www.uspto.gov
`
`UNITEDSTATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/410,405
`
`05/13/2019
`
`Jason Cohen
`
`020699-108710US
`
`3583
`
`Trellis IP Law Group/ Sony Corp.
`235 Westlake Center #23
`Daly City, CA 94015
`
`LEVINE, ADAM L
`
`3689
`
`10/28/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`docket @trellislaw.com
`
`megan @trellislaw.com
`sherry @trellislaw.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`16/410,405
`Cohen, Jason
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`ADAM LEVINE
`3689
`No
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 28 June 2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1,3-8,10-15 and 17-20 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C} Claim(s)__ is/are allowed.
`Claim(s) 1,3-8,10-15 and 17-20 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)7) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.1.) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) [[] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20241021
`
`

`

`Application/Control Number: 16/410,405
`Art Unit: 3689
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`The present application is being examined under the pre-AlA first to invent
`
`provisions.
`
`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 ofrejection if the prior art relied upon, and the rationale supporting the
`
`rejection, would be the same undereither status.
`
`Response to Amendment
`
`Applicant's amendment and remarks filed June 28, 2024, are responsive to the
`
`office action mailed March 28, 2024. Claims 1, 3-8, 10-15, and 17-20, were previously
`
`pending and claims 1, 8, and 15, have been amended. Claims 1, 3-8, 10-15, and 17-
`
`20, are therefore currently pending and consideredin this office action.
`
`Response to Arguments
`
`Pertaining to rejection under 35 USC 101 in the previous office action
`
`Applicant's arguments filed June 28, 2024, have been fully considered but they
`
`are not persuasive. Claims 1, 3-8, 10-15, and 17-20, are rejected under 35 U.S.C. 101
`
`because the claimed invention is directed to an abstract idea without significantly more.
`
`Applicant argues
`
`“Applicant respectfully submits that it is not possible fora human to
`perform the steps as claimed. For example, a human could not generate a
`user interface page.... a human could not display, on the user interface
`page of the user device,a title.... a human could not build a plurality of
`personalized digital music files... a human could not display in a user
`interface the respective overlaid picture.” Remarks p.12.
`
`

`

`Application/Control Number: 16/410,405
`Art Unit: 3689
`
`Page 3
`
`Applicant's argument engagesin circular logic by declaring that these various
`
`steps cannot be performed by a person becauseit is assumed they occur in a
`
`digital/computer environment. This does not conform with any aforementioned standard
`
`for determining the eligibility question andin its various forms this argument has
`
`explicitly been rejected in multiple federal court decisions. See, e.g., OIP Techs., Inc. v.
`
`Amazon.com, Inc., 788 F.3d 1359, 2015 U.S. App. LEXIS 9721, 115 U.S.P.Q.2D (BNA)
`
`(Fed. Cir. 2015); DATATRAKInt'l, Inc. v. Medidata Solutions, Inc., 2015 U.S. Dist.
`
`LEXIS 151039 (N.D. Ohio Nov. 6, 2015).
`
`In any case a human could in fact perform
`
`analogous activities in anoncomputer environment, /.e., building a list, showingatitle,
`
`creating a picture, etc..
`
`Because applicant directs comments to “embedding” being directed to “digital
`
`visual and auditory data,” examiner notes that embedding is not further described in the
`
`specification.
`
`It can therefore only be understood in the simplest generic terms as
`
`merely including an image with another image. The office cannotinject a more
`
`technical description where noneis disclosed in the application.
`
`Applicant declares “that the combination of elements is integrated into a practical
`
`application,” providing a broadly descriptive summary of the claimed subject matter with
`
`reference to the specification. Remarks pp.13-14. Applicant does not identify additional
`
`elements or indicate how they integrate the abstract ideas into a practical application
`
`and fails to indicate in any way how the subject matter meets the expressly defined
`
`rationale for making the “practical application” determination asit is explained in the
`
`MPEPand asis donein the body of the rejection. Applicant then “respectfully submits
`
`that the features as claimed cannot be performed in the mind,” reprising the previous
`
`

