DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on XXXXXXXXXXXXXX has been entered.
Status of Claims
Claims 2-15 are new.
Claims 1-15 are pending and have been examined.
This action is in reply to the papers filed on 07/16/2026 (effective filing date 02/13/2009).
Information Disclosure Statement
The information disclosure statement(s) submitted: 05/28/2026, has/have been considered by the Examiner and made of record in the application file.
Amendment
The present Office Action is based upon the original patent application filed on 07/16/2025 as modified by the amendment filed on 07/16/2026.
Claim Rejections - 35 USC § 112
Per Applicants’ amendments, the rejection is withdrawn.
Claim Rejections - 35 USC §112
The following is a quotation 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.
Claims 1-15 (Claims 6 and 11 contain feature(s) similar to Claim 1) are rejected under 35 U.S.C. §112(a) 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 had possession of the claimed invention.
New Matter Rejection - Regarding Claim 1 (Claims 6 and 11 contain feature(s) similar to Claim 1), Applicant’s originally filed specification (PGPub. 2025/0342502) fails to disclose the amended claimed features as follows:
19/271,461 – Claim 1. (Currently Amended) A method comprising: … wherein the set of criteria is identified from content displayed on the mobile gaming device, wherein the content displayed on the mobile gaming device is independent of the first advertiser and the second advertiser.
3. (New) The method of claim 1, wherein the content comprises gameplay content.
4. (New) The method of claim 3, wherein the set of criteria is identified based on an outcome in the gameplay content.
Applicant is directed to address each rejected claim individually by specifically indicating support, in the originally filed specification (i.e., page, paragraph, and line), for the rejected claimed feature(s).
Reasons For Allowance
Prior-Art Rejection withdrawn
Claims xxx are allowed. The closest prior art (See PTO-892, Notice of References Cited) does not teach the claimed:
The closest prior-art (xxx) teach the features as disclosed in Non-final Rejection (xxxx), however, these cited references do not teach and the prior-art does not teach at least the following:
Claim Rejections - 35 USC §101 - Withdrawn
Per Applicant’s amendments and arguments and considering the new guidance in the 2019 PEG, the rejections are withdrawn. Specifically, in Applicant’s Remarks (dated 03/14/2017, pgs. 8-11), Applicant traverses the 35 USC §101 rejections arguing that the amended claims recite new limitations that are not abstract, amount to significantly more, are directed to a practical application, etc… For example, Applicant argues….
In support of their arguments, Applicant cites to the following recent Fed. Cir. court cases (i.e., Berkheimer, Core Wireless, McRO, Enfish, Bascom, DDR, etc…).
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.
Claim 1 is rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the claimed invention is directed to an abstract idea without significantly more. These claims recite a method for advertising on a mobile gaming device.
Claim 1 recites [a] method comprising: receiving data based on which a first promotion associated with a first advertiser may be displayed on a mobile gaming device, in which the data includes a first set of criteria identifying when the first promotion should be displayed; receiving data based on which a second promotion associated with a second advertiser may be displayed on the mobile gaming device, in which the data includes a second set of criteria identifying when the second promotion should be displayed; identifying a set of criteria that occur on the gaming mobile device, in which the set of criteria meet the first set of criteria and the second set of criteria; determining if the first advertiser is a competitor of the second advertiser; if the first advertiser is a competitor of the second advertiser, displaying only one of the first and the second promotions on the mobile gaming device, wherein the set of criteria is identified from content displayed on the mobile gaming device, wherein the content displayed on the mobile gaming device is independent of the first advertiser and the second advertiser.
The claims are being rejected according to the 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 5, p. 50-57 (Jan. 7, 2019)).
Step 1: Does the Claim Fall within a Statutory Category?
Yes. Claims 1-5 recites a method and, therefore, are directed to the statutory class of a process. Claims 11-15 recite a system/apparatus and, therefore, are directed to the statutory class of machine. Claims 6-10 recite a non-transitory computer readable medium/computer product and, therefore, are directed to the statutory class of a manufacture.
Step 2A, Prong One: Is a Judicial Exception Recited?
Yes. The following tables identify the specific limitations that recite an abstract idea. The column that identifies the additional elements will be relevant to the analysis in step 2A, prong two, and step 2B.
Claim 1: Identification of Abstract Idea and Additional Elements, using Broadest Reasonable Interpretation
Claim Limitation
Abstract Idea
Additional Element
1. A method comprising:
No additional elements are positively claimed.
The preamble is given little patentable weight.
receiving data based on which a first promotion associated with a first advertiser may be displayed on a mobile gaming device, in which the data includes a first set of criteria identifying when the first promotion should be displayed;
This limitation includes the step(s) of: receiving data based on which a first promotion associated with a first advertiser may be displayed on a mobile gaming device, in which the data includes a first set of criteria identifying when the first promotion should be displayed.
But for the mobile gaming device, this limitation is directed to communicating known information (e.g., receiving known information) and/or processing known information to facilitate a method for advertising on a mobile gaming device which may be categorized as any of the following:
mental process – concepts performed in the human mind (including an observation, evaluation, judgment, opinion)
and/or
certain method of organizing human activity –
commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
receiving data based on which a first promotion associated with a first advertiser may be displayed on a mobile gaming device…
The ‘data’, ‘criteria’ and ‘promotions’ are NOT considered Additional Elements. They are interpreted as purely software or code.
receiving data based on which a second promotion associated with a second advertiser may be displayed on the mobile gaming device, in which the data includes a second set of criteria identifying when the second promotion should be displayed;
This limitation includes the step(s) of: receiving data based on which a second promotion associated with a second advertiser may be displayed on the mobile gaming device, in which the data includes a second set of criteria identifying when the second promotion should be displayed.
But for the mobile gaming device, this limitation is directed to communicating known information (e.g., receiving known information) and/or processing known information in order to facilitate a method for advertising on a mobile gaming device which may be categorized as any of the following:
mental process – concepts performed in the human mind (including an observation, evaluation, judgment, opinion)
and/or
certain method of organizing human activity –
commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
receiving data based on which a second promotion associated with a second advertiser may be displayed on the mobile gaming device…
The ‘data’, ‘criteria’ ‘advertiser’ and ‘promotions’ are NOT considered Additional Elements. They are interpreted as purely software or code.
identifying a set of criteria that occur on the gaming mobile device, in which the set of criteria meet the first set of criteria and the second set of criteria;
This limitation includes the step(s) of: identifying a set of criteria that occur on the gaming mobile device, in which the set of criteria meet the first set of criteria and the second set of criteria.
