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
The preliminary amendment filed on June 13, 2025, cancelled claim 20. Claims 1-5, 7, 9-11, and 13-19 were amended and new claim 21 was added. Thus, the currently pending claims addressed below are claims 1-19 and 21.
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 1-19 and 21 are directed to a method, an apparatus, and a computer program product which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 1-19 and 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim(s) 1, 15, and 21 recite(s) the following abstract idea: (Examiner note: The server has been included as part of the abstract idea because the server is outside the scope of the applicant’s invention and, as such, the server cannot be considered an “additional element” of the claimed invention.)
generating a first advertising request;
determining, based on a suppression strategy, whether the first advertising request is suppressed;
obtaining, when the first advertising request is suppressed, first advertising content locally based on the first advertising request; or obtaining, when the first advertising request is suppressed, first advertising information locally based on the first advertising request, and obtaining first advertising content based on the first advertising information; and
displaying, when the first advertising request is suppressed, the first advertising content;
sending, when the first advertising request is not suppressed, the first advertising request to a server, and
obtaining when the first advertising request is not suppressed, an advertising response from the server, wherein the advertising response comprises second advertising information; and
displaying, when the first advertising request is not suppressed and based on the advertising response, second advertising content corresponding to the second advertising information.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising marketing and sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of a device with at least one processor and a memory executing software instructions (e.g., one or more applications with integrated software development kits) which is merely a general-purpose computer with generic computer upon which the abstract idea is merely being applied.
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, storing, communicating (e.g., transmitting and receiving), and displaying data and, as such, are insignificant extra-solution activities (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
obtaining, when the first advertising request is suppressed, first advertising content locally based on the first advertising request; or obtaining, when the first advertising content is suppressed, first advertising information locally based on the first advertising request, and obtaining first advertising content based on the first advertising information (receiving data); and
displaying, when the first advertising request is suppressed, the first advertising content (displaying data);
sending, when the first advertising request is not suppressed, the first advertising request to a server (transmitting data)
obtaining, when the first advertising request is not suppressed, an advertising response from the server, wherein the advertising response comprises second advertising information (receiving data); and
displaying, when the first advertising request is not suppressed and based on the advertising response, second advertising content corresponding to the second advertising information. (displaying data).
The additional technical elements above are recited at a high-level of generality (i.e. as a generic processor performing a generic computer function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using a device with at least one processor and a memory executing software instructions (e.g., one or more applications with integrated software development kits) to perform the claimed functions amounts to no more than mere instructions to apply the exception using a generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires a general-purpose computer (as evidenced from paragraphs 3-4. 88-92, 170, 312-315, and 317-318, as well as, figure 2 and figure 5 of the applicant’s disclosure); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility. Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, displaying, storing, and/or transmitting data (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
obtaining, when the first advertising request is suppressed, first advertising content locally based on the first advertising request; or obtaining, when the first advertising content is suppressed, first advertising information locally based on the first advertising request, and obtaining first advertising content based on the first advertising information (receiving data); and
displaying, when the first advertising request is suppressed, the first advertising content (displaying data);
sending, when the first advertising request is not suppressed, the first advertising request to a server (transmitting data)
obtaining, when the first advertising request is not suppressed, an advertising response from the server, wherein the advertising response comprises second advertising information (receiving data); and
displaying, when the first advertising request is not suppressed and based on the advertising response, second advertising content corresponding to the second advertising information. (displaying data).
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e. “PEG” Step 2B=No).