`

`Application/Control Number: 16/410,405
`Art Unit: 3689
`
`Page 4
`
`argument addressed above.
`
`/bid. These arguments are not persuasive and the
`
`rejection is maintained.
`
`Examiner suggests applicant attemptto identify each device that actively
`
`performs each step with specific reference to the technical implementation of each, i.e.,
`
`how the device performs the step, rather than merely claiming devices as a location
`
`where the process is implemented, and the goal that each step hopes to achieve. This
`
`would at least begin to address what is required for “additional elements” to integrate
`
`the abstract idea into a practical application. The rejection is maintained.
`
`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 improvementthereof, may obtaina patent
`therefor, subjectto the conditions and requirementsofthis title.
`
`Claims 1, 3-8, 10-15, and 17-20, are rejected under 35 U.S.C. 101 because
`
`the claimed invention is directed to an abstract idea without significantly more.
`
`When considering subject matter eligibility under 35 U.S.C. 101,
`
`it must be
`
`determined whether the claim is directed to one of the four statutory categories of
`
`invention (i.e., process, machine, manufacture, or composition of matter) (step 1).
`
`If the
`
`claim does fall within one of the statutory categories,
`
`it must then be determined
`
`whether the claim is directed to a judicial exception (/.e., law of nature, natural
`
`phenomenon, and abstract idea) (step 2A), and if so, it must additionally be determined
`
`whether the claim is a patent-eligible application of the exception (step 2B). Alice Corp.
`
`Pty. Ltd. v. CLS BankInt'l, 134 S. Ct. 2347, 189 L. Ed. 2d 296, 2014 U.S. LEXIS 4303,
`
`110 U.S.P.Q.2D (BNA) 1976, 82 U.S.L.W. 4508, 24 Fla. L. Weekly Fed. S 870, 2014 WL
`
`

`

`Application/Control Number: 16/410,405
`Art Unit: 3689
`
`2765283 (U.S. 2014); MPEP 2106.
`
`Step1:
`
`Page 5
`
`In the instant case claims 1 and 3-7 are directed to a machine, claims 8 and 10-
`
`14 are directed to a manufacture, and claims 15 and 17-20 are directed to a process.
`
`All claims are therefore within statutory categories. See MPEP 2106.03, Eligibility Step
`
`1.
`
`Step 2A, Prong 1:
`
`These claims also recite, inter alia,
`
`“generating... a user interface page to allowafirst user to select at
`least one song of a playlist for personalization and to select one or
`moreselected pictures, wherein the user interface page is
`displayed ...; displaying the user interface page ...; receiving... a
`selection of the play list from ... the first user; displaying, on the
`userinterface page ... a row of selection blocks along with the
`playlist; displaying, on the user interface page ... songs from the
`play list and buttons corresponding to the songs for selecting
`songs, respectively; receiving... at least one song of the songs
`selected based on selection of a button corresponding to the at
`least one song; receiving... the one or more selected pictures from
`the user..., wherein the one or more selected pictures are one or
`more photos showing one or more other users; enabling, via the
`user interface page ... at least one selected picture of the one or
`more selected pictures to be selected from one or more social
`media sites; associating... at least one selected picture of the one
`or more selected pictures with the at least one song associated with
`the play list that was selected; displaying, on the user interface
`page ... a title of the least one song that was selected in a selection
`block of the row of selection blocks; embedding,
`in the selection
`block, aloum coverart associated with the play list over a portion of
`the at least one selected picture of the one or more selected
`pictures, wherein the album coverart overlays the portion of the at
`least one selected picture showing the one or more other users to
`form at least one overlaid picture, and wherein the at least one
`overlaid picture is partially exposed and partially covered by the
`album coverart; enabling, at the user interface page displayed...
`the first user to purchase one or more personalized digital music
`files of a plurality of personalized digital music files associated with
`the at least one song; building... a plurality of personalized digital
`
`

