DETAILED ACTION
Acknowledgments
The present application is being examined under the pre-AIA first to invent provisions.
This action is in reply to the application filed on 11/03/2025.
Claims 1-5 are currently pending and have been examined.
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 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patent eligible subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
Step 1:
The claims recite a process, system, apparatus, article of manufacture, and/or a nontransitory storage medium with instructions, each of which are proper statutory categories.
Step 2A (prong 1):
Claim 1:
The claim limitations are grouped as shown immediately following:
creating a reference number which denotes a web user's online and retail habits (Continuously Refining Online Genotype) based on historical data assessed on a user's properly equipped smart phone; (Certain Methods Of Organizing Human Activity -business relations or managing personal behavior or relationships or interactions between people including and following rules or instructions)
emitting or broadcasting said reference number by a computer peripheral device or a mobile communication device; (Certain Methods Of Organizing Human Activity -business relations or managing personal behavior or relationships or interactions between people including and following rules or instructions)
capturing the reference number in order to display relevant advertisements on digital out-of-home media including Taxi TV, Gas Station TV, billboards, or digital signage based on the characteristics of the reference number. (Certain Methods Of Organizing Human Activity -business relations or managing personal behavior or relationships or interactions between people including and following rules or instructions)
Additional dependent claims 2-5 do not appear remedy the deficiency.
Step 2A (prong 2):
Claim 1:
…a user's properly equipped smart phone
… a computer peripheral device
…a mobile communication device
… Taxi TV, Gas Station TV, billboards, or digital signage
These remaining claim limitations are delineated as shown immediately preceding. The abstract idea is not integrated into a practical application. There are no improvements to the functioning of a computer, other technology or technical field, a particular machine is not cited, nothing is transformed to a different state or thing, the abstract idea is not more than a drafting effort designed to monopolize the abstract idea. The claim merely uses a computer as a tool to perform the abstract idea, which is generally linked to a particular field of use, in this case, marketing and advertising. Thus, these limitations are recited at a high-level of generality (i.e., as a generic processor and memory performing a generic computer function of processing and storing data) such that it amounts no more than mere instructions to apply the exception using a generic computer component – MPEP 2106.05(f). Further, receiving data, evaluating data and distributing data are data gathering and data outputting, which has no effect on technology and does no more than generally link the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h).
Step 2B:
The claim limitations do not provide an Inventive Concept. The claim limitations do not recite additional elements that amount to significantly more that the abstract idea because the additional elements of the system comprising a computer processor, computer readable storage medium with instructions, and a memory configured to store information, each recited at a high level of generality in a computer network which only perform the universal computer functions of accessing, receiving, storing, and processing data, transmitting and presenting information. Taking the elements both individually and as an ordered combination, the function performed by the computer at each step of the process is purely orthodox. Using a computer to obtain and display data are some of the most basic functions of a computer. As shown, the individual limitations claimed are some of the most rudimentary functions of a computer. The technical solution described in this invention does not alter hardware structure or its routine, does not transform the character of the information being processed, does not identify a novel source or type of data, does not advance the functionality of a computer as a tool, and does not incorporate specific rules enabling the computer to accomplish innovative utilities. In summary, the individual step and/or component does no more than require a general computer to perform standard computer functions. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of a computer devices amounts to no more than mere instructions to apply the exception using a generic computer component - requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370-71, 115 USPQ2d 1636, 1642 (Fed. Cir. 2015);
35 U.S.C. § 112 Sixth Paragraph / 112(f) Content
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as "configured to" or "so that"; and
the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph, Not Invoked Despite Presence of “Means” or “Step”
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: means to resolve any conflicts based on a plurality of characters within the Continuously Refining Online Genotype queuing different advertisements on a single digital out-of-home medium, by accounting for importance of the individual characters within the Continuously Refining Online Genotype and according priority to advertisers based upon payment for featured presentation.
in claim 4.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If Applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, Applicant may:
amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or
present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1, 4, and 5 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Boyd (USPGP 2009/0101706 A1) hereinafter BOYD, in view of Terui (USPGP 2009/0089120 A1), hereinafter TERUI.
Claim 1:
BOYD as shown below discloses the following limitations:
creating a reference number which denotes a web user's online and retail habits (Continuously Refining Online Genotype) based on historical data assessed on a user's properly equipped smart phone; (see at least paragraphs 0038-0039, 0041, 0048, 0055-0056)
emitting or broadcasting said reference number by a computer peripheral device or a mobile communication device; (see at least paragraph 0036)
capturing the reference number in order to display relevant advertisements on digital out-of-home media including Taxi TV, Gas Station TV, billboards, or digital signage based on the characteristics of the reference number. (see at least paragraph 0036, 0038-0039, 0041, 0048, 0055-0056)
BOYD does not specifically disclose each of the above limitations within a single embodiment. In this case, each of the elements claimed are all shown by the prior art of record but not combined as claimed. However, the technical ability exists to combine the elements as claimed and the results of the combination are predictable. Therefore, when combined, the elements perform the same function as they did separately. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Consequently, it would have been obvious to one of ordinary skill in the art at the time of the invention to combine/modify the method of BOYD because, “It would be desirable to provide an advertising system and method which selects and displays advertisements which are targeted to individual(s). More specifically, it would be desirable to provide an effective way of delivering targeted advertisements to passive consumers who are not interacting with the advertising system such as by using a personal computer via the internet and who are most likely to positively respond to the ad, e.g., purchase and/or use the products or services being offered or advertised.” (BOYD: paragraph 0017). Additionally, there is a recognized problem or need in the art including market pressure, design need, etc., and there are a finite number of identified predictable solutions. Accordingly, those in the art could have pursued known solutions with reasonable expectation of success. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Fundamentally, in the competitive business climate, there is a profit-driven motive to maximize the profitability of goods and services that are provided or marketed to customers. Enterprises typically use business planning to make decisions in order to maximize profits.