The dependent claims 2-14 and 16-19 appear to merely further limit the abstract idea by further limiting the first advertising request and further limiting the determining of whether the first advertising request is suppressed both of which are considered part of the abstract idea (Claims 2 and 16); introduce the new additional elements of a device with one or more applications with integrated SDKs which have already been addressed above, further limiting the generating of the first advertising request, and further limiting the determining of whether the first advertising request is suppressed both of which are considered part of the abstract idea (Claims 3 and 17); further limiting the obtaining of the first advertising content based on the first advertising request when the first advertising request is suppressed which is considered part of the abstract idea (Claims 4 and 18); further limiting the sending of the first advertising request to the server and the obtaining of the advertising response from the server, when the first advertising request is not suppressed which is considered part of the abstract idea (Claims 5 and 19); further limiting the first advertising information and the second advertising information which are both considered part of the abstract idea (Claim 6); adding an additional step with regards to where the invention received the suppression strategy; an additional step with regards to generating the first advertising request; and further limiting the suppression strategy all of which are considered part of the abstract idea (Claim 7-8); further limiting the suppression strategy and the determining of whether the first advertising request is suppressed, both of which are considered part of the abstract idea (Claim 9); further limiting the obtaining of the first advertising content locally based on the first advertising request which is considered part of the abstract idea (Claim 10); further limiting the advertising response, the at least one piece of advertising information, and adding an additional step of displaying the second advertising content, all of which are considered part of the abstract idea (Claim 11); further limiting the advertising response, the at least one piece of advertising information, and adding the additional steps of obtaining second advertising content and second parameter information, obtaining third advertising content and third parameter information, storing the second advertising content, the second parameter information, the third advertising content, and the third parameter information, as well as obtaining third advertising content, all of which are considered part of the abstract idea (Claim 12); further limiting the first parameter and/or the second parameter which are both considered part of the abstract idea (Claims 13-14), and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No)..
Thus, based on the detailed analysis above, claims 1-19 and 21 are not patent eligible.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per the “Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications” issued on January 21, 2011 and MPEP 2161.01, the first paragraph of § 112 contains a written description requirement that is separate and distinct from the enablement requirement. To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. The written description requirement of § 112, ¶ 1 applies to all claims including original claims that are part of the disclosure as filed. Claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function.
Claim 7, both as originally filed and currently amended require “obtaining the suppression strategy from the server after generating the first advertisement”. Claim 7 depends from claim 1. According the claim 1, both as originally filed and currently amended, a first advertisement request is generated and a determination is made regarding whether or not the first advertising request is suppressed. According to claim 1, the first advertising request is only sent to the server when the results of the determination is that the first advertising request is not suppress. Thus, claim 7 requires that the client device generate the first advertising request; the server to somehow know that the first advertising request has been generated by the client without ever receiving the first advertising request; the server to generate or select a suppression strategy for the first advertising request which it has never received; the server transmit the suppression strategy regarding the first advertising request to the client device; the client device make a determination based on the suppression strategy; and if the result of the determination is that the first advertising request is not suppressed, transmit the first advertising request to the server. The applicant’s specification does not describe the invention in sufficient detail to enable one of ordinary skill in the art to recognize that the inventor or joint-inventor had possession of the claimed invention.
These limitations are functional limitations describing a genus embodiment of the client device obtaining the suppression strategy from the server after generating the first advertising request. The examiner has reviewed the applicant’s specification and has not been able to find a single species of the applicant’s invention performing the steps required by claim 7, given the limitation it inherits from claim 1, much less a sufficient number of species to prove the applicant has possession of the claimed genus.