But for the mobile gaming device, this limitation is directed to communicating known information (e.g., receiving known information) and/or processing known information in order to facilitate a method for advertising on a mobile gaming device which may be categorized as any of the following:
mental process – concepts performed in the human mind (including an observation, evaluation, judgment, opinion)
and/or
certain method of organizing human activity –
commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
identifying a set of criteria that occur on the gaming mobile device …
The ‘criteria’ is NOT considered Additional Elements. It is interpreted as purely software or code.
determining if the first advertiser is a competitor of the second advertiser;
This limitation includes the step(s) of: determining if the first advertiser is a competitor of the second advertiser.
No additional elements are positively claimed.
This limitation is directed to communicating known information (e.g., receiving and transmitting information) and/or processing known in order to facilitate a method for advertising on a mobile gaming device which may be categorized as any of the following:
mental process – concepts performed in the human mind (including an observation, evaluation, judgment, opinion)
and/or
certain method of organizing human activity –
commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
No additional elements are positively claimed.
The ‘advertiser’ is NOT considered Additional Elements. It is interpreted as purely software or code.
if the first advertiser is a competitor of the second advertiser, displaying only one of the first and the second promotions on the mobile gaming device, wherein the set of criteria is identified from content displayed on the mobile gaming device, wherein the content displayed on the mobile gaming device is independent of the first advertiser and the second advertiser.
This limitation includes the step(s) of: if the first advertiser is a competitor of the second advertiser, displaying only one of the first and the second promotions on the mobile gaming device, wherein the set of criteria is identified from content displayed on the mobile gaming device, wherein the content displayed on the mobile gaming device is independent of the first advertiser and the second advertiser.
But for the mobile gaming device, this limitation is directed to communicating known information (e.g., displaying known information) and/or processing known information in order to facilitate a method for advertising on a mobile gaming device which may be categorized as any of the following:
mental process – concepts performed in the human mind (including an observation, evaluation, judgment, opinion)
and/or
certain method of organizing human activity –
commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
…displaying only one of the first and the second promotions on the mobile gaming device…
The ‘data’, ‘criteria’ ‘advertiser’ and ‘promotions’ are NOT considered Additional Elements. They are interpreted as purely software or code.
As shown above, under Step 2A, Prong One, the claims recite a judicial exception (an abstract idea). The claims are directed to the abstract idea of advertising on a mobile gaming device, which, pursuant to MPEP 2106.04, is aptly categorized as a mental process and/or a method of organizing human activity (i.e. advertising, marketing or sales activities or behaviors). Therefore, under Step 2A, Prong One, the claims recite a judicial exception.
The claims also recite additional technical elements including: a “mobile gaming device” and a “mobile device” to execute the method. Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110 USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at 1984.
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application?
No. The judicial exception is not integrated into a practical application. The additional elements listed above that relate to computing components are recited at a high level of generality (i.e., as generic components performing generic computer functions such as communicating, receiving, processing, and outputting/displaying data) such that they amount to no more than mere instructions to apply the exception using generic computing components. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. Additionally, the claims do not purport to improve the functioning of the computer itself. There is no technological problem that the claimed invention solves. Rather, the computer system is invoked merely as a tool. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, these claims are directed to an abstract idea.
Furthermore, looking at the elements individually and in combination, under Step 2A, Prong Two, the claims as a whole do not integrate the judicial exception into a practical application because they fail to: improve the functioning of a computer or a technical field, apply the judicial exception in the treatment or prophylaxis of a disease, apply the judicial exception with a particular machine, effect a transformation or reduction of a particular article to a different state or thing, or apply the judicial exception beyond generally linking the use of the judicial exception to a particular technological environment. Rather, the claims merely use a computer as a tool to perform the abstract idea(s), and/or add insignificant extra-solution activity to the judicial exception, and/or generally link the use of the judicial exception to a particular technological environment.
Step 2B: Does the Claim Provide an Inventive Concept?
Next, under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered both individually and as an ordered combination, do not amount to significantly more than the abstract idea. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Simply put, as noted above, there is no indication that the combination of elements improves the functioning of a computer (or any other technology), and their collective functions merely provide conventional computer implementation. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements relating to computing components amount to no more than applying the exception using a generic computing component. Mere instructions to apply an exception using a generic computing component cannot provide an inventive concept. Furthermore, the broadest reasonable interpretation of the claimed computer components (i.e., additional elements) includes any generic computing components that are capable of being programmed to communicate, receive, send, process, analyze, output, or display data. Furthermore, Applicant’s Specification (PGPub. 2023/0351448 [0058; 0078; 0079; 0132]) refers to a general computer system, but they do not include any technically-specific computer algorithm or code.
Additionally, pursuant to the requirement under Berkheimer, the following citations are provided to demonstrate that the additional elements, identified as extra-solution activity, amount to activities that are well-understood, routine, and conventional. See MPEP 2106.05(d).
Receiving or transmitting data over a network. Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014).
Storing and retrieving information in memory. Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Outputting/Presenting data to a user. Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015); MPEP 2106.05(g)(3).
Thus, taken alone and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea), and are ineligible under 35 USC 101.
As such, the claims are not patent eligible.
Invention Could be Performed Manually
It is conceivable that the invention could be performed manually without the aid of machine and/or computer. For example, Applicant claims receiving data, identifying a set of criteria, determining if there is a competitor, and displaying an advertisement. Each of these features could be performed manually and/or with the aid of a simple generic computer to facilitate the transmission of data.
See also Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., and In re Venner, which stand for the concept that automating manual activity and/or applying modern electronics to older mechanical devices to accomplish the same result is not sufficient to distinguish over the prior art. Here, applicant is merely claiming computers to facilitate and/or automate functions which used to be commonly performed by a human.
Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 82 USPQ2d 1687 (Fed. Cir. 2007) "[a]pplying modern electronics to older mechanical devices has been commonplace in recent years…"). The combination is thus the adaptation of an old idea or invention using newer technology that is commonly available and understood in the art.
In In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958), the court held that broadly providing an automatic or mechanical means to replace manual activity which accomplished the same result is not sufficient to distinguish over the prior art. MPEP 2144.04, III Automating a Manual Activity.
MPEP 2144.04 III - Automating a Manual Activity and In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) further stand for and provide motivation for using technology, hardware, computer, or server to automate a manual activity.
Therefore, the Office finds no improvements to another technology or field, no improvements to the function of the computer itself, and no meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, based on the two-part Alice Corp. analysis, there are no limitations in any of the claims that transform the exception (i.e., the abstract idea) into a patent eligible application.
Claim Rejections - Not an Ordered Combination
None of the limitations, considered as an ordered combination provide eligibility, because taken as a whole, the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity.
