received at a chatbot.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEREDITH A LONG whose telephone number is (571)272-3196. The examiner can normally be reached Mon - Fri 9:30 - 6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached on 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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/MEREDITH A LONG/Primary Examiner, Art Unit 3622
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