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 Arguments
Applicant's arguments filed 08/19/2026 have been fully considered but they are not persuasive.
Regarding claims 1, 11, 21 and 31, applicant argues that the double patenting rejection tables provided in the last office action merely appears to list the claims and "no further analysis supporting these allegations appears to be provided"; remarks page 9.
However, the examiner respectfully disagrees with the applicant. The table provided on the last office action clearly provides an analysis of the equivalence of claimed features between the instant application and the allowed claim elements in U.S. Patent 12,363,374 and U.S. Patent 10,945,025. Double patenting rejections are based on a comparison of claims. Wherein the analysis table matches each and every element of independent claims 1, 8, 15 and 22 of the instant application to a corresponding element already captured in the related patent application. It is noted that the applicant fails to present arguments directed to specific features of the claims that would different the current application from the claims in co-pending application referenced on the double patent application. The applicant merely presents a blanket argument disagreeing with the rejection. As such, the double patenting rejection of the last office action stands.
Regarding claims 1, 11, 21 and 31, applicant argues that Lazzaro does not teach “based on a quantity of the devices that output the supplemental content for a first time not satisfying a threshold, causing the supplemental content to be output during output of a second content item of the plurality of content items”, remarks pages 9-10.
However, the examiner respectfully disagrees with the applicant. In this case, Lazzaro teaches the claimed elements of the claimed invention, such as delivering advertisement with content offering 502, e.g. program A; paragraphs [0037] [0083] figure 5. Lazzaro further discloses that selection of a targeted ad can be based upon demographic studies with reference to Program A, wherein an advertiser may request for advertising placement during Program A, e.g. the history of trout fishing, based on said program demographic study; paragraphs [0040] [0062] [0079].
Moreover, Lazzaro discloses determining usage rate of the advertisement 504, e.g. the number of advertisement presentations, during the first content offering, e.g. the history of trout fishing (first genre), threshold criteria is not met 505; paragraphs [0085] [0086] figure 5. If the threshold criteria is not met 505 for the number of advertisement presentations, selecting the previously used advertisement to be shown in a future content offerings 508. Wherein a future content offering, such as How fishing tackle is made (second genre) is determined to be better suited for a particular advertisement offering that has not met their usage rate goals; paragraphs [0044] [0046].
The applicant argues that Lazzaro fails to disclose “output the supplemental content for a first time”, since Lazzaro measures the ad presentation threshold irrespective of whether the user device had previously output the advertisement; remarks page 9. However, Lazzaro clearly points out monitoring and determining if the usage rate presentation of an advertisement has met a threshold presentation, and determining whether to also target the ad in “future content offering”; abstract. The examiner notes that the claimed “first time” limitation is broad in scope and the argued feature does not explicitly or implicitly necessitate that the ad was never previously presented by the user device, as argued by the applicant. One of ordinary skill in the art would recognize that the breadth of the claim merely require the determination of whether a quantity of devices output the ad for a first time period, which reasonable reads on a period of time when the presentation threshold is calculated by Lazzaro. Therefore, Lazzaro reasonably discloses that the claims limitations of claims 1, 11, 21 and 31 as currently captured by the latest set of claims.
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, 11, 21 and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of US Patent No 12,363,374. Although the claims at issue are not identical, they are not patentably distinct from each other because the metes and bound of the patentable scope of claims 1, 11, 21 and 31 of the instant application have already been patented by claims 1 and 10 of US Patent No 12,363,374, as show below:
Instant Application
U.S. Patent 12,363,374
Claim 1:
A method comprising:
receiving information indicating that supplemental content was output to devices associated with a target demographic content during output of a first content item of a plurality of content items associated with the target demographic;
Claims 1 and 10:
A method comprising:
determining first content associated with at least one consumer characteristic (age, race or gender); receiving information indicating that one or more devices output the supplemental content via a plurality of platforms during output of the first content;
and based on a quantity of the devices that output the supplemental content for a first time not satisfying a threshold, causing the supplemental content to be output during output of a second content item of the plurality of content items.
determining, based on the quantity of the one or more devices that output the supplemental content for the first time during the output of the first content not satisfying the threshold, second content associated with the at least one consumer characteristic…
Claims 2 - 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3, 5, 6, 8, 11 and 9, respectively, of US Patent No 12,363,374, since they correspond to a broader version of the claims already allowed.
Claims 12 -19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3, 5, 6, 8, 11 and 9, respectively, of US Patent No 12,363,374, since they correspond to a broader version of the claims already allowed.
Claims 22-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3, 5, 6, 8, 11 and 9, respectively, of US Patent No 12,363,374, since they correspond to a broader version of the claims already allowed.
Claims 32-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3, 5, 6, 8, 11 and 9, respectively, of US Patent No 12,363,374, since they correspond to a broader version of the claims already allowed.