The closest support for “obtaining the suppression strategy from the server after generating the first advertising request” is found in paragraphs 17-18 and 152-159 of the applicant’s specification. In paragraphs 17-18 and 157, it is disclosed that after generating the first advertising request, the terminal transmits the first advertising request to the advertising server, the server select a suppression strategy based on information contained in first advertising request, and the server transmits the suppression strategy to the client device. While these paragraphs support the server providing the suppression strategy to the client device after the generating of the first advertising request, they also require the first advertising request be sent to the server, before determining the suppression strategy. As such, they cannot be said to disclose a species of what is being claimed in claim 7. Paragraphs 152-155 and 158, disclose the server delivering the suppression strategy to the terminal a single time or on a periodic basis. However, these paragraphs do not support that it is delivered after the terminal generates the first advertising request. As such, they cannot be said to disclose a species of what is being claimed in claim 7. Perhaps the closest support is found in Paragraph 156 and 159 where it is disclosed that “when the terminal initiates an advertising request”, it sends a suppression strategy obtaining request to the advertising server, the server then returns the suppression strategy in response to the suppression strategy obtaining request, then the terminal processing a generated advertising request according to the suppression strategy. These paragraphs support the client device initiate the generating of the first advertising request by sending an suppression strategy obtaining request to the server, such that a suppression strategy will be obtained from the server before it needs to process the generated advertising request While it might be possible that the suppression strategy will be received from the server after the first advertising request is generated, it is also possible that the suppression strategy will arrive before the first advertising request is done being generated. As such, they cannot be said to disclose a species of what is being claimed in claim 7 because the applicant’s invention has no way to ensure that the suppression strategy is received after the first advertising request is generated. Furthermore, even if the suppression strategy would happen to be received from the server after the first advertising request is generated, this would be a single species of an instance when this might occur, and would require that the client device first send a suppression strategy obtaining request to the server. This single species cannot be said to prove that the applicant’s specification has support for the genus of all possible ways in which the client device might obtain a suppression strategy from the server after generating the first advertising request. Therefore, the specification does not describe the invention in sufficient detail to enable one of ordinary skill in the art to recognize that the inventor invented what is claimed in claim 7. The test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. A description that merely renders the invention obvious does not satisfy the requirement, Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir. 1997). To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. The written description requirement of § 112, ¶ 1 applies to all claims including original claims that are part of the disclosure as filed. Claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus. The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Computer-implemented inventions are often disclosed and claimed in terms of their functionality. This is because writing computer programming code for software to perform specific functions is normally within the skill of the art once those functions have been adequately disclosed. Nevertheless, for computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into both the sufficiency of the disclosed hardware as well as the disclosed software due to the interrelationship and interdependence of computer hardware and software. When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. Specifically, if one skilled in the art would know how to program the disclosed computer to perform the necessary steps described in the specification to achieve the claimed function and the inventor was in possession of that knowledge, the written description requirement would be satisfied. If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under § 112, ¶ 1 for lack of written description must be made. In the instant case, the claimed invention fails to satisfy the written description requirement because the invention is a genus claim and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function because genus claims that use functional language to define the boundaries of the claimed genus. The claims simply claim a desired result, and do so without describing species that achieve that result. There is no indication in the specification that demonstrates that the applicant invented species sufficient to support a claim to the functionally-defined genus. There is no disclosure in the applicant’s specification of the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. The examiner has neither been unable to find support for the claimed genus nor a single supported species of the claimed genus. Thus, an examination of the specification reveals no complete species of “obtaining the suppression strategy from the server after generating the first advertisement” that would allow one of ordinary skill in the art to program the disclosed computer to perform the necessary steps described in the specification to achieve the claimed function or that the inventor was in possession of that knowledge. There are no specific examples of how the claimed genus described using functional language would be used to obtain the desired result given a single species. There are no algorithms or flow charts that describe the specific details necessary for implementation of the claimed invention using a single species of the claimed genus. Hence, it is clear that the specification fails to satisfy the written description because it does not sufficiently identify how the invention achieves the claimed functions. An adequate written description of a claimed genus requires more than the generic statement of the inventions boundaries as presented in the applicant’s original claim 7. As such, claim 7 is rejected for failing to comply with the written description requirement.
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.
Claim 12 is 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 12, depends from claim 1 and recites: “wherein the advertising response comprises at least one piece of advertising information, the at least one piece of advertising information comprises the second advertising information and third advertising information”. One of ordinary skill in the art would not be able to determine the intended metes and bounds of this limitation.