Claim Rejections - Preemption
Allowing the claims, as presently claimed, would preempt others from advertising on a mobile gaming device. Furthermore, the claim language only recites the abstract idea of performing this method; there are no concrete steps articulating a particular way in which this idea is being implemented or describing how it is being performed.
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 6, 11 are rejected under 35 U.S.C. 103 as being unpatentable over: Sharma 2007/0156520; in view of Broder et al. 2009/0024469; in further view of Tu et al. 2009/0055400.
19/271,461 – Claim 1. (Currently Amended) Sharma 2007/0156520 teaches A method comprising: receiving data based on which a first promotion associated with a first advertiser may be displayed on a mobile gaming device (Sharma 2007/0156520 [0009 - generating, for presentation on the user device, the advertiser document referenced from the selected advertisement, wherein the advertiser document includes…] Embodiments consistent with the present invention may allow advertisers to generate revenue (or credits) from an advertising network by allowing relevant ads to be shown with their properties, and allow an ad delivery system to serve relevant ads. For example, embodiments consistent with the present invention may do so by (a) accepting search query information sourced from a user device, (b) generating, for presentation on the user device, a document (e.g., a Web page) with search results determined using the search query information and an advertisement(s) determined using the search query information, wherein each advertisement(s) includes a reference to an advertiser document, (c) accepting a selection, sourced from the user device, of (one of) the advertisement(s), and (d) generating, for presentation on the user device, the advertiser document referenced from the selected advertisement, wherein the advertiser document includes at least one supplemental advertisement determined using the search query information. Other embodiments consistent with the present invention may do so by (a) generating, for presentation on a user device, a document with at least one advertisement, wherein each of the advertisement(s) includes a reference to an advertiser document, (b) accepting a selection, sourced from the user device, of (one of) the advertisement(s), and (c) generating, for presentation on the user device, the advertiser document referenced from the selected advertisement(s), wherein the advertiser document includes at least one supplemental advertisement determined using a correlation or association of the selected advertisement and the supplemental advertisement. [0058 – game pad] A user may enter commands and information into the personal computer through input devices 832, such as a keyboard and pointing device (e.g., a mouse) for example. Other input devices such as a microphone, a joystick, a game pad, a satellite dish, a scanner, or the like, may also (or alternatively) be included. These and other input devices are often connected to the processing unit(s) 810 through an appropriate interface 830 coupled to the system bus 840. The output devices 834 may include a monitor or other type of display device, which may also be connected to the system bus 840 via an appropriate interface. In addition to (or instead of) the monitor, the personal computer may include other (peripheral) output devices (not shown), such as speakers and printers for example.), in which the data includes a first set of criteria identifying when the first promotion should be displayed (Sharma 2007/0156520 [0019 - When an online ad is served, one or more parameters may be used to describe how, when, and/or where the ad was served…] When an online ad is served, one or more parameters may be used to describe how, when, and/or where the ad was served. These parameters are referred to as "serving parameters" below. Serving parameters may include, for example, one or more of the following: features of (including information on) a document on which, or with which, the ad was served, a search query or search results associated with the serving of the ad, a user characteristic (e.g., their geographic location, the language used by the user, the type of browser used, previous page views, previous behavior, user account, any Web cookies used by the system, user device characteristics, etc.), a host or affiliate site (e.g., America Online, Google, Yahoo) that initiated the request, an absolute position of the ad on the page on which it was served, a position (spatial or temporal) of the ad relative to other ads served, an absolute size of the ad, a size of the ad relative to other ads, a color of the ad, a number of other ads served, types of other ads served, time of day served, time of week served, time of year served, etc. Naturally, there are other serving parameters that may be used in the context of the invention. [0020 - serving parameters may be extrinsic to ad features, they may be associated with an ad as serving conditions or constraints…] Although serving parameters may be extrinsic to ad features, they may be associated with an ad as serving conditions or constraints. When used as serving conditions or constraints, such serving parameters are referred to simply as "serving constraints" (or "targeting criteria"). For example, in some systems, an advertiser may be able to target the serving of its ad by specifying that it is only to be served on weekdays, no lower than a certain position, only to users in a certain location, etc. As another example, in some systems, an advertiser may specify that its ad is to be served only if a page or search query includes certain keywords or phrases. As yet another example, in some systems, an advertiser may specify that its ad is to be served only if a document, on which, or with which, the ad is to be served, includes certain topics or concepts, or falls under a particular cluster or clusters, or some other classification or classifications (e.g., verticals). In some systems, an advertiser may specify that its ad is to be served only to (or is not to be served to) user devices having certain characteristics. Finally, in some systems an ad might be targeted so that it is served in response to a request sourced from a particular location, or in response to a request concerning a particular location.); receiving data based on which a second promotion associated with a second advertiser may be displayed on the mobile gaming device (Sharma 2007/0156520 [0064 - allow the advertiser to control the extent of showing secondary ads on their ad landing page] At least some embodiments consistent with the present invention may allow the advertiser to control the extent of showing secondary ads on their ad landing page, and/or how such secondary ads are determined. Results in terms of conversions, advertising revenue, etc. may be tracked. In this way, advertisers can experiment with such secondary advertising to observe effects of secondary advertising on advertising revenue, conversions, lost conversions, etc. Using these observations, the advertiser can then adjust the extend of showing secondary ads on their ad landing page and/or how such secondary ads are determined. [0065 - advertiser may be compensated for showing secondary ads on their ad landing page…] An advertiser may be compensated for showing secondary ads on their ad landing page. Such compensation may be in the form of a direct payment, or a credit. Alternatively, or in addition, such compensation may be in the form of an increase in the score of their ad relative to other ads competing to be shown on the search results document.), in which the data includes a second set of criteria identifying when the second promotion should be displayed (Sharma 2007/0156520 [0019 - When an online ad is served, one or more parameters may be used to describe how, when, and/or where the ad was served. These parameters are referred to as "serving parameters"…] When an online ad is served, one or more parameters may be used to describe how, when, and/or where the ad was served. These parameters are referred to as "serving parameters" below. Serving parameters may include, for example, one or more of the following: features of (including information on) a document on which, or with which, the ad was served, a search query or search results associated with the serving of the ad, a user characteristic (e.g., their geographic location, the language used by the user, the type of browser used, previous page views, previous behavior, user account, any Web cookies used by the system, user device characteristics, etc.), a host or affiliate site (e.g., America Online, Google, Yahoo) that initiated the request, an absolute position of the ad on the page on which it was served, a position (spatial or temporal) of the ad relative to other ads served, an absolute size of the ad, a size of the ad relative to other ads, a color of the ad, a number of other ads served, types of other ads served, time of day served, time of week served, time of year served, etc. Naturally, there are other serving parameters that may be used in the context of the invention. [0020] Although serving parameters may be extrinsic to ad features, they may be associated with an ad as serving conditions or constraints. When used as serving conditions or constraints, such