Claim 4:
BOYD discloses the limitations as shown in the rejections above. BOYD further discloses the following limitations:
wherein the method further comprises means to resolve any conflicts based on a plurality of characters within the Continuously Refining Online Genotype queuing different advertisements on a single digital out-of-home medium, by accounting for importance of the individual characters within the Continuously Refining Online Genotype and according priority to advertisers based upon payment for featured presentation.
See at least paragraphs 0044, 0048-0049, 0051-0053.
Claim 5:
BOYD discloses the limitations as shown in the rejections above. BOYD further discloses the following limitations:
recording and storing data on the digital out-of-home media regarding which advertisements were displayed and which Continuously Refining Online Genotype number qualities prompted the advertisement to be displayed.
See at least paragraph 0094.
Claims 2, 3 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Boyd (USPGP 2009/0101706 A1) hereinafter BOYD, in view of Martin et al. (US 6,795,707,B2), hereinafter MARTIN.
Claim 2:
BOYD discloses the limitations as shown in the rejections above. MARTIN further discloses the following limitations:
wherein the method further comprises continuously refreshing and refining the reference number based on information received about the web user's continuously changing history of web activity.
See at least column 19, lines 4-29. In this case, each of the elements claimed are all shown by the prior art of record but not combined as claimed. However, the technical ability exists to combine the elements as claimed and the results of the combination are predictable. Therefore, when combined, the elements perform the same function as they did separately. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Consequently, it would have been obvious to one of ordinary skill in the art at the time of the invention to combine/modify the method of BOYD with the technique of MARTIN because, “It would be desirable to provide an advertising system and method which selects and displays advertisements which are targeted to individual(s). More specifically, it would be desirable to provide an effective way of delivering targeted advertisements to passive consumers who are not interacting with the advertising system such as by using a personal computer via the internet and who are most likely to positively respond to the ad, e.g., purchase and/or use the products or services being offered or advertised.” (BOYD: paragraph 0017). Additionally, there is a recognized problem or need in the art including market pressure, design need, etc., and there are a finite number of identified predictable solutions. Accordingly, those in the art could have pursued known solutions with reasonable expectation of success. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Fundamentally, in the competitive business climate, there is a profit-driven motive to maximize the profitability of goods and services that are provided or marketed to customers. Enterprises typically use business planning to make decisions in order to maximize profits.
Claim 3:
The combination of BOYD/MARTIN discloses the limitations as shown in the rejections above. BOYD further discloses the following limitations:
wherein in said method further comprises deleting all history of previous reference numbers.
See at least paragraph 0079.
CONCLUSION
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Non Patent Literature:
King, Nancy J. “Profiling the Mobile Customer – Privacy Concerns When Behavioural Advertisers Target Mobile Phones – Part I.” (September 2010). Retrieved online 02/01/2021.
https://ir.library.oregonstate.edu/downloads/vh53ww39w
Lawson, Stephen. “Ten Ways Your Smartphone Knows Where You Are.” (06 April 2012). Retrieved online 05/12/2018.
https://www.pcworld.com/article/253354/ten_ways_your_smartphone_knows_where_you_are.html.
GOOGLE ADS HELP. “Location Targeting.” (April 14, 2009). Retrieved online 04/13/2022. https://support.google.com/google-ads/answer/6317?hl=en
Foreign Art:
BALUJA et al. (JP 2011/065658 A). “To provide a call function to generate and/or provide a local on-line advertisement. The method generates a sets of local (for example, on-line) advertisements (a) by acquiring a set of information pieces about a store and a facility (for example, local) including respectively enterprise address information and/or phone numbers, (b) by determining an address, using at least part of the enterprise address information and at least part of the phone numbers, as to each of the set, and (c) by generating an advertisement including target specifying information for specifying an advertisement provision target in a query related to the determined address, as to each of the set, The method can receive the query including information about an address of a client device, and can determine the at least one advertisement including the target specifying information for specifying the target in an address position of the client device out of the generated advertisements.”
GUAN et al. (WO 2007/104237 A1). “The present invention comprises a method for spreading advertisement via a mobile phone and mobile phone thereof. Setting a displaying advertisement module in the mobile phone; storing the advertisement data to play in the local-storage of the mobile phone, after receiving an incoming call signal or a short message by the mobile phone, generating informing message according to the incoming call number or the short message information; intercepting and capturing the informing message by the advertisement displaying module; extracting need information and advertisement information from it, playing the advertisement during ringing or displaying the short message. Since displaying the advertisement only when there being incoming call or coming new short message, user's normal working or living not being effected at all. Since only storing the newest advertisement data or auto-updating advertisement data in the mobile phone, the least storage resource of the mobile phone being occupied and not needing the mobile phone user deleting every piece of advertisement by hand.”
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to James A. Reagan (james.reagan@uspto.gov) whose telephone number is 571.272.6710. The Examiner can normally be reached Monday through Friday from 9 AM to 5 PM. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, John Hayes, can be reached at 571.272.6708.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal/pair . Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866.217.9197 (toll-free).
Any response to this action should be mailed to:
Commissioner for Patents
PO Box 1450
Alexandria, Virginia 22313-1450
or faxed to 571-273-8300.
Hand delivered responses should be brought to the United States Patent and Trademark Office Customer Service Window:
Randolph Building
401 Dulany Street
Alexandria, VA 22314.
/JAMES A REAGAN/Primary Examiner, Art Unit 3697
james.reagan@uspto.gov
571.272.6710 (Office)
571.273.6710 (Desktop Fax)
Prosecution Insights