One of ordinary skill in the art would interpret “wherein the advertising response comprises at least one piece of advertising information”, as if it recited “wherein the advertising response comprises one or more pieces of advertising information” and conclude that the claim is broad enough to encompass “the advertising response comprising one piece of advertising information. Next, one of ordinary skill in the art would realize that the claimed “the advertising response” has antecedent basis to the previously recited “an advertising response from the server” of claim 1. The previously claimed “an advertising response from the server” of claim 1, “comprises second advertising information”. Thus, the claimed “at least one piece of advertising information” is broad enough to encompass only the “second advertising information” recited in claim 1. Up to this point the claim is not indefinite.
The claim become indefinite with the recitation of “the at least one piece of advertising information comprises the second advertising information and third advertising information”. It is not possible for one piece of information to be two pieces of information. Thus, one of ordinary skill in the art would realize that the intended metes and bounds of the claim cannot be interpreted in the manner claimed. As such, there are two possible ways in which one of ordinary skill in the art might interpret the metes and bounds of this limitation. One ordinary skill in the art would realize that, while the claimed “an advertising response” in claim 1 is singular, said response could include more than one piece of information. One of ordinary skill in the art would further realize that the limitation recites “comprising” “second advertising information” and not “consisting of”. As such, there are at least two possible ways in which one of ordinary skill in the art might interpret the metes and bounds of the identified limitation of claim 12. First, the applicant may have intended the limitation to recite “The method according to claim 1, wherein the advertising response further comprises third advertising information”. This interpretation would require both types of information to be present within the metes and bounds of claim 1. Second, the applicant may have intended the limitation to recite “The method according to claim 1, wherein the advertising response comprises at least one of the second advertising information and a third advertising information”. Since, claim 1 already requires that this be the second advertising information, the claim limitation would not be indefinite. Instead, reading claim 12, in light of claim 1, would merely require that “the second advertising information” be the “at least one”. Thus, the limitation would be interpreted as if it recited “The method according to claim 1, wherein the advertising response can optionally further include a third advertising information. This interpretation would mean that the scope of the claims would not be limited by the third advertising information and any step the might be performed if said third advertising information happened to be in “the advertising response”. Given, that the metes and bounds of the claim, depending on how it is interpreted, result in claim limitations that are different scope, claim 12 is indefinite for failing particularly point out and distinctly claim the subject matter which the inventor regards as the invention.
For the purpose of prosecuting the claims, the examiner is going to interpret the claim as if the applicant intended that “the advertising response comprises at least one piece of advertising information” as initially indicated in the claim. Since, the “at least one piece of advertising information” is required to be “the second advertising information” recited in claim 12, the examiner is interpreting the “third advertising information to be optional and, thus, not limiting the scope of the invention.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 8-10, 12-16, and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morten et. al. (PGPUB 2018/0181969).
Claims 1, 15, and 21: Morten discloses a method, an apparatus, and a non-transitory computer-readable storage medium comprising:
a memory configured to store instructions at least one processor; and one or more processors memories coupled to the memory at least one processor and configured to execute the instructions to cause the apparatus storing programming instructions for execution by the at least one processor to perform the steps of:
generating a first advertising request (Paragraph 54: content player communicates requests for content and/or advertisements through a content plug-in);
determining, based on a suppression strategy, whether the first advertising request is suppressed (Paragraph 50: client determines whether or not a network connection is absent; determining that there is an active network connection, but a marker or other identifier indicates that a locally stored advertisement is to be used; Paragraph 54: the content plug-in is configured to manage client-based advertisement insertions and the tracking of advertisement consumption whether online or offline);
when the first advertising request is suppressed: (Paragraph 50: if a network connection is absent and/or if a network connection is present but a marker or other identifier indicates that a locally stored advertisement is to be used)
obtaining first advertising content locally based on the first advertising request; or obtaining first advertising information locally based on the first advertising request, and obtaining first advertising content based on the first advertising information, the first advertising information comprises a download address of the first advertising content (Paragraph 50: advertisement to be viewed is available local to the client device through secure offline storage; Figure 4 and Paragraphs 67-68: as advertising markers are read, the client chooses the advertisement based on the marker and targeting heuristics from the consumer profile and/or other advertisement metadata and inserts the advertisement);
when the first advertising request is not suppressed (Paragraph 50: if there is an active network connection and no marker or other identifier indicating that a locally stored advertisement is to be used):
sending the first advertising request to a server (Figure 3 and Paragraph 36: the ad content request is sent to the Ad Streamer) and
obtaining an advertising response from the server, wherein the advertising response comprises second advertising information (Figure 3 and Paragraph 36: the Ad Streamer provides the advertisement to the client device); and
displaying, based on the advertising response, second advertising content corresponding to the second advertising information (Paragraph 65: displaying the received advertisement).