serving parameters are referred to simply as "serving constraints" (or "targeting criteria"). For example, in some systems, an advertiser may be able to target the serving of its ad by specifying that it is only to be served on weekdays, no lower than a certain position, only to users in a certain location, etc. As another example, in some systems, an advertiser may specify that its ad is to be served only if a page or search query includes certain keywords or phrases. As yet another example, in some systems, an advertiser may specify that its ad is to be served only if a document, on which, or with which, the ad is to be served, includes certain topics or concepts, or falls under a particular cluster or clusters, or some other classification or classifications (e.g., verticals). In some systems, an advertiser may specify that its ad is to be served only to (or is not to be served to) user devices having certain characteristics. Finally, in some systems an ad might be targeted so that it is served in response to a request sourced from a particular location, or in response to a request concerning a particular location.); identifying a set of criteria that occur on the gaming mobile device, in which the set of criteria meet the first set of criteria and the second set of criteria (Sharma 2007/0156520 [0020 - serving parameters are referred to simply as "serving constraints" (or "targeting criteria")…] Although serving parameters may be extrinsic to ad features, they may be associated with an ad as serving conditions or constraints. When used as serving conditions or constraints, such serving parameters are referred to simply as "serving constraints" (or "targeting criteria"). For example, in some systems, an advertiser may be able to target the serving of its ad by specifying that it is only to be served on weekdays, no lower than a certain position, only to users in a certain location, etc. As another example, in some systems, an advertiser may specify that its ad is to be served only if a page or search query includes certain keywords or phrases. As yet another example, in some systems, an advertiser may specify that its ad is to be served only if a document, on which, or with which, the ad is to be served, includes certain topics or concepts, or falls under a particular cluster or clusters, or some other classification or classifications (e.g., verticals). In some systems, an advertiser may specify that its ad is to be served only to (or is not to be served to) user devices having certain characteristics. Finally, in some systems an ad might be targeted so that it is served in response to a request sourced from a particular location, or in response to a request concerning a particular location.); determining if the first advertiser is a competitor of the second advertiser (Sharma 2007/0156520 [0050 - policy information may be provided by the advertiser associated with the ad landing page and may include, for example, one or more of competitor filters, competing product and/or service filters, advertiser specified keywords, categories, and/or concepts…] Landing page based ad serving operations 370 may use search query information 365 and ad information 372 to determine ads for the ad landing page 375. The search query information 365 may be provided from a "referrer field" of the Webpage URL for example. The operations 370 may also use ad landing page information 360 such as topics or concepts determined by analyzing the landing page for example, and/or policy information 374. The policy information may be provided by the advertiser associated with the ad landing page and may include, for example, one or more of competitor filters, competing product and/or service filters, advertiser specified keywords, categories, and/or concepts. Such information may be logically ANDed with the search query information, etc. [0062 - policy information 374 may include one or more of: (i) competitor ads to be blocked (as defined by landing page of the ad, creative of the ad, etc.); (ii) competing products and/or services to be blocked…] Referring back to FIG. 3, the advertiser may provide policy information 374. In at least some embodiments consistent with the present invention, the policy information 374 may include one or more of: (i) competitor ads to be blocked (as defined by landing page of the ad, creative of the ad, etc.); (ii) competing products and/or services to be blocked; (iii) conditions precedent to serving ads (e.g., only after checkout, only after order placed, etc.); (iv) limiting ads to specific products and/or services (e.g., by logical AND with specified keywords and/or topics); (v) impression only ads (e.g., ads without links to landing pages), etc. [0065] An advertiser may be compensated for showing secondary ads on their ad landing page. Such compensation may be in the form of a direct payment, or a credit. Alternatively, or in addition, such compensation may be in the form of an increase in the score of their ad relative to other ads competing to be shown on the search results document. [0068] Ad 1 includes a reference (e.g., a hypertext link) to a landing Web page. FIG. 7 illustrates an exemplary landing Web page 700. It 700 includes content 710 and additional ads 720. The ads 720 may be selected using, at least, search information (e.g., the original search query--"digital camera"). The ads may also be selected using topics determined by analyzing the content 710. The ads may also be selected using policies provided by the advertiser associated with ad landing Web page 700 and ad 1 of Web page 600. In this example, the advertiser may have listed competing camera retailers to block, and/or may have specified a list of acceptable keywords or categories (e.g., cases, memory cards, photograph development services, etc.). [0069 - advertiser can use policies to avoid showing ads of competitors or ads that might influence an end user to shop elsewhere] As the foregoing example illustrates, the advertiser can advantageously generate revenue (and/or credits) by providing relevant advertising. The advertiser can use policies to avoid showing ads of competitors or ads that might influence an end user to shop elsewhere, and to show complementary products and/or services. End users are provided with relevant ads. The advertising network is provided with additional opportunities to serve relevant ads.); if the first advertiser is a competitor of the second advertiser (Sharma 2007/0156520 [0062 - the policy information 374 may include one or more of: (i) competitor ads to be blocked (as defined by landing page of the ad, creative of the ad, etc.); (ii) competing products and/or services to be blocked…] Referring back to FIG. 3, the advertiser may provide policy information 374. In at least some embodiments consistent with the present invention, the policy information 374 may include one or more of: (i) competitor ads to be blocked (as defined by landing page of the ad, creative of the ad, etc.); (ii) competing products and/or services to be blocked; (iii) conditions precedent to serving ads (e.g., only after checkout, only after order placed, etc.); (iv) limiting ads to specific products and/or services (e.g., by logical AND with specified keywords and/or topics); (v) impression only ads (e.g., ads without links to landing pages), etc.), displaying only one of the first and the second promotions on the mobile gaming device (Sharma 2007/0156520 [0062 - policy information 374 may include one or more of: (i) competitor ads to be blocked (as defined by landing page of the ad, creative of the ad, etc.); (ii) competing products and/or services to be blocked;…] Referring back to FIG. 3, the advertiser may provide policy information 374. In at least some embodiments consistent with the present invention, the policy information 374 may include one or more of: (i) competitor ads to be blocked (as defined by landing page of the ad, creative of the ad, etc.); (ii) competing products and/or services to be blocked; (iii) conditions precedent to serving ads (e.g., only after checkout, only after order placed, etc.); (iv) limiting ads to specific products and/or services (e.g., by logical AND with specified keywords and/or topics); (v) impression only ads (e.g., ads without links to landing pages), etc.), wherein the set of criteria is identified from content displayed on the mobile gaming device (Sharma 2007/0156520 [0006 - targeted ads are more likely to be useful to end users since the ads may be relevant to a need inferred from some user activity (e.g., relevant to a user's search query to a search engine, relevant to content in a document requested by the user, etc.) … methods and apparatus for serving ads relevant to the content of a document, such as a Web page for example. Content targeted ad delivery systems, such as the AdSense advertising system by Google for example, have been used to serve ads on Web pages][0020 - serving parameters may be extrinsic to ad features, they may be associated with an ad as serving conditions or constraints. When used as serving conditions or constraints, such serving parameters are referred to simply as "serving constraints" (or "targeting criteria")]), wherein the content displayed on the mobile gaming device is independent of the first advertiser and the second advertiser (Sharma 2007/0156520 [0025; 0030; 0038; 0058]).
