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 .
This Office action is in response to Application 19/296,552 filed on 08/11/2025, which is a continuation of 18/392,003 (now US Patent No. 12,387,240), which is a continuation of 14/923,076 (now US Patent No. 11,928,711) which claims benefit to 62/068,427 filed on 10/24/2014.
Claims 1-21 are currently pending and addressed below.
Claim Objections
Claims 5 and 15 are objected to because of the following informalities: Claims 5 and 15 do not end with a period as required by MPEP 608.01. Appropriate correction is required.
Contingent Limitations
The Examiner notes the following contingent limitations:
Claim 1: “in response to the comparison of the shape of the generated probabilistic distribution of campaign conversions against shapes of distributions for other campaigns indicating that a difference between the shape of the generated probabilistic distribution and one of the shapes of distributions for the other campaigns is greater than a threshold amount, modifying, using the hardware processor, a campaign frequency cap for the advertising campaign.” Under the broadest reasonable interpretation, this limitation is not required to be performed if the comparison of the shape of the generated probabilistic distribution of campaign conversions against shapes of distributions for other campaigns does not indicate a difference between the shape of the generated probabilistic distribution and one of the shapes of distributions for other campaigns not being grater than a threshold amount.
Claim 2: “transmitting a request to an advertising server to prevent the advertisement and additional advertisements within the advertising campaign from being served to client devices in response to determining that the modified campaign frequency cap has been exceeded; and in response to transmitting the request to the advertisement server to prevent the advertisement and the additional advertisements within the advertising campaign from being served to the client devices, determining whether the advertisement and the additional advertisement have been presented on the client devices using the client-side code.” Under the broadest reasonable interpretation, these limitations are not required to be performed if the modified campaign frequency cap has not been exceeded.
Claim 3: “in response to determining that the advertisement and the additional advertisement have been presented on one or more of the client devices, determining that the advertisement server has not complied with the transmitted request; and determining whether the client device that received the advertisement and the additional advertisement and that was not in compliance with the transmitted request to the advertisement server to prevent the advertisement and the additional advertisements within the advertising campaign from being served to the client devices is being correctly identified by the advertisement server.” Under the broadest reasonable interpretation, these limitations are not required to be performed if the advertisement and the additional advertisement have not been presented on one or more of the client devices.
Claim 5: “wherein the client-side code is inserted into the advertisement from the advertising campaign that is presented on a plurality of client devices in response to determining that the campaign frequency cap has not been exceeded.” Under the broadest reasonable interpretation, this limitation is not required to be performed if the campaign frequency cap has been exceeded.
Claim 10: “wherein the method further comprises determining an in- view time of a page that includes the advertisement on the client device in response to determining that the campaign frequency cap has not been exceeded.” Under the broadest reasonable interpretation, this limitation is not required to be performed if the campaign frequency cap has been exceeded.
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 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,387,240 B2 and claims 1-21 of U.S. Patent No. 11,928,711 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application is anticipated by the patent. The instant application is slightly broader than the patent. Therefore, the patent is in essence a “species” of the generic invention of the instant application. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In Re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 19 states that it depends from the system of claim 1. However, claim 1 is a method claim. The Examiner suggests amending claim 19 to depend from the system of claim 11. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-21 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a nature phenomenon, or an abstract idea) without significantly more.
Step 1:
Claims 1-21 is/are directed towards a statutory category (i.e., a process, machine, manufacture, or composition of matter) (Step 1, Yes).