`

`Application/Control Number: 16/410,405
`Art Unit: 3689
`
`Page 6
`
`music files associated with the at least one song based on one or
`more personalized digital music files purchased bythefirst user,
`wherein each personalized digital musicfile of the plurality of
`personalized digital music files includes the at least one song, a
`respective overlaid picture, and the album coverart, and wherein
`for each personalized digital music file at least one respective
`overlaid picture is partially exposed and partially covered by the
`album coverart; deleting... the aloum cover art stored in metadata
`associated with the at least one song; adding... the at least one
`overlaid picture to the metadata; displaying in the user interface
`page displayed ... the respective overlaid picture when the at least
`one songis played ... wherein at least one portion of the aloum
`coverart is shown overat least one portion of the at least one
`overlaid picture; and providing the play list to one or morerecipient
`users... wherein the playlist includes the one or more personalized
`digital music files purchased by thefirst user, and wherein the one
`or more recipient users are the one or more other users shown in
`the at least one selected picture associated with the playlist.” Claim
`1.
`
`A careful analysis of the abovelimitations, each on its own and all together combined,
`
`results in the conclusion that each on its own recites an abstract idea and in
`
`combination they altogether simply recite a more detailed abstract idea. The recited
`
`abstract idea falls within the grouping of abstract ideas described as certain methods of
`
`organizing humanactivity, for example commercialinteractions (including advertising,
`
`marketing or sales activities or behaviors) and managing personal behavior or
`
`relationships or interactions between people (including social activities). See MPEP
`
`2106.04(a); 2079 Revised Patent Subject Matter Eligibility Guidance, Federal Register
`
`(84 FR 50), January 7, 2019 (2019 PEG); Step 2A1. The claims musttherefore be
`
`analyzed under the second prong of the 2079 PEG, step 2A (MPEP 2106.04(qd)).
`
`step 2A, Prong 2:
`
`In order to address prong 2 (MPEP 2106.04(d); 2019 PEG, Step2A2) we must
`
`identify whether there are any additional elements beyond the abstract ideas and
`
`

`

`Application/Control Number: 16/410,405
`Art Unit: 3689
`
`Page 7
`
`determine whether those additional elements (if there are any) integrate the abstract
`
`idea into a practical application. MPEP 2106.04(d); 2019 PEG, Step2A2, 84 FR 50.
`
`The additional elements in claims 1 and 3-7 are one or more processors, a non-
`
`transitory memorystoring program codeincluding instructions executable by the one or
`
`more processors, a web server, a user device, and a music player that can display
`
`album coverart; the additional elements in claims 8 and 10-14 are a non-transitory
`
`computer-readable storage medium with program instructions that when executed by
`
`one or more processors are operable to cause the one or more processorsto perform
`
`operations, a web server, a user device, and a music player that can display album
`
`cover art; and the additional elements in claims 15 and 17-20 are a web server, a user
`
`device and a music player that can display aloum coverart. These additional elements
`
`have been considered individually,
`
`in combination, and altogether as a whole together
`
`with the functions they perform, e.g., in all claims the web serveris merely identified as
`
`the passive location where the method is performed.
`
`In claims with a processor,it is the
`
`location where the processor performs the steps. The user device merely serves as a
`
`point of contact node standing in for the user (user interface/input/output) and the
`
`“music player” is recited only aspirationally,
`
`indicating that a picture will be displayed
`
`when a songis played on “a music player, wherein at least one portion of the aloum
`
`coverart is shown overat least one portion of the at least one overlaid picture.” In
`
`claims 1, 3-7, 8, and 10-14, an additional non-transitory medium or memory merely
`
`stores instructions for implementing a method, and in claims 1 and 3-7 the one or more
`
`processors merely executes the instructions, being broadly and generally recited asall
`
`alone performing all steps in terms of the intended results of functionally nonspecific
`
`

`

`Application/Control Number: 16/410,405
`Art Unit: 3689
`
`Page 8
`
`activities. These additional elements do not integrate the judicial exception into a
`
`practical application because the claims lack any showing indicating to what the
`
`abstract elements are practically applied. Additional elements to the extent they are
`
`recited are generally passive, with no indication what technical acts or device functions
`
`are required to perform the recited steps. Put another way, the substantive processis
`
`recited only by descriptions of abstract intended results of the steps without indicating
`
`any particular technical acts that are required to be performed by anyparticular device
`
`or structural element to perform the steps or otherwise obtain the intended results. The
`
`additional elements do not improvethe functioning of any computeror other technology
`
`or technical field, they do not apply the judicial exception with or by use of a particular
`
`machine, they do not transform or reducea particular article to a different state or thing,
`
`and they fail to apply or use the judicial exception beyond generally linking the use of
`
`the judicial exception to a particular technological environment. See MPEP 2106.05.
`
`The disclosure does not describe any improvements to the functioning of a
`
`computer or to any other technology or technical field. This improvement would further
`
`need to be identifiable as the subject matter appearing in the claims. An indication that
`
`the claimed invention provides an improvementcan include a discussion in the
`
`specification that identifies technical improvements realized by the claim overthe prior
`
`art. The disclosure must provide sufficient details such that one of ordinary skill in the
`
`art would recognize the claimed invention as providing an improvement. MPEP
`
`2106.05(a).
`
`Claim limitations can integrate a judicial exception into a practical application by
`
`implementing the judicial exception with or using it in conjunction with a particular
`
`