Claims 1, 11, 21 and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of US Patent No 10,945,025. Although the claims at issue are not identical, they are not patentably distinct from each other because the metes and bound of the patentable scope of claims 1, 11, 21 and 31 of the instant application have already been patented by claim 1 of US Patent No 10,945,025, as show below:
Instant Application
U.S. Patent 10,945,025
Claim 1:
A method comprising:
receiving information indicating that supplemental content was output to devices associated with a target demographic content during output of a first content item of a plurality of content items associated with the target demographic;
Claim 1:
A method comprising:
determining, based on at least one characteristic associated with the target audience, a first content item to be viewed by the target audience; sending an indication for the supplemental content to be output at a time associated with output of the first content item; determining, for a first period of time, a quantity of devices which output the supplemental content for a first time…
and based on a quantity of the devices that output the supplemental content for a first time not satisfying a threshold, causing the supplemental content to be output during output of a second content item of the plurality of content items.
determining, based on the quantity of devices which output the supplemental content for the first time during the first time period, that the quantity of devices is below a target quantity of devices to output the supplemental content for the first time during the time period; determining, based on the quantity of devices being below the target quantity of devices, a second content item to be viewed by the target audience…
Claims 2 – 5, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 1, 2 and 3, respectively, of US Patent No 10,945,025, since they correspond to a broader version of the claims already allowed.
Claims 12 – 15, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 1, 2 and 3, respectively, of US Patent No 10,945,025, since they correspond to a broader version of the claims already allowed.
Claims 22 – 25, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 1, 2 and 3, respectively, of US Patent No 10,945,025, since they correspond to a broader version of the claims already allowed.
Claims 32 – 35, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 1, 2 and 3, respectively, of US Patent No 10,945,025, since they correspond to a broader version of the claims already allowed.
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.
Claims 1-6, 11-16, 21-26 and 31-36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lazzaro (Pub No US 2012/0278161). Hereinafter, referenced as Lazzaro.
Regarding claim 1, Lazzaro discloses a method comprising:
receiving information indicating that supplemental content (e.g. advertisement 501) was output to devices associated with a target demographic content (Paragraph [0033]; advertisements 114 can be inserted and targeted to set demographics and presented along with content offering 502) during output of a first content item (e.g. content offering 502 – Program A) of a plurality of content items associated with the target demographic (Paragraphs [0040] [0062]; advertisements are inserted based on demographic studies with reference to Program A);
and based on a quantity of the devices (e.g. user devices 106-108) that output the supplemental content (e.g. advertisement 501) for a first time not satisfying a threshold (Paragraphs [0085] [0086] figure 5; determining usage rate of the advertisement 504, e.g. the number of advertisement presentations, during the first content offering 502), causing the supplemental content to be output during output of a second content item of the plurality of content items (Paragraphs [0086] [0090] figure 5; if the threshold criteria is not met 505 for the number of advertisement presentations, selecting the previously used advertisement to be shown in a future content offerings 508. Wherein advertisements are inserted based on demographic studies with reference to Program A; paragraphs [0040] [0062]).
Regarding claim 2, Lazzaro discloses the method of claim 1; moreover, Lazzaro discloses ceasing, based on the quantity of the devices that output the supplemental content for the first time satisfying the threshold, to send an indication for the supplemental content to be output with output of the first content item (Paragraph [0087] figure 5; when the usage rate was met or exceeded, the targeted advertisement delivery process stops at step 506).
Regarding claim 3, Lazzaro discloses the method of claim 1; moreover, Lazzaro discloses receiving an indication of the supplemental content (Paragraph [0085] figure 5; determine usage rate of the advertisement 504).
Regarding claim 4, Lazzaro discloses the method of claim 1; moreover, Lazzaro discloses that the supplemental content comprises an advertisement or metadata (Paragraph [0033]; advertisements 114).
Regarding claim 5, Lazzaro discloses the method of claim 1; moreover, Lazzaro discloses that the supplemental content is to be output as an overlay during output of the first content item and the second content item (Paragraphs [0032] [0059] [0109]; advertisement may be banners overlaid over the content).
Regarding claim 6, Lazzaro discloses the method of claim 1; moreover, Lazzaro discloses that the supplemental content is to be output within an insertion opportunity during output of the first content item and within an insertion opportunity during output of the second content item (Paragraph [0032]; advertisement 114 may be inserted between portions of the content 109).
Regarding claims 11-16, Lazzaro discloses all the limitations of claims 11-16; therefore, claims 11-16 are rejected for the same reasons stated in claims 1-6, respectively.
Regarding claims 21-26, Lazzaro discloses all the limitations of claims 21-26; therefore, claims 21-26 are rejected for the same reasons stated in claims 1-6, respectively.
Regarding claims 31-36, Lazzaro discloses all the limitations of claims 31-36; therefore, claims 31-36 are rejected for the same reasons stated in claims 1-6, respectively.
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 7-9, 17-19, 27-29 and 37-39 are rejected under 35 U.S.C. 103 as being unpatentable over Lazzaro in view of Gurumoorthy et al. (Pub No US 2014/0278914). Hereinafter, referenced as Gurumoorthy.
Regarding claim 7, Lazzaro discloses the method of claim 1; moreover, Lazzaro discloses the information indicating that the supplemental content was output to the devices associated with the target demographic during the output of the first content item (Paragraph [0085] figure 5; determine usage rate of the advertisement 504).