Sharma 2007/0156520 may not expressly disclose the claimed “competitor” features, however, Broder et al. 2009/0024469 teaches these features (Broder et al. 2009/0024469 [0074 - business rules … rules expressing constraints on the display of certain advertisements in association with specific web pages (e.g., "Cannot display advertisements related to a specific advertiser on a web page maintained by a web site sponsored by a competitor of the advertiser")] The syntactic matching engine 420 further retrieves business rules from the business rules database 454, such as, for example, rules expressing constraints on the display of certain advertisements in association with specific web pages (e.g., "Cannot display advertisements related to a specific advertiser on a web page maintained by a web site sponsored by a competitor of the advertiser").). It would have been obvious for one of ordinary skill in the art, at the time of the applicant's invention, to have modified Sharma 2007/0156520 to include the competitor features as taught by Broder et al. 2009/0024469. One of ordinary skill in the art would have been motivated to do so to avoid ad confusion which should prove to improve user experience, maximize profits, and optimize revenue (i.e., advertisement optimization / improve user experience).
Sharma 2007/0156520 may not expressly disclose the claimed “content displayed on the mobile gaming device is independent…” features, however, Tu et al. 2009/0055400 teaches these features (Tu et al. 2009/0055400 [0004 - data content can be displayed independent of publisher content displayed on the webpage] In one aspect, the invention features a data module that can be embedded in and displayed on a webpage. The data module can include data content pertaining to a particular topic for display on a webpage. The data content can be displayed independent of publisher content displayed on the webpage. The data module can further include a search field displayed within the data content, an advertisement presented within the data content, and a link in the data content for allowing a viewer of the webpage to manipulate and interact with the data content.). It would have been obvious for one of ordinary skill in the art, at the time of the applicant's invention, to have modified Sharma 2007/0156520 to include the competitor features as taught by Tu et al. 2009/0055400. One of ordinary skill in the art would have been motivated to do so to avoid ad confusion which should prove to improve user experience, maximize profits, and optimize revenue (i.e., advertisement optimization / improve user experience).
19/271,461 – Claim 6. (New) Sharma 2007/0156520 further teaches A non-transitory computer readable medium storing a plurality of executable instructions, wherein execution of the plurality of executable instructions by one or more processors causes the one or more processors to perform a plurality of operations (Sharma 2007/0156520 [0018; 0033; 0056; Figs. 1-4]) comprising: … receiving data based on which a first promotion associated with a first advertiser may be displayed on a mobile gaming device, in which the data includes a first set of criteria identifying when the first promotion should be displayed; receiving data based on which a second promotion associated with a second advertiser may be displayed on the mobile gaming device, in which the data includes a second set of criteria identifying when the second promotion should be displayed; identifying a set of criteria that occur on the mobile gaming device, in which the set of criteria meet the first set of criteria and the second set of criteria; determining if the first advertiser is a competitor of the second advertiser; if the first advertiser is a competitor of the second advertiser, displaying only one of the first and the second promotions on the mobile gaming device, wherein the set of criteria is identified from content displayed on the mobile gaming device, wherein the content displayed on the mobile gaming device is independent of the first advertiser and the second advertiser.
19/271,461 – Claim 11. (New) Sharma 2007/0156520 further teaches An apparatus comprising: a display; and one or more processors connected to the display, the one or more processors configured to perform a plurality of operations, the plurality of operations (Sharma 2007/0156520 [0015; 0046; 0054-0055; Figs. 5-8]) comprising: … receiving data based on which a first promotion associated with a first advertiser may be displayed on the display, in which the data includes a first set of criteria identifying when the first promotion should be displayed; receiving data based on which a second promotion associated with a second advertiser may be displayed on the display, in which the data includes a second set of criteria identifying when the second promotion should be displayed; identifying a set of criteria that occur on the apparatus, in which the set of criteria meet the first set of criteria and the second set of criteria; determining if the first advertiser is a competitor of the second advertiser; if the first advertiser is a competitor of the second advertiser, displaying only one of the first and the second promotions on the display, wherein the set of criteria is identified from content displayed on the apparatus, wherein the content displayed on the display is independent of the first advertiser and the second advertiser.
The remaining features/limitations of Claims 6 and 11, have similar features/limitations as of Claim 1, therefore those features/limitations and the claims are REJECTED under the same rationale as Claim 1.
Claims 2, 7, 12 are rejected under 35 U.S.C. 103 as being unpatentable over: Sharma 2007/0156520; in view of Broder et al. 2009/0024469; in further view of Tu et al. 2009/0055400; in view of Hariki 2007/0150617.
2. (New) Sharma 2007/0156520 further teaches The method of claim 1, wherein the content is provided by an application executed by the mobile gaming device (Sharma 2007/0156520 [0029 - Content … may be rendered on a "content rendering application or device". Examples of content rendering applications include an Internet browser (e.g., Explorer, Netscape, Opera, Firefox, etc.), a media player (e.g., an MP3 player, a Realnetworks streaming audio file player, etc.), a viewer (e.g., an Adobe Acrobat pdf reader), etc.][0035]).
Sharma 2007/0156520 may not expressly disclose the claimed “content is provided by an application executed by the mobile gaming device” features, however, Hariki 2007/0150617 teaches these features (Hariki 2007/0150617 [Abstract - mobile device handset includes a resource API to download UI content package data from a UI content server or UI content that is locally stored][0006 - mobile devices, however, are now capable of performing many different tasks, and even downloading and executing application programs][0019 - The mobile device handset includes a resource API to download UI content package data from a UI content server or UI content that is locally stored.][0022 - Any or all of the client computers in system 100 may be a workstation computer or they may be a computing device such as a notebook computer, personal digital assistant, or the like. The client computers may also be embodied within a mobile communication device, game console, or similar computing device that provides access to the Internet network 110 and a sufficient degree of user input and processing capability to execute or access the application programs][0038][0051 - FIG. 7, the application can gain access to local or external resources by simply specifying a resource ID]). It would have been obvious for one of ordinary skill in the art, at the time of the applicant's invention, to have modified Sharma 2007/0156520 to include the competitor features as taught by Hariki 2007/0150617. One of ordinary skill in the art would have been motivated to do so to avoid ad confusion which should prove to improve user experience, maximize profits, and optimize revenue (i.e., advertisement optimization / improve user experience).