Claims 2 and 16: Morten discloses the method according to claim 1 and the apparatus according to claim 15, wherein:
the first advertising request carries at least one piece of first parameter information (Paragraphs 65 and 68: the choice of the advertisement may be based on targeting heuristics from the consumer profile and/or other advertisement metadata; Paragraph 69: an update in the consumer's target profile may occur, as well as sending of advertisement update requests and receiving advertisement metadata updates based, in part, on the profile updates may occur; Paragraph 49: information describing the various capabilities of the client device, such as in a header, of the request); and
determining, based on the suppression strategy, whether the first advertising request is suppressed comprises: determining based on the at least one piece of first parameter information carried in the first advertising request, a suppression strategy corresponding to the first advertising request; and determining based on the suppression strategy corresponding to the first advertising request, whether the first advertising request is suppressed. (Paragraph 50: client determines whether or not a network connection is absent; determining that there is an active network connection, but a marker or other identifier indicates that a locally stored advertisement is to be used; Paragraph 54: the content plug-in is configured to manage client-based advertisement insertions and the tracking of advertisement consumption whether online or offline)
Claim 8: Morten discloses the method according to claim 1, wherein the method further comprises: obtaining the suppression strategy from the server before generating the first advertising request. (Paragraphs 18 and 26: the received content includes the marker; Paragraphs 35 and 38: the server places the markers in the content)
Claim 9: Morten discloses the method according to claim 1,
wherein the suppression strategy comprises a suppression condition and a suppression method (Paragraph 50: if a network connection is absent and/or if a network connection is present but a marker or other identifier indicates that a locally stored advertisement is to be used. The examiner notes that the suppression condition is: if no network access; or if active network access and marker indicates local advertisement. The suppression method is obtaining advertisement locally instead of from the server); and
determining, based on the suppression strategy, whether the first advertising request is suppressed comprises: when the first advertising request meets the suppression condition of the suppression strategy corresponding to the first advertising request, determining that the first advertising request is suppressed, and suppressing a second advertising request according to the suppression method of the suppression strategy corresponding to the first advertising request, wherein the second advertising request is an advertising request generated after the first advertising request. (Paragraph 50: if a network connection is absent and/or if a network connection is present but a marker or other identifier indicates that a locally stored advertisement is to be used; advertisement to be viewed is available local to the client device through secure offline storage; Figure 4 and Paragraphs 67-68: as advertising markers are read, and the client chooses the advertisement based on the marker and targeting heuristics from the consumer profile and/or other advertisement metadata and inserts the advertisement; Paragraph 65: while a first advertisement might be selected for viewing during a particular location identified by an advertising marker, a replay of the content, or a subsequent playing of the content at some later time could result in a second advertisement being selected for viewing during the same particular location identified by the advertising marker. Thus, in one embodiment, a user might be exposed to different advertisements, or the same advertisements, by playing the same content repetitively; Thus, when the user replays the content at a later time and reaches the same location in the content that has the same marker, the same suppression strategy is used for the second advertisement request that replaying the content generates)
Claim 10: Morten discloses the method according to claim 1, wherein: obtaining the first advertising content locally based on the first advertising request comprises: obtaining at least one piece of first parameter information from the first advertising request; and obtaining the first advertising content from the at least one piece of locally cached advertising content based on the first parameter information; or obtaining the first advertising information locally based on the first advertising request and obtaining the first advertising content based on the first advertising information comprises: obtaining the at least one piece of first parameter information from the first advertising request; obtaining the first advertising information from the at least one piece of locally cached advertising information based on the first parameter information; and obtaining the first advertising content based on the first advertising information. (Paragraph 50: advertisement to be viewed is available local to the client device through secure offline storage; Figure 4 and Paragraphs 67-68: as advertising markers are read, the client chooses the advertisement based on the marker and targeting heuristics from the consumer profile and/or other advertisement metadata and inserts the advertisement)