Step 2A Prong One:
Claim 1 recites (additional elements underlined):
A method for determining whether to present an advertisement on client devices, the method comprising:
inserting, using the hardware processor, client-side code into an advertisement from the advertising campaign that is presented on a plurality of client devices, wherein the client-side code, when executed by each of the plurality of client devices, causes each client device to determine a probability of whether the advertisement in the advertising campaign was likely to have been viewed on a client device;
determining, using the hardware processor, whether each of the plurality of client devices is one of a subset of converting users from a plurality of user types;
determining, using the hardware processor, for each of the client devices identified as one of a subset of converting users, an expected number of viewed advertisements for the advertising campaign based on the probability of whether the advertisement in the advertising campaign was likely to have been viewed on a client device of one of the subset of converting users;
generating, using the hardware processor, a probabilistic distribution of campaign conversions as a function of the number of advertisements each of the subset of converting users viewed prior to performing a conversion event in response to determining the expected number of viewed advertisements for the advertising campaign based on the probability of whether the advertisement in the advertising campaign was likely to have been viewed on the client device of one of the subset of converting users;
comparing, using the hardware processor, a shape of the generated probabilistic distribution of campaign conversions against shapes of distributions for other campaigns;
in response to the comparison of the shape of the generated probabilistic distribution of campaign conversions against shapes of distributions for other campaigns indicating that a difference between the shape of the generated probabilistic distribution and one of the shapes of distributions for the other campaigns is greater than a threshold amount, modifying, using the hardware processor, a campaign frequency cap for the advertising campaign.
Under the broadest reasonable interpretation, the limitations outlined above that describe or set forth the abstract idea, cover performance of the limitations in the mind but for the recitation of generic computer(s) and/or generic computer component(s). That is, other than reciting the additional elements, nothing in the claim precludes the limitations from practically being performed in the mind. These limitations are considered a mental process because the limitations include an observation, evaluation, judgment, and/or opinion. These limitations are also similar to “collecting information, analyzing it, and displaying certain results of the collection and analysis” and/or “collecting and comparing known information” which were determined to be mental processes in MPEP 2106.04(a)(2)(III)(A). The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer” (see MPEP 2106.04(a)(2)(III)(C)). The mere nominal recitation of the additional elements do not take the claims out of the mental process grouping. Therefore, the claim recite a mental process (Step 2A Prong One, Yes).
The limitations outlined above also describe or set forth an advertising/marketing activity. Advertising/marketing fall within the certain method of organizing human activity enumerated grouping of abstract ideas. The limitations outlined above also describe or set forth a fundamental economic principle or practice because advertising/marketing is related to commerce and economy. The limitations outlined above also describe or set forth a commercial interaction (e.g., advertising, marketing or sales activities or behaviors, business relations). The limitations outlined above also describe or set forth the managing of personal behavior or relationships or interactions between people. Therefore, the claim recites a certain method of organizing human activity (Step 2A Prong One, Yes).
The limitations outlined above that describe or set forth the abstract idea are also considered mathematical concepts at least because the above limitations generate a probabilistic distribution of campaign conversions as a function of the number of advertisements each of the subset of converting users viewed prior to performing a conversion event in response to determining the expected number of viewed advertisements for the advertising campaign based on the probability of whether the advertisement in the advertising campaign was likely to have been viewed by one of the subset of converting users; compare a shape of the generated probabilistic distribution of campaign conversions against shapes of distributions for other campaigns; and in response to the comparison of the shape of the generated probabilistic distribution of campaign conversions against shapes of distributions for other campaigns indicating that a difference between the shape of the generated probabilistic distribution and one of the shapes of distributions for the other campaigns is greater than a threshold amount, modify a campaign frequency cap for the advertising campaign. These limitations are similar to “organizing information and manipulating information through mathematical correlations” which was determined to be a mathematical concept in MPEP 2106.04(a)(2)(II). Therefore, the claim recites a mathematical concept (Step 2A Prong One, Yes).
Step 2A Prong Two:
In Step 2A Prong Two, the additional element(s) outlined above are recited at a high level of generality, and under the broadest reasonable interpretation, are generic computer(s) and/or generic computer component(s) that perform generic computer functions. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional element(s) amount adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computer(s) and/or generic computer component(s) does not integrate the judicial exception similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. The Examiner notes that “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter" (see pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use (e.g., in a computer environment). The courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. There is no indication that the combination of elements improves the functioning of a computer, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claims as a whole is more than a drafting effort designed to monopolize the exception. Their collective functions merely provide generic computer implementation (Step 2A Prong Two, No).
Step 2B:
In Step 2B, the additional elements also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong Two. The Examiner notes that revised Step 2A Prong Two overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Their collective functions merely provide generic computer implementation (Step 2B, No).