7. (New) The non-transitory computer readable medium of claim 6, wherein the content is provided by an application executed by the one or more processors.
12. (New) The apparatus of claim 11, wherein the content is provided by an application executed by the one or more processors.
The remaining features/limitations of Claims 7 and 12, have similar features/limitations as of Claim 2, therefore those features/limitations and the claims are REJECTED under the same rationale as Claim 2.
Claims 3, 8, 13 are rejected under 35 U.S.C. 103 as being unpatentable over: Sharma 2007/0156520; in view of Broder et al. 2009/0024469; in further view of Tu et al. 2009/0055400; in view of Wisdom et al. 2006/0223600.
3. (New) Sharma 2007/0156520 further teaches The method of claim 1, wherein the content comprises gameplay content (Sharma 2007/0156520 [0025 - A property may include online content (e.g., a Website, an MP3 audio program, online games, etc.), offline content][0038 – video game publishers][0039 - a stadium scoreboard banner ad for an NBA game in San Antonio, Tex][0058 - a game pad]).
Sharma 2007/0156520 may not expressly disclose the claimed “content comprises gameplay content” features, however, Wisdom et al. 2006/0223600 teaches these features (Wisdom et al. 2006/0223600 [0023 - maintains a library of content available for each game. Some examples of game content are a game map and level, gameplay styles for a map or level]). It would have been obvious for one of ordinary skill in the art, at the time of the applicant's invention, to have modified Sharma 2007/0156520 to include the competitor features as taught by Wisdom et al. 2006/0223600. One of ordinary skill in the art would have been motivated to do so to avoid ad confusion which should prove to improve user experience, maximize profits, and optimize revenue (i.e., advertisement optimization / improve user experience).
8. (New) The non-transitory computer readable medium of claim 6, wherein the content comprises gameplay content.
13. (New) The apparatus of claim 11, wherein the content comprises gameplay content.
The remaining features/limitations of Claims 8 and 13, have similar features/limitations as of Claim 3, therefore those features/limitations and the claims are REJECTED under the same rationale as Claim 3.
Claims 4, 9, 14 are rejected under 35 U.S.C. 103 as being unpatentable over: Sharma 2007/0156520; in view of Broder et al. 2009/0024469; in further view of Tu et al. 2009/0055400; in view of Wisdom et al. 2006/0223600; in view of Beser et al. 2009/0025024.
4. (New) Sharma 2007/0156520 further teaches The method of claim 3, wherein the set of criteria is identified based on an outcome in the gameplay content (Sharma 2007/0156520 [0019 - When an online ad is served, one or more parameters may be used to describe how, when, and/or where the ad was served. These parameters are referred to as "serving parameters" below. Serving parameters may include, for example, one or more of the following][0020 - Although serving parameters may be extrinsic to ad features, they may be associated with an ad as serving conditions or constraints. When used as serving conditions or constraints, such serving parameters are referred to simply as "serving constraints" (or "targeting criteria"). For example, in some systems, an advertiser may be able to target the serving of its ad by specifying that it is only to be served on weekdays, no lower than a certain position, only to users in a certain location, etc.][0025 - A property may include online content (e.g., a Website, an MP3 audio program, online games, etc.), offline content][0038 – video game publishers][0039 - a stadium scoreboard banner ad for an NBA game in San Antonio, Tex][0058 - a game pad]).
Sharma 2007/0156520 may not expressly disclose the claimed “criteria is identified based on an outcome in the gameplay content” features, however, Beser et al. 2009/0025024 teaches (Beser et al. 2009/0025024 [0051 - The methods and system of the technology can alternatively or additionally be deployed to insert particular targeted actions (such as change the outcome of the game play or cause a particular result or happening to occur, or otherwise modify the game content) based on one or more characteristics of the audience, including, without limitation, the presence of an audience of a particular size and/or the composition or demographic of persons in one or both of the active and inactive audiences]). It would have been obvious for one of ordinary skill in the art, at the time of the applicant's invention, to have modified Sharma 2007/0156520 to include the competitor features as taught by Beser et al. 2009/0025024. One of ordinary skill in the art would have been motivated to do so to avoid ad confusion which should prove to improve user experience, maximize profits, and optimize revenue (i.e., advertisement optimization / improve user experience).
9. (New) The non-transitory computer readable medium of claim 8, wherein the set of criteria is identified based on an outcome in the gameplay content.
14. (New) The apparatus of claim 13, wherein the set of criteria is identified based on an outcome in the gameplay content.
The remaining features/limitations of Claims 9 and 14, have similar features/limitations as of Claim 4, therefore those features/limitations and the claims are REJECTED under the same rationale as Claim 4.
Claims 5, 10, 15 are rejected under 35 U.S.C. 103 as being unpatentable over: Sharma 2007/0156520; in view of Broder et al. 2009/0024469; in further view of Tu et al. 2009/0055400; in view of Wisdom et al. 2006/0223600; in view of Beser et al. 2009/0025024; in view of Gauselmann 2006/0116201.
5. (New) Sharma 2007/0156520 further teaches The method of claim 4, wherein the set of criteria is identified based on a winning outcome exceeding a threshold value (Sharma 2007/0156520 [0019 - When an online ad is served, one or more parameters may be used to describe how, when, and/or where the ad was served. These parameters are referred to as "serving parameters" below. Serving parameters may include, for example, one or more of the following][0020 - Although serving parameters may be extrinsic to ad features, they may be associated with an ad as serving conditions or constraints. When used as serving conditions or constraints, such serving parameters are referred to simply as "serving constraints" (or "targeting criteria"). For example, in some systems, an advertiser may be able to target the serving of its ad by specifying that it is only to be served on weekdays, no lower than a certain position, only to users in a certain location, etc.][0020-0021]).
Sharma 2007/0156520 may not expressly disclose the claimed “exceeding a threshold value” features, however, Gauselmann 2006/0116201 teaches (Gauselmann 2006/0116201 [0028 - as a jackpot increases in value, it exceeds a certain threshold, which may be randomly determined by system 10 or determined based on other criteria. When it is detected that a jackpot has exceeded this certain threshold, an award, which is less than the entire jackpot, is granted to one or more of the players]). It would have been obvious for one of ordinary skill in the art, at the time of the applicant's invention, to have modified Sharma 2007/0156520 to include the competitor features as taught by Gauselmann 2006/0116201. One of ordinary skill in the art would have been motivated to do so to avoid ad confusion which should prove to improve user experience, maximize profits, and optimize revenue (i.e., advertisement optimization / improve user experience).