Claim 12: Morten discloses the method according to claim 1, wherein the advertising response comprises at least one piece of advertising information, the at least one piece of advertising information comprises the second advertising information, wherein the advertising response could optionally include third advertising information, and the method further comprises: obtaining, based on the second advertising information, the second advertising content and second parameter information associated with the second advertising content; obtaining, based on the third advertising information, third advertising content and third parameter information associated with the third advertising content; and locally caching the second advertising content, the second parameter information, the third advertising content, and the third parameter information, wherein the third advertising information comprises a download address of the third advertising content, and the third advertising content is undisplayed advertising content; or obtaining, based on the third advertising information, third advertising content and third parameter information associated with the third advertising content, and locally caching the third advertising content and the third parameter information. (Figure 3 and Paragraph 36: the Ad Streamer provides the advertisement to the client device; Paragraphs 49, 55, 66 and 68: obtaining the user's viewing statistics (e.g., second parameter information), including, when the user viewed the content and/or an advertisement, how often the content/advertisement is viewed, including whether the user re-wound and/or viewed the content/advertisement more than once, The examiner notes that given the interpretation of the claim limitations indicated in the 35 USC 112(b) rejection, the limitations of the claim directed the a third parameter and how it is used are optional and, as such do not limit the scope of the claim. As such, the prior art of Morten need not disclose these limitations to reject the claim.)
Claim 13: Morten discloses the method according to claim 12, wherein the second parameter information comprises one or more of the following: an advertising slot, an advertising type, an advertising form, an advertising floor price, an advertising size, or scenario information. (Paragraphs 49, 55, 66 and 68: obtaining the user's viewing statistics (e.g., second parameter information), including, when the user viewed the content and/or an advertisement, how often the content/advertisement is viewed, including whether the user re-wound and/or viewed the content/advertisement more than once (e.g., viewing scenario information); Paragraphs 19 and 64: advertisements can be given different priority for insertion (e.g., scenario information); Paragraph 54 and 65-66: Content plug-in may also be configured to manage client based advertisement insertion; advertising markers identify particular locations in the content; multiple advertisements can be requested and inserted (in order for this to occur some type advertising slot parameters must be included, because otherwise it would not be possible to know which advertisement of the multiple advertisements to insert into which particular position of the plurality of particular positions (e.g., advertising slot))
Claim 14: Morten discloses the method according to claim 2, wherein the first parameter information comprises one or more of the following: an application identifier, an advertising slot, an advertising type, an advertising form, an advertising floor price, scenario information, or terminal device information. (Paragraphs 35, 65 and 68: the choice of the advertisement may be based on targeting heuristics from the consumer profile and/or other advertisement metadata which is provided to identify which advertisement to provide (e.g., scenario information); Paragraph 69: an update in the consumer's target profile may occur, as well as sending of advertisement update requests and receiving advertisement metadata updates based, in part, on the profile updates may occur (e.g., scenario information); Paragraph 49: information describing the various capabilities of the client device, such as in a header of the request (e.g., terminal device information) )
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 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.