`

`Application/Control Number: 16/410,405
`Art Unit: 3689
`
`Page 9
`
`machine or manufacture that is integral to the claim. A general purpose computerthat
`
`applies a judicial exception by use of generic computer functions does not qualify as a
`
`particular machine. Ultramercial, Inc. v. Hulu, LLC, (Fed. Cir. 2014); MPEP
`
`2106.05(b),(f). There are no particular machines or manufactures identified in the
`
`present claims. Any claimed elements that are not abstract are identified broadly and
`
`generally as applying the method, and the methoditself is described only by way of the
`
`intended results of unidentified activities, without reference to any particular technical
`
`actions or specific functions performed by any particularly identified machines, and
`
`without referenceto its use in conjunction with any particular item of manufacture. The
`
`limitations merely identify goals of steps without any indication how they are achieved.
`
`The claims do not affect the transformation or reduction of a particular article to a
`
`different state or thing. Changing to a different state or thing means morethan simply
`
`using an article or changing the location of an article. A new ordifferent function or use
`
`can be evidencethat an article has been transformed. Purely mental processesin
`
`which data, thoughts,
`
`impressions, or human based actions are "changed" are not
`
`considered a transformation. MPEP 2106.05(c).
`
`The claims do not apply or use the judicial exception in any other meaningful way
`
`beyond generally linking the use of the judicial exception to a particular technological
`
`environment. As aresult the claim as a whole appears to be a drafting effort designed
`
`to monopolize the exception. MPEP 2106.05(e),(h).
`
`The additional elements have not been foundto integrate the abstract idea into a
`
`practical application.
`
`Step 2B:
`
`

`

`Application/Control Number: 16/410,405
`Art Unit: 3689
`
`Page 10
`
`Although the additional elements have not been foundto integrate the abstract
`
`idea into a practical application the claims could still be eligible if they recite additional
`
`elements that amount to an inventive concept (“significantly more’ than the judicial
`
`exception). MPEP 2106.05, Eligibility 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 of the
`
`claims merely support instructions to implement an abstract idea or other exception on
`
`computers. MPEP 2106.05(f). The claims invoke computers or other machinery merely
`
`as tools to perform an abstract process. Simply adding a general purpose computeror
`
`computer components after the factto an abstract idea does not provide significantly
`
`more. Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed.
`
`Cir. 2016); O/P Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 2015 U.S. App. LEXIS
`
`9721, 115 U.S.P.Q.2D (BNA) 1090 (Fed. Cir. 2015) (“relying on a computer to perform
`
`routine tasks more quickly or more accurately is insufficient to render a claim patent
`
`eligible.”); MPEP 2106.05(f)(2). The elements are recited at a high level of generality,
`
`merely implement abstract ideas using generic computers, and fail to present a
`
`technical solution to a technical problem created by the use of the surrounding
`
`technology. Limitations that amount to merely indicating a field of use or technological
`
`environmentin which to apply a judicial exception do not amountto significantly more
`
`than the exception itself. See Ret. Capital Access Mgmt. Co. v. U.S. Bancorp, 611 Fed.
`
`Appx. 1007, 2015 U.S. App. LEXIS 14351 (Fed. Cir. 2015) (“It may be very clever;it
`
`may be very useful in a commercial context, but they arestill abstract ideas,” said
`
`Circuit Judge Alan Lourie.). MPEP 2106.05(h).
`
`