10. (New) The non-transitory computer readable medium of claim 9, wherein the set of criteria is identified based on a winning outcome exceeding a threshold value.
15. (New) The apparatus of claim 14, wherein the set of criteria is identified based on a winning outcome exceeding a threshold value.
The remaining features/limitations of Claims 10 and 15, have similar features/limitations as of Claim 5, therefore those features/limitations and the claims are REJECTED under the same rationale as Claim 5.
Examiner’s Response to Arguments
Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
Per Applicants’ amendments/arguments, the rejections are withdrawn.
Examiner’s Response: Claim Rejections – 35 USC §112
Per Applicants’ amendments/arguments, the rejections are withdrawn.
Examiner’s Response: Claim Rejections – 35 USC § 103
Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
Per Applicants’ amendments/arguments, the rejections are withdrawn. See notes above for additional reasoning and rationale for dropping prior-art rejection including Applicant’s amendments and arguments and unique combination of features and elements not taught by the prior-art without hindsight reasoning.
Examiner’s Response: Claim Rejections – 35 USC §101
Per Applicants’ amendments/arguments, the rejections are withdrawn. See notes above for additional reasoning and rationale for dropping 35 USC 101 rejection including Applicant’s amendments, arguments, lack of abstract idea, and practical integration.
Regarding Claims 1-15, on page(s) 7-8 of Applicant’s Remarks (dated 07/16/2026), Applicants traverse the 35 USC §101 rejections arguing the following: the claims are not abstract and any alleged abstract idea is integrated into a practical application.
Applicant’s Arguments Not Persuasive
Applicant’s remarks have been fully considered but are not persuasive. Applicant contends that, even if claim 1 is deemed to recite an abstract idea, the claim as a whole is not “directed to” that idea because it integrates the idea into a practical application, allegedly improving the functioning of a computer by reducing the number of objects displayed and thereby conserving processing cycles, memory, and bandwidth.
This argument is not persuasive for the following reasons:
No Specific Technological Improvement – The claim does not recite any particular technological mechanism, algorithm, or modification to the mobile gaming device’s hardware or software that achieves the alleged improvement. The recited steps (receiving data, identifying criteria, determining advertiser competition, and displaying one promotion instead of two) are abstract data processing and decision-making operations.
Business Logic, Not Technical Solution – Any efficiency benefits result from the business logic of limiting displayed promotions, which is a form of advertising management, rather than from an improvement to the functioning of the computer or another technology or technical field.
Generic Computer Implementation – The “mobile gaming device” is recited at a high level of generality and is used merely as a tool to execute the abstract idea. The dependent claim features (application-provided content, gameplay content, outcome-based criteria, threshold comparisons) are implemented using generic computer functions and do not meaningfully limit the judicial exception.
MPEP § 2106.04(d)(1) Not Satisfied – While MPEP § 2106.04(d)(1) recognizes that a claim may not be “directed to” a judicial exception if it improves computer functionality or another technology, the claims here do not recite such an improvement. The alleged benefits are incidental to the abstract idea and do not reflect a specific technical advance.
Accordingly, Applicant’s arguments do not demonstrate that the claims integrate the abstract idea into a practical application or that they recite significantly more than the judicial exception.
Step 2A, Prong One – Claims are directed to an Abstract Idea
Applicant’s contention that claim 1 is not directed to an abstract idea is not persuasive. A review of the claim language shows that it recites limitations falling within the “mental processes” and “certain methods of organizing human activity” groupings.
Mental Processes – The steps of “identifying a set of criteria that occur on the gaming mobile device” and “determining if the first advertiser is a competitor of the second advertiser” are evaluations and comparisons that can be performed in the human mind or with pen and paper, without requiring a particular machine.
Certain Methods of Organizing Human Activity – The claim recites managing the display of promotions from different advertisers, including “displaying only one of the first and the second promotions” based on competitive relationships. This constitutes advertising management and marketing practices, which are expressly identified as certain methods of organizing human activity.
Generic Computer Implementation – While the claim recites a “mobile gaming device,” the device is used merely as a tool to receive, compare, and display information. The recited operations do not improve the functioning of the device itself, nor do they integrate the abstract idea into a practical application.
Accordingly, claim 1 is directed to an abstract idea under Step 2A, Prong One. The analysis will proceed to Step 2A, Prong Two to determine whether the claim integrates the abstract idea into a practical application.
Step 2A, Prong Two – Integration into a Practical Application
Applicant’s argument that claim 1 integrates any alleged abstract idea into a practical application by improving the functioning of a computer is not persuasive.
No Specific Improvement to Computer Functionality – While Applicant asserts that the claimed method “reduces the number of objects that need to be displayed” and thereby conserves processing cycles, memory, and bandwidth, the claim language does not recite any specific technological mechanism or modification to the mobile gaming device’s hardware or software that achieves such an improvement. Instead, the claim merely recites receiving data, identifying criteria, determining advertiser competition, and displaying one promotion instead of two — all of which are abstract data processing and decision making steps.
Generic Computer Implementation – The “mobile gaming device” is recited at a high level of generality and is used only as a tool to execute the abstract idea. The claimed steps do not change how the device operates at a technical level; they simply use conventional display and data handling functions for the purpose of implementing an advertising management scheme.
No Integration into a Practical Application – The alleged benefit of conserving resources results from the business logic of limiting displayed promotions, not from any improvement to the underlying technology or technical field. As explained in MPEP § 2106.04(d)(1), an improvement to a business process, even if it has incidental efficiency benefits, does not constitute an improvement to computer functionality unless the claim recites a specific technological solution. Claim 1 does not do so.
No Meaningful Limit on the Judicial Exception – The additional elements (generic mobile device, receiving/displaying data) are well understood, routine, and conventional in the field, and do not meaningfully limit the judicial exception beyond applying it in a generic computing environment.
Conclusion: The claim does not integrate the abstract idea into a practical application under Step 2A, Prong Two. The analysis therefore proceeds to Step 2B to determine whether the claim recites significantly more than the abstract idea.
Step 2B – Significantly More / Inventive Concept
Under Step 2B of the Current Patent Subject Matter Eligibility Guidance, the claim is evaluated to determine whether any additional elements, individually or in combination, amount to significantly more than the judicial exception.