Claim(s) 2-11 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 1 (i.e., mathematical concepts, certain methods of organizing human activities and/or mental processes).
Claim 2 recites the additional elements “to an advertising server,” “to client devices,” “to the advertisement server,” “to the client devices,” and “on the client devices using the client-side code.” Claim 3 recites the additional elements “on one or more of the client devices,” “the client device,” “to the advertisement server,” “to the client device,” and “by the advertisement server.” Claim 4 recites the additional elements “to client devices.” Claim 5 recites the additional elements “wherein the client-side code is inserted into” and “on a plurality of client devices.” Claim 6 recites the additional element “a page.” Claim 8 recites the additional elements “the client devices” and “on the client devices.” Claim 10 recites the additional elements “a page” and “on the client device.” However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claims 7 and 9 do not recite any other additional elements. Therefore, for the same reasons explained above with respect to claim 1, claims 7 and 9 also do not integrate the judicial exception into a practical application or amount to significantly more.
Claim 11 recites (additional elements underlined):
A system for determining whether to present an advertisement on client devices, the system comprising:
a hardware processor of a server that is configured to:
insert client-side code into an advertisement from the advertising campaign that is presented on a plurality of client devices, wherein the client-side code, when executed by each of the plurality of client devices, causes each client device to determine a probability of whether the advertisement in the advertising campaign was likely to have been viewed on a client device;
determine whether each of the plurality of client devices is one of a subset of converting users from a plurality of user types;
determine, for each of the client devices identified as one of a subset of converting users, an expected number of viewed advertisements for the advertising campaign based on the probability of whether the advertisement in the advertising campaign was likely to have been viewed on a client device of one of the subset of converting users;
generate a probabilistic distribution of campaign conversions as a function of the number of advertisements each of the subset of converting users viewed prior to performing a conversion event in response to determining the expected number of viewed advertisements for the advertising campaign based on the probability of whether the advertisement in the advertising campaign was likely to have been viewed on the client device of one of the subset of converting users;
compare a shape of the generated probabilistic distribution of campaign conversions against shapes of distributions for other campaigns;
in response to the comparison of the shape of the generated probabilistic distribution of campaign conversions against shapes of distributions for other campaigns indicating that a difference between the shape of the generated probabilistic distribution and one of the shapes of distributions for the other campaigns is greater than a threshold amount, modify a campaign frequency cap for the advertising campaign.
For the same reasons explained above with respect to claim 1, claim 11 also recites an abstract idea in Step 2A Prong One. For the same reasons explained above with respect to claim 1, claim 11 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claim(s) 12-20 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 1 (i.e., mathematical concepts, certain methods of organizing human activities and/or mental processes).
Claim 12 recites the additional elements “wherein the hardware processor is further configured to,” “to an advertising server,” “to client devices,” “to the advertisement server,” “to the client devices,” and “on the client devices using the client-side code.” Claim 13 recites the additional elements “wherein the hardware processor is further configured to,” “on one or more of the client devices,” “the advertisement server,” “the client devices,” “to the advertisement server,” “to the client devices,” and “by the advertisement server.” Claim 14 recites the additional elements “wherein the hardware processor is further configured to” and “client devices.” Claim 15 recites the additional elements “wherein the client-side code is inserted into the” and “on a plurality of client devices.” Claim 16 recites the additional element “a page.” Claim 18 recites the additional elements “the client devices” and “on the client devices.” Claim 20 recites the additional elements “wherein the hardware processor is further configured to,” “on a page,” and “on the client devices.” However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claims 17 and 19 do not recite any other additional elements. Therefore, for the same reasons explained above with respect to claim 11, claims 17 and 19 also do not integrate the judicial exception into a practical application or amount to significantly more.