`

`Application/Control Number: 16/410,405
`Art Unit: 3689
`
`Page 11
`
`Evenif the “music player’ is given a narrowerinterpretation of being a required
`
`element required to display an image, the collecting, storing, displaying, and
`
`manipulation, of data has been held to be well understood, routine, and conventional,
`
`activity.
`
`Intellectual Ventures | v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d
`
`1940 (Fed. Cir. 2017) abstract idea of "collecting, displaying, and manipulating data’)
`
`850 F.3d at 1340; 121 USPQ2d at 1946. Electric Power Group, LLC v. Alstom S.A., 830
`
`F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) (selecting information for
`
`collection, analysis and display).
`
`No technical problem is indicated and the claims are not directed to a technical
`
`solution to such a problem. The method claimed is a nontechnical series of steps
`
`describing a method of organizing human activity. This conclusion is supported by
`
`applicant's disclosure, which elaborates upon the performanceof the presently claimed
`
`method only by a broadly nontechnical description of the intended results of technically
`
`nonspecific steps. The disclosure does not identify any technical problem that arises
`
`within any identified equipment, and it does not offera technical solution to any such
`
`problem. The disclosure ultimately only describes the abstract idea while indicating the
`
`intention to “apply it.” The claimed subject matter merely takes advantage of an
`
`opportunity created by computers to use them as a tool for implementing a human
`
`activity, rather than to solve a problem created by the computers. Merely confining the
`
`abstract idea to a particular field is insufficient to render it eligible subject matter. The
`
`claimed invention is patent ineligible because the innovative aspect(if there is one) is
`
`not a technological one. Bilski v. Kappos, 130 S. Ct. 3218, 3245; 177 L. Ed. 2d 792,
`
`822: 2010 U.S. LEXIS 5521, 73; 95 U.S.P.Q.20 (BNA) 1001 (2010) (citing Merges,
`
`

`

`Application/Control Number: 16/410,405
`Art Unit: 3689
`
`Page 12
`
`Property Rights for Business Concepts and Patent System Reform, 14 Berkeley Tech.
`
`L. J. 577, 585 (1999)); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. Nov. 14,
`
`2014) (“A rule holding that claims are impermissibly abstract if they are directed to an
`
`entrepreneurial objective, such as methods for increasing revenue, minimizing
`
`economic risk, or structuring commercial transactions, rather than a technological one,
`
`would comport with the guidance provided in both Alice and Bilski.” Mayer,J,
`
`concurring).
`
`Finally, dependent claims 3-7, 10-14, and 17-20, do not add "significantly more"
`
`to establish eligibility because they merely recite additional abstract ideas that further
`
`describe the manipulation of data used in implementing the abstract idea. A more
`
`detailed abstract ideais still abstract. PricePlay.com, Inc. v. AOL Adver., Inc., 627 Fed.
`
`Appx. 925, 2016 U.S. App. LEXIS 611, 2016 WL 80002 (Fed. Cir. Jan. 7, 2016)(in
`
`addressing a bundle of abstract ideas stacked together during oral argument, U.S.
`
`Circuit Judge Kimberly Mooresaid, "All of these ideas are abstract....
`
`It’s like you want
`
`a patent because you combined twoabstract ideas and say twois better than one.").
`
`All of the above leads to the conclusion that additional claim elements do not
`
`provide meaningful
`
`limitations to transform the claimed subject matter into significantly
`
`more than an abstract idea. MPEP 2106.05; Eligibility Step 2B. As a result the claims
`
`are rejected under 35 USC 101 as being directed to non-statutory subject matter
`
`because they recite an abstract idea without being directed to a practical application,
`
`and they do not amountto significantly more than the abstract idea. MPEP 2106.05,
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`supra.
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`