Claims 3-5 and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morten et. al. (PGPUB 2018/0181969) in view of Paranjpe et. al. (PGPUB: 2022/0148039).
Claims 3 and 17: The method according to claim 2 and the apparatus according to claim 16, wherein the method is applied to a device on which one or more applications are installed, and an application of the one or more applications integrates a software development kit (SDK} or SDKs corresponding to one or more servers; and generating the first advertising request and determining, based on the suppression strategy, whether the first advertising request is suppressed comprises: generating, by the SDK of the application, the first advertising request; and determining, by the SDK based on the suppression strategy, whether the first advertising request is suppressed.
Morten discloses the method according to claim 2 and the apparatus according to claim 16, wherein the method is applied to a device on which one or more applications are installed, and an application of the one or more applications integrates a plug-in corresponding to one or more servers; and generating the first advertising request and determining, based on the suppression strategy, whether the first advertising request is suppressed comprises: generating, by the plug-in of the application, the first advertising request; and determining, by the plug-in based on the suppression strategy, whether the first advertising request is suppressed in at least paragraphs 31, 50 and 54 (Paragraph 31: content provider, or even another computing device, may provide a download manager that is configured to manage the download of a content plug-in, and/or setup storage for content and/or advertising; .Paragraph 54: content player communicates requests for content and/or advertisements through a content plug-in; the content plug-in is configured to manage client-based advertisement insertions and the tracking of advertisement consumption whether online or offline; Paragraph 50: client determines whether or not a network connection is absent; determining that there is an active network connection, but a marker or other identifier indicates that a locally stored advertisement is to be used).
Morten discloses perform the above steps using a plug-in and, as such, does not disclosure performing them using a software development kit (SDK).
The analogous art of Paranjpe discloses that it is known to use an Ad SDK as a plug-in/addon with a Mobile SDK to request ads from a server when the client device has network access, request ads from an edge server when only local network access is available, and request ads from the cache of the client device when the device if fully offline, as well as pre-caching ads so they are available for display when the device is fully offline in at least paragraphs 29-31; 40-44, and 55-56.
It would have been obvious to one of ordinary skill in the art to modify the invention or Morten to use an SDK instead of a plug-in and/or an SDK that is a plug-in as disclosed by Paranjpe.
The rationale for doing so is that it merely requires a simple substitution of one known element for another to obtain predictable results. Aside from a plug-in usually being a standalone program and an SDK being incorporated within a standalone program, there are still merely computer programs. As such, since each individual element with similar functionality are shown in the prior art, albeit shown in separate references, the different between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself -that is in the substitution of an SDK for a plug-in. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
Claims 4 and 18: Morten and Paranjpe disclose the method according to claim 3 and the apparatus according to claim 17, wherein:
obtaining the first advertising content locally based on the first advertising request when the first advertising request is suppressed comprises: when the SDK determines that the first advertising request is suppressed, obtaining, from at least one piece of locally cached advertising content based on the first advertising request, the first advertising content corresponding to the first advertising request; or obtaining the first advertising information locally based on the first advertising request and obtaining the first advertising content based on the first advertising information, when the first advertising request is suppressed comprises: when the SDK determines that the first advertising request is suppressed, obtaining, from at least one piece of locally cached advertising information based on the first advertising request, the first advertising information corresponding to the first advertising request, and obtaining the first advertising content based on the first advertising information. (Morten - Paragraph 50: client determines whether or not a network connection is absent; determining that there is an active network connection, but a marker or other identifier indicates that a locally stored advertisement is to be used; if a network connection is absent and/or if a network connection is present but a marker or other identifier indicates that a locally stored advertisement is to be used; advertisement to be viewed is available local to the client device through secure offline storage; Figure 4 and Paragraphs 67-68: as advertising markers are read, the client chooses the advertisement based on the marker and targeting heuristics from the consumer profile and/or other advertisement metadata and inserts the advertisement; Paranjpe - Paragraphs 29-31; 40-44, 55-56: SDK is used instead of plug-in);
Claims 5 and 19: Morten and Paranjpe disclose the method according to claim 3 and the apparatus according to claim 17, wherein sending the first advertising request to the server and obtaining the advertising response from the server, when the first advertising request is not suppressed comprises: when the SDK determines that the first advertising request is not suppressed, sending, by the SDK, the first advertising request to the server, and obtaining the advertising response from the server. (Morten - Paragraph 50: client determines whether or not a network connection is absent; determining that there is an active network connection, but a marker or other identifier indicates that a locally stored advertisement is to be used; if there is an active network connection and no marker or other identifier indicating that a locally stored advertisement is to be used; Figure 3 and Paragraph 36: the ad content request is sent to the Ad Streamer; the Ad Streamer provides the advertisement to the client device; Paranjpe - Paragraphs 29-31; 40-44, 55-56: SDK is used instead of plug-in)
Claims 6, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morten et. al. (PGPUB 2018/0181969) in view of AO (PGPUB: 20170187837).
