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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,412,195. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences would be obvious. See the below table with specific regard to claim 1:
Instant Application
U.S. Patent No. 12,412,195
Claim 1:
A method comprising:
obtaining and storing first personal data of a user, wherein the first personal data is personal information of the user;
constructing-and storing a personal knowledge graph based on the first personal data, wherein the personal knowledge graph comprises the first personal data and a time at which the first personal data is generated;
obtaining parameter information of first advertisement content from an advertisement server, wherein the parameter information of the first advertisement content comprises one or more types of one or more advertisements in the first advertisement content and further comprises a link address of the first advertisement content;
obtaining, parameter information of second advertisement content from the parameter information of the first advertisement content based on the personal knowledge graph;
obtaining the second advertisement content based on the parameter information of the second advertisement content, wherein the second advertisement content comprises at least one advertisement of the one or more advertisements; and
displaying the second advertisement content on a display.
Claim 1:
A method comprising:
obtaining, by a terminal side electronic device, and storing, by the terminal side electronic device and onboard the terminal side electronic device, first personal data of a user, wherein the first personal data is personal information of the user;
constructing, by the terminal side electronic device and onboard the terminal side electronic device, and storing, by the terminal side electronic device and onboard the terminal side electronic device, a personal knowledge graph based on the first personal data stored on the terminal side electronic device, wherein the personal knowledge graph comprises the first personal data and a time at which the first personal data is generated;
obtaining, by the terminal side electronic device, parameter information of first advertisement content from an advertisement server of a server side, wherein the parameter information of the first advertisement content comprises one or more types of one or more advertisements in the first advertisement content and a link address of the first advertisement content, the first advertisement content is obtained based on screening a plurality of advertisements using group data;
obtaining, by the terminal side electronic device, parameter information of second advertisement content from the parameter information of the first advertisement content based on the personal knowledge graph;
obtaining, by the terminal side electronic device, the second advertisement content based on the parameter information of the second advertisement content, wherein the second advertisement content comprises at least one of the one or more advertisements; and
displaying, by the terminal side electronic device, the second advertisement content on a display.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because, while the claims herein are directed to a method and/or system, which could be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes), the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Regarding claims 1, 16, 17, the claims recite, in part, obtaining and storing first personal data of a user, wherein the first personal data is personal information of the user; constructing and storing a personal knowledge graph based on the first personal data, wherein the personal knowledge graph comprises the first personal data and a time at which the first personal data is generated; obtaining parameter information of first advertisement content, wherein the parameter information of the first advertisement content comprises one or more types of one or more advertisements in the first advertisement content and further comprises a link address of the first advertisement content; obtaining parameter information of second advertisement content from the parameter information of the first advertisement content based on the personal knowledge graph; obtaining the second advertisement content based on the parameter information of the second advertisement content, wherein the second advertisement content comprises at least one advertisement of the one or more advertisements; and displaying the second advertisement content.
The limitations, as drafted and detailed above, recite targeted advertising through construction and use of a personal knowledge graph, falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, and specifically advertising, marketing or sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements of advertisement server (claims 1, 16, 17), display (claims 1, 16, 17), electronic device (claims 16, 17), one or more processors (claim 16)¸ one or more non-transitory memories (claim 16), and non-transitory computer readable medium (claim 17). The additional technical elements above are recited at a high-level of generality (i.e. as a generic processor performing a generic computer function of obtaining, storing, constructing, and displaying) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. There are no additional functional limitations to be considered under prong two.
Accordingly, the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the
judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes).
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using advertisement server (claims 1, 16, 17), display (claims 1, 16, 17), electronic device (claims 16, 17), one or more processors (claim 16)¸ one or more non-transitory memories (claim 16), and non-transitory computer readable medium (claim 17) to perform the claimed functions amounts to no more than mere instructions to apply the exception using a generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent- eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat' l Ass' n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires a general purpose computer (see Applicant specification Paragraph 0443); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
The dependent claims 2-15 and 18-20 appear to merely limit constructing a personal knowledge graph based on a particular structure or second obtained personal data, specifics of the particular structure, deletion of data based on a time threshold, performing segmentation and tagging techniques on personal data to obtain a specific word, obtaining a first word that appears once, obtaining data at regular intervals, specifics of the type of advertisement content, broad training of a "model", ranking of advertisements, updating the "model" with viewing data, specifics of the personal information, and specifics of the order of play of the advertisements, and therefore only limit the application of the idea, and not add significantly more than the idea (i.e. “PEG” Step 2B=No).
The advertisement server (claims 1, 16, 17), display (claims 1, 16, 17), electronic device (claims 16, 17), one or more processors (claim 16)¸ one or more non-transitory memories (claim 16), and non-transitory computer readable medium (claim 17) are each functional generic computer components that perform the generic functions of obtaining, storing, constructing, and displaying, all common to electronics and computer systems.
Applicant's specification does not provide any indication that the advertisement server (claims 1, 16, 17), display (claims 1, 16, 17), electronic device (claims 16, 17), one or more processors (claim 16)¸ one or more non-transitory memories (claim 16), and non-transitory computer readable medium (claim 17) are anything other than generic, off-the-shelf computer components. Therefore, the claims do not amount to significantly more than the abstract idea (i.e. “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claims 1-20 are not patent eligible.
Novel/Non-Obvious Subject Matter
Claims 1-20 as currently written are allowable over prior art. However, the rejection under double patenting as well as the rejection under 35 U.S.C. 101 are currently pending and represent a barrier to allowability. Examiner notes that any amendments made to the claims in an attempt to correct pending rejections could drastically alter the claim scope and could open up the possibility of prior art being applied in a future action.
Prior art of record, including Khoury (U.S. Pub No. 2021/0042796), Li (CN 112805743), Lee (U.S. Pub No. 2020/0118010), and Lagi (U.S. Pub No. 2020/0065857) each include various features that could be found in the claim language directed towards targeting and knowledge graphs. However, none of the prior art of record, alone or in combination, teaches each and every limitation of the claimed invention. Specifically, none of the applied references teaches obtaining the personal data and constructing the personal knowledge graph, along with screening of ad data based on the specific requirements outlined, selecting the ad content based on the personal knowledge graph, all in combination and being performed by the terminal-side electronic device. Further, it would not be obvious to combine the prior art of record to arrive at the currently claimed invention and the order of steps currently taken by the currently claimed invention. There is no prior art that teaches each and every limitation of the invention as a whole in combination with one another. Therefore Examiner finds the independent claims to be allowable over the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL BEKERMAN whose telephone number is (571)272-3256. The examiner can normally be reached 9PM-3PM EST M, T, TH, F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL BEKERMAN/Primary Examiner, Art Unit 3621
Prosecution Insights