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`Application/Control Number: 16/410,405
`Art Unit: 3689
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`Page 13
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`The preceding analysis applies to all statutory categories of invention.
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`Accordingly, claims 1, 3-8, 10-15, and 17-20, are rejected as ineligible for patenting
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`under 35 USC 101 based upon the same analysis.
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`Potentially Allowable Subject Matter
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`Claims 1, 3-8, 10-15, and 17-20, would be allowable if rewritten or amended to
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`overcome the rejection under 35 U.S.C. 101 set forth in this Office action.
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`The following is a statement of reasons for the indication of allowable subject
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`matter:
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`Independent claims 1, 8, and 15, recite a machine, manufacture, and method,
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`respectively, comprising inter alia
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`“generating, at a web server, a userinterface pageto allowafirst
`user to select at least one song of a playlist for personalization and
`to select one or more selected pictures, wherein the userinterface
`page is displayed on a user device of the first user; displaying the
`user interface page on the user device; receiving, at the web
`server, a selection of the play list from the user device of thefirst
`user; displaying, on the user interface page of the user device, a
`row of selection blocks along with the playlist; displaying, on the
`user interface page of the user device, songs from the playlist and
`buttons corresponding to the songs for selecting songs,
`respectively; receiving, at the web server, at least one song of the
`songs selected based on selection of a button corresponding to the
`at least one song; receiving, at the web server, the one or more
`selected pictures from the user device, wherein the one or more
`selected pictures are one or more photos showing one or more
`other users; enabling, via the user interface page displayed on the
`user device, at least one selected picture of the one or more
`selected pictures to be selected from one or more social media
`sites; associating, at the web server, at least one selected picture of
`the one or more selected pictures with the at least one song
`associated with the playlist that was selected; displaying, on the
`user interface page of the user device,a title of the least one song
`that was selected in a selection block of the row of selection blocks;
`embedding,
`in the selection block, aloum coverart associated with
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`

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`Application/Control Number: 16/410,405
`Art Unit: 3689
`
`Page 14
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`the play list over a portion of the at least one selected picture of the
`one or more selected pictures, wherein the aloum coverart
`overlays the portion of the at least one selected picture showing the
`one or moreother users to form at least one overlaid picture, and
`wherein the at least one overlaid picture is partially exposed and
`partially covered by the aloum coverart; enabling, at the user
`interface page displayed on the user device,the first user to
`purchase one or more personalized digital music files of a plurality
`of personalized digital music files associated with the at least one
`song; building, at the web server, a plurality of personalized digital
`music files associated with the at least one song based on one or
`more personalized digital music files purchased bythefirst user,
`wherein each personalized digital musicfile of the plurality of
`personalized digital music files includes the at least one song, a
`respective overlaid picture, and the album coverart, and wherein
`for each personalized digital music file at least one respective
`overlaid picture is partially exposed and partially covered by the
`album coverart; deleting, at the web server, the aloum coverart
`stored in metadata associated with the at least one song; adding, at
`the web server, the at least one overlaid picture to the metadata;
`displaying in the user interface page displayed on the user device,
`the respective overlaid picture when the at least one song is played
`on a music player, wherein at least one portion of the aloum cover
`art is shown overat least one portion of the at least one overlaid
`picture; and providing the playlist to one or more recipient users at
`their respective user devices, wherein the playlist includes the one
`or more personalized digital music files purchased bythefirst user,
`and wherein the one or more recipient users are the one or more
`other users shown in the at least one selected picture associated
`with the playlist.” Claim 17.
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`The most closely applicable prior art has been previously introduced and
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`distinguished by amendment and argument during the course of prosecution. The most
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`recently relied upon references were Lin ef a/. (Paper No. 20210813; US 20100082448
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`A1), Roncal (Paper No. 20210813; US 2007/0291323 A1) and Park (Paper No.
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`20210813; US 2011/0016126 A1), however no combination of those or any other known
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`references, including the many references previously cited and addressed during
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`prosecution, teach, suggest, anticipate, disclose, nor otherwise fairly and reasonably
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`render obvious the limitations presently claimed in combination as recited above.
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`It
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`

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`Application/Control Number: 16/410,405
`Art Unit: 3689
`
`Page 15
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`should be noted that this conclusion is based on the presence ofall claimed features as
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`they operate in conjunction rather than solely on any one feature or isolated group of
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`features.
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`Conclusion
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTHshortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`Inno event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date of this final action.
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`Anyinquiry concerning this communication or earlier communications from the
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`examiner should be directed to ADAM LEVINE whosetelephone numberis (571)272-
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`8122. The examiner can normally be reached Monday - Thursday 9am-7:30pm.
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`Examinerinterviews are available via telephone,
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`in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`