Claims 6 and 11: The method according to claim 1, wherein the advertising response comprises at least one piece of advertising information, and the at least one piece of advertising information comprises the second advertising information, wherein the second advertising information comprises a download address of the second advertising content; and displaying, based on the advertising response, the second advertising content corresponding to the second advertising information comprises: determining the second advertising information from the advertising response; obtaining the second advertising content based on the second advertising information; and displaying the second advertising content.
Morten discloses the method according to claim 1, wherein the advertising response comprises at least one piece of advertising information, and the at least one piece of advertising information comprises the second advertising information, and displaying, based on the advertising response, the second advertising content (Figure 3 and Paragraph 36: the Ad Streamer provides the advertisement to the client device; and Paragraph 65: displaying the received advertisement).
In the invention Morten the second advertising information is the second content. As such, Morten does not disclose: wherein the second advertising information comprises a download address of the second advertising content and displaying the second advertising information comprises: determining the second advertising information from the advertising response; obtaining the second advertising content based on the second advertising information; and displaying the second advertising content.
However, the analogous art of AO discloses that it is known to include second advertising information in the response, where in the second advertising information comprises a download address of the second advertising content, determining the second advertising information from the advertising response; obtaining the second advertising content based on the second advertising information; and displaying the second advertising content in at least paragraph 3.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the invention of Morten such that, when the advertising request is a request for a third party advertisement, the second advertising information comprises a download address for the second advertising content; and for the client to determining the second advertising information from the advertising response; obtaining the second advertising content based on the second advertising information; and displaying the second advertising content as disclose AO.
The rationale for doing so is that it merely requires combining prior art elements according to known methods to yield predictable results. It can be seen that each element claimed is taught in either Morten or AO. Including download address for a third party advertisement in the response and having the client download the third party advertisement from the download address and then display the third party advertisement (taught by AO) does not change nor effect the normal functions of providing a standard advertisement in the response and displaying standard advertisement as taught by Morten. Since the functionalities of the elements in Morten and AO do not interfere with each other, the results of the combination would be predictable.
Possible Allowable Subject Matter
Claim 7 contains subject matter that would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 112(a) and 35 USC 101 rejections above.
The following is a statement of reasons for the indication of allowable subject matter: The examiner has been unable to find prior art that would be obvious to combine with Morten et. al. (PGPUB 2018/0181969) which discloses that after the terminal device generates the first advertising request, the terminal then receives a suppression strategy from the server without the terminal device either notifying the server that it has generated a first advertising request and is in need of a suppression strategy or sending a requesting to the server to send a suppression strategy. As such, claim 7 contains subject matter that would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 112(a) and 35 USC 101 rejections above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN W VAN BRAMER whose telephone number is (571)272-8198. The examiner can normally be reached Monday-Thursday 5:30 am - 4 pm EST.
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/John Van Bramer/Primary Examiner, Art Unit 3621