However, it is noted that Lazzaro is silent to explicitly disclose that the information indicating that the supplemental content was output to the devices associated during the output of the first content item, indicates a plurality of platforms via which the supplemental content was output.
Nevertheless, in a similar field of endeavor Gurumoorthy discloses that the information indicating that the supplemental content was output to the devices associated during the output of the first content item, indicates a plurality of platforms via which the supplemental content was output (Paragraphs [0041] [0081] figure 3; monitor reach of targeted advertisements across multiple platforms, e.g. television, mobile device, etc., based on a constraint for limiting advertisement reach presentations per platform, i.e. threshold).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lazzaro by specifically providing the elements mentioned above, as taught by Gurumoorthy, for the predictable result of targeting advertisement to different platforms that are accessed by different numbers and demographics of individual (Gurumoorthy - Paragraph [0002]).
Regarding claim 8, Lazzaro and Gurumoorthy discloses the method of claim 7; moreover, Lazzaro discloses that receiving the information indicating that the supplemental content was output to the devices associated with the target demographic during the output of the first content item comprises: receiving data indicating a first subset of the devices that output the supplemental content during output of the first content item and a second subset of the devices that output the supplemental content during output of the first content item (Paragraph [0085] figure 5; determine usage rate of the advertisement 504).
However, it is noted that Lazzaro is silent to explicitly disclose receiving data indicating a first subset of the devices that output the supplemental via a first platform and a second subset of the devices that output the supplemental content via a second platform.
Nevertheless, in a similar field of endeavor Gurumoorthy discloses receiving data indicating a first subset of the devices that output the supplemental via a first platform and a second subset of the devices that output the supplemental content via a second platform (Paragraphs [0041] [0081] figure 3; monitor reach of targeted advertisements across multiple platforms, e.g. television, mobile device, etc., based on a constraint for limiting advertisement reach presentations per platform, i.e. threshold).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lazzaro by specifically providing the elements mentioned above, as taught by Gurumoorthy, for the predictable result of targeting advertisement to different platforms that are accessed by different numbers and demographics of individual (Gurumoorthy - Paragraph [0002]).
Regarding claim 9, Lazzaro and Gurumoorthy discloses the method of claim 7; moreover, Lazzaro discloses that the plurality of platforms comprises at least two of: a set-top-box, a mobile phone, a tablet, a personal computer, a viewing platform, a platform for output to a set-top-box, a platform for output to a mobile phone, a platform for output to a tablet, a platform for output to a personal computer (Paragraph [0057]; set to box, personal computer, etc.).
Regarding claims 17-19, Lazzaro and Gurumoorthy disclose all the limitations of claims 17-19; therefore, claims 17-19 are rejected for the same reasons stated in claims 7-9, respectively.
Regarding claims 27-29, Lazzaro and Gurumoorthy disclose all the limitations of claims 27-29; therefore, claims 27-29 are rejected for the same reasons stated in claims 7-9, respectively.
Regarding claims 37-39, Lazzaro and Gurumoorthy disclose all the limitations of claims 37-39; therefore, claims 37-39 are rejected for the same reasons stated in claims 7-9, respectively.
Claims 10, 20, 30 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Lazzaro in view of Bayer et al. (Patent No US 8,255,949). Hereinafter, referenced as Bayer.
Regarding claim 10, Lazzaro discloses the method of claim 1; moreover, Lazzaro discloses receiving the first content associated with the at least one characteristic (Paragraphs [0037] [0083] figure 5; a user viewing content offering 502, e.g. Program A. Wherein advertisements are inserted based on demographic studies with reference to Program A; paragraphs [0040] [0062]).
However, it is noted that Lazzaro is silent to explicitly disclose that the target demographic comprises at least one of age, race, or gender.
Nevertheless, in a similar field of endeavor Bayer discloses that the target demographic comprises at least one of age, race, or gender (Col. 22 lines 23-42; advertisements from the pool of advertisements will be targeted and aired on programs, e.g. second content, based on how well the target demographic of the advertisement matches the audience demographic of the television programs. For instance targeting ads to 18-30 year old males, col. 3 lines 35-41).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lazzaro by specifically providing the elements mentioned above, as taught by Bayer, for the predictable result of targeting assets for delivery according to various targeting criteria based on specific audience demographic information and target demographic of the advertisement, creating a better association and affinity between the advertisement, the program and the viewer.
Regarding claim 20, Lazzaro and Bayer disclose all the limitations of claim 20; therefore, claim 20 is rejected for the same reasons stated in claim 10.
Regarding claim 30, Lazzaro and Bayer disclose all the limitations of claim 30; therefore, claim 30 is rejected for the same reasons stated in claim 10.
Regarding claim 40, Lazzaro and Bayer disclose all the limitations of claim 40; therefore, claim 40 is rejected for the same reasons stated in claim 10.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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JUNIOR O. MENDOZA
Primary Examiner
Art Unit 2424
/JUNIOR O MENDOZA/Primary Examiner, Art Unit 2424
Prosecution Insights