Well Understood, Routine, and Conventional Elements – The recited “mobile gaming device” is a generic computing device performing its ordinary functions of receiving, processing, and displaying information. Such components and operations are well understood, routine, and conventional in the art.
Routine Data Processing – The steps of “receiving data”, “identifying a set of criteria”, “determining if the first advertiser is a competitor”, and “displaying only one of the first and the second promotions” are routine information processing activities that can be implemented using generic computer functions without any unconventional arrangement or technical improvement.
No Unconventional Technical Solution – The claim does not recite any specialized hardware, unique data structures, or non conventional software techniques that would amount to an inventive concept. The alleged efficiency benefits (e.g., reduced display objects) flow from the abstract business logic of limiting promotions, not from any technological innovation.
Generic Environment – Implementing the abstract idea in the context of a mobile gaming device does not add significantly more, as the device is merely a generic environment for executing the claimed steps.
Conclusion: When the abstract idea is set aside, the remaining claim elements are well understood, routine, and conventional, and therefore do not amount to significantly more than the judicial exception. Accordingly, claim 1 is ineligible under 35 U.S.C. § 101.
35 U.S.C. § 101 Rejection – Dependent Claims 2–5
Claims 2–5 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (an abstract idea) without significantly more.
Step 2A, Prong One:
Each of claims 2–5 depends from claim 1 and therefore incorporates the abstract idea identified in claim 1 — namely, a mental process and certain methods of organizing human activity (advertising management).
The additional limitations in the dependent claims merely specify the source or type of content and the nature of the criteria used in the decision-making process:
Claim 2: “wherein the content is provided by an application executed by the mobile gaming device” — specifying that the content comes from an application is a generic computer environment detail and does not alter the abstract nature of the underlying process.
Claim 3: “wherein the content comprises gameplay content” — limiting the content to gameplay is a field-of-use restriction that still falls within the abstract idea of managing advertising display.
Claim 4: “wherein the set of criteria is identified based on an outcome in the gameplay content” — identifying criteria based on gameplay outcomes is still a mental process of evaluating information and does not change the claim’s characterization.
Claim 5: “wherein the set of criteria is identified based on a winning outcome exceeding a threshold value” — specifying a threshold value is a mathematical comparison, which is itself a type of abstract idea.
Step 2A, Prong Two:
The additional elements in claims 2–5 do not integrate the abstract idea into a practical application.
The recited features (application-provided content, gameplay content, outcome-based criteria, threshold comparisons) are implemented using generic computer functions such as retrieving, processing, and displaying data.
These limitations merely apply the abstract idea in the context of a mobile gaming environment and do not improve the functioning of the computer or another technology.
Step 2B:
The additional limitations in claims 2–5 are well understood, routine, and conventional in the field of mobile gaming and digital advertising.
For example, providing content via an application, using gameplay outcomes as triggers, and applying threshold values are all conventional techniques in gaming and advertising systems.
When the abstract idea is set aside, the remaining claim elements do not amount to significantly more than the judicial exception.
Conclusion: Dependent claims 2–5, 7-10 and 12-15 (7-10 and 12-15 are similar to 2-5) are ineligible under 35 U.S.C. § 101 for the same reasons as claim 1, as the additional limitations do not meaningfully limit the judicial exception or add an inventive concept.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferable accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
PERTINENT PRIOR ART – Patent Literature
The prior-art made of record and considered pertinent to applicant's disclosure.
Shifflett et al. 2010/0121691 [0026 - By virtue of the fact that the given website contains an active non-compete advertisement tag without a first advertisement tag, subsequent requests are transmitted to solely the advertisement module 114 at the advertisement provider 110 and are no longer transmitted to the legacy server 150 The advertisement module 114 recognizes that the non-compete advertisement tag is now active, causing the advertisement module 114 to search the advertisement data store 116 of the content provider 110, which stores one or more advertisements transmitted by the advertisers 140, 142 and 144, to identify and select one or more advertisements for display at a given website of the first publisher 130, the second publisher 132 or the third publisher 134.]
Kamar et al. 2010/0332315 [0046 - Alternatively, a first advertisement 16 may be selected exclusively of a second advertisement 16; e.g., an advertiser may condition a payment for a presentation of an advertisement 16 only if no competing advertisements 16 are presented for the same advertisement opportunity]
Calderone 2007/0204002 [0071 - Contrary to known advertising techniques, the client 101 designated display areas 502, 504, 506, 508 and 510 are exclusive to only the client 101 and cannot display the advertising messages from a competing business entity]
Carpenter et al. 2007/0157227 [0030 - FIG. 4 is flow chart of a method of providing targeted advertising and sharing advertising revenue on a computer]
Grinsted et al. 2009/0076902 [0088 - one or more attributes of the first user may be taken into account when selecting the advertisement]
Harkins et al. 2008/0221982 [0051 - this information may be used to ensure that the advertising agent with which the advertisement bid is matched is not matched with a second advertisement bid submitted by a competing advertiser (i.e., a second advertiser that is advertising a product that competes with the product offered by the first advertiser)]
Shaul et al. 2008/0319850 [0074 - By referring to the specified advertising periods of each advertiser and scheduling selected advertisements to be sequentially displayed in a given advertising space from one advertising period to another, e.g. a first advertisement will be displayed during a period from 12 PM to 2 PM and a second advertisement will be displayed during a period from 2 PM to 6 PM, the host site administrator is able to maximize revenue from the advertising space]
Brier et al. 2009/0055405 [0011 - data content pertaining to a particular topic for display on a webpage independent of publisher content displayed on the webpage]
PERTINENT PRIOR ART – Non-Patent Literature (NPL)
The NPL prior-art made of record and considered pertinent to applicant's disclosure.
Sang-Yeal Han, Moon-Kyo Cho and Mun-Kee Choi, "Ubitem: a framework for interactive marketing in location-based gaming environment," International Conference on Mobile Business (ICMB'05), Sydney, NSW, Australia, 2005, pp. 103-108, doi: 10.1109/ICMB.2005.108.
J. Jun and K. J. Lee, "Design of Tag Match Advertising System and the Evaluation of the Business Model," 2008 IEEE Asia-Pacific Services Computing Conference, Yilan, Taiwan, 2008, pp. 1533-1537, doi: 10.1109/APSCC.2008.80.
THIS ACTION IS MADE FINAL
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW T. SITTNER whose telephone number is (571) 270-7137 and email: matthew.sittner@uspto.gov. The examiner can normally be reached on Monday-Friday, 8:00am - 5:00pm (Mountain Time Zone). Please schedule interview requests via email: matthew.sittner@uspto.gov
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/MATTHEW T SITTNER/
Primary Examiner, Art Unit 3629b
