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 .
Notice to Applicant
The following is a Final Office action. In response to Examiner’s Non-Final Rejection of 11/12/2025, Applicant, on 02/14/2026 did not amend claims and argues the previous rejection. Claims 1-4, 6-8, and 10-14 are pending in this application and have been rejected below.
Response to Arguments
Applicant's arguments filed 02/14/2026 have been fully considered, but they are not fully persuasive. The 35 USC § 112(f), 112(a), and 112(b) rejections of claims 1-4, 6-8, and 10-14 are still applied in light of Applicant's arguments/amendments.
The Examiner has reviewed Applicant’s amendments and arguments but has not found them sufficient to overcome the 112 rejections. The 112(f) rejection for “a trigger module” has been removed in response to the Applicant’s arguments. However, the 35 USC § 112(f), 112(a), and 112(b) rejections for the remaining modules/limitations remain.
The Applicant argues “Although the term "webhook" is not used verbatim, paragraphs [0023]-[0024] expressly describe receipt of API-originated events (e.g., sign-up forms, scheduled calls) that immediately initiate goal- evaluation logic, and FIG. 7 illustrates such API-driven event handling. A person of ordinary skill in the art would readily recognize this disclosure as a webhook handler. Exact terminological correspondence is not required.” (Remarks 02/14/2026)
In response the Examiner disagrees. The Applicant has not shown that the original disclosure requires a webhook or statistical module- only that a POSITA could read those constructs into the disclosure. That is the wrong test. Neither of the modules appears in the original specification, and Applicant has not identified any passage that clearly discloses structure tied to those specific functions; “disclosure of function alone is little more than a wish for possession; it does not satisfy the written description requirement”, see MPEP 2163. The assertion that POSITA would equate other disclosed components with the new terms is an argument, not evidence; “ arguments presented by applicant cannot take the place of factually supported objective evidence”, see MPEP 2145. The remaining arguments presented by the Applicant rely on the modules in question, and thus are not separately persuasive. Because there is no such clear linkage to the claimed function(s) the terms introduce new matter and render the claims indefinite.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
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:
(A) 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;
(B) 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
(C) 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”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a statistics module” “configured to continuously monitor…” in claim 1,
“a webhook module” “configured to receive calls from the chat widget” in claim 1,
“a statistics module” “configured to collect …” in claim 3.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend 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: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitations “a statistics module” “configured to continuously monitor” in claim 1, “a triggering module” “configured to collect a data about the goal and transfer it to the database” in claim 1, “a webhook module” “configured to receive calls from the chat widget” in claim 1, “a triggering module” “arranged to request information from the chat widget” in claim 3, and “a statistics module” “configured to collect…” in claim 3 invoke 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph. The specification is devoid of adequate structure to perform the claimed functions. The specification does not provide sufficient details such that one of ordinary skill in the art would understand which structure or structures perform(s) the claimed functions. For example, a statistics module and a webhook module are not discussed in the specification. A triggering module is briefly mentioned in paragraph 0021 as being configured on the server and in paragraph 0013 as being hosted. Therefore, the claim is indefinite and rejected under 35 U.S.C. 112(b) or p35 U.S.C. 112 (pre-AIA ), second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 6-8 and 10-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As described above with respect to the limitations in claims 1 and 3 interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph and rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, the disclosure does not provide adequate structure to perform the claimed functions of “to collect a data about the goal and transfer it to the database” in claim 1, “to receive calls from the chat widget” in claim 1, “to request information from the chat widget” in claim 3, and “to collect...” in claim 3. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
Also, in independent claim 1 “a webhook module” was introduced in Applicant’s reply (03/21/2024); however, the written description does not include a webhook module nor description of being configured to receive calls from the chat widget.
Independent claim 6 recites, based on Applicant’s 12/17/2024 amendment, “wherein the statistics module is configured to communicate with the triggering module configured to identify conditions for goal adjustment and initiate immediate updates through the webhook module.”; however, the written description does not support such functionality. For example, the written description does not include a webhook module nor description of it’s communication with a statistics module or triggering module with respect to initiating immediate updates through such webhook module.
The dependent claims inherit the deficiencies and are also rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
McCarthy et al US 2008/0177600 A1 Methods and System for Measuring Online Chat Performance (0043 – goals associated with the website; 0088 – information tracked and collected by the chat system),
Title et al US 2014/0344217 A1 Systems and Methods For Online Website Lead Generation Service (0047 - 0049 – capturing and scoring online behavior),
Fonoimoana et al US 2019/0295097 A1 Cross-functional Analytics Tool for Integrating Web Analytics Data and Customer Relationship Management Data (0038 – detecting trigger event).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Arif Ullah, whose telephone number is (571) 270-0161. The examiner can normally be reached from Monday to Friday between 9 AM and 5:30 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Beth Boswell, can be reached at (571) 272-6737. The fax telephone numbers for this group are either (571) 273-8300 or (703) 872-9326 (for official communications including After Final communications labeled “Box AF”).
/Arif Ullah/
Primary Examiner, Art Unit 3625
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