Claim 21 recites (additional elements underlined):
A non-transitory computer-readable medium containing computer-executable instructions that, when executed by a processor, cause the processor to perform a method for determining whether to present an advertisement on client devices, the method comprising:
inserting client-side code into an advertisement from the advertising campaign that is presented on a plurality of client devices, wherein the client-side code, when executed by each of the plurality of client devices, causes each client device to determine a probability of whether the advertisement in the advertising campaign was likely to have been viewed on a client device;
determining whether each of the plurality of client devices is one of a subset of converting users from a plurality of user types;
determining for each of the client devices identified as one of a subset of converting users, an expected number of viewed advertisements for the advertising campaign based on the probability of whether the advertisement in the advertising campaign was likely to have been viewed on a client device of one of the subset of converting users;
generating a probabilistic distribution of campaign conversions as a function of the number of advertisements each of the subset of converting users viewed prior to performing a conversion event in response to determining the expected number of viewed advertisements for the advertising campaign based on the probability of whether the advertisement in the advertising campaign was likely to have been viewed on the client device of one of the subset of converting users;
comparing a shape of the generated probabilistic distribution of campaign conversions against shapes of distributions for other campaigns;
in response to the comparison of the shape of the generated probabilistic distribution of campaign conversions against shapes of distributions for other campaigns indicating that a difference between the shape of the generated probabilistic distribution and one of the shapes of distributions for the other campaigns is greater than a threshold amount, modifying a campaign frequency cap for the advertising campaign.
For the same reasons explained above with respect to claim 1, claim 21 also recites an abstract idea in Step 2A Prong One. For the same reasons explained above with respect to claim 1, claim 21 also does not integrate the judicial exception into a practical application or amount to significantly more.
Prior Art
After a thorough search on the claims as currently presented, the claims are found to recite novel and non-obvious subject matter. The closest prior art found to date are the following:
Axe et al. (US 2006/0224445 A1) disclose the concept of adjusting a price paid for an ad impression using an estimated probability that the ad will be viewed, or otherwise perceived or sensed, or using one or more factors which may be used to estimate such a probability. The price and/or probability may be adjusted using events occurring after the impression of the ad.
Haley et al. (US 2005/0086110 A1) discloses the concept of controlling advertisement viewings by a person during an advertising cycle. A probability of return for a customer is evaluated and an advertisement is show to the customer based on a function of at least the probability of return and a value of the return. Once the customer has seen the advertisement a target number of times, the customer is no longer shown the advertisement.
Park et al. (US 2011/0119126 A1) discloses the concept of online monitoring systems to determine offline advertising effectiveness.
Briggs (US 2006/0041480 A1) discloses the concept of determining and plotting advertisement effectiveness of cross media campaigns.
Calvert et al. (US 2003/0014304 A1) discloses the evaluation of Internet advertisement effectiveness that involves Internet activity information associated with a multitude of cookies, and storing the information in a database.
Mattern et al. (US 2011/0055001 A1) discloses the concept of increase or decreasing advertisement frequency caps. However, Mattern also does not appear to disclose or render obvious the claims as currently amended.
While the prior art teach some of the limitations of the claimed invention, the prior art do not teach the following limitations when viewing the claimed invention as a whole: “generating, using the hardware processor, a probabilistic distribution of campaign conversions as a function of the number of advertisements each of the subset of converting users viewed prior to performing a conversion event in response to determining the expected number of viewed advertisements for the advertising campaign based on the probability of whether the advertisement in the advertising campaign was likely to have been viewed on the client device of one of the subset of converting users; comparing, using the hardware processor, a shape of the generated probabilistic distribution of campaign conversions against shapes of distributions for other campaigns; in response to the comparison of the shape of the generated probabilistic distribution of campaign conversions against shapes of distributions for other campaigns indicating that a difference between the shape of the generated probabilistic distribution and one of the shapes of distributions for the other campaigns is greater than a threshold amount, modifying, using the hardware processor, a campaign frequency cap for the advertising campaign.” Additionally, while each of the individual features may have been known per se, there is no teaching or suggestions absent Applicant’s own disclosure to combine these features in the specific manner claimed other than with impermissible hindsight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAM REFAI whose telephone number is (313)446-4822. The examiner can normally be reached M-F 9:00am-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraf can be reached at 571-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAM REFAI/Primary Examiner, Art Unit 3621
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