DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 18 May 2018 has been entered.
By the above submission, Claims 1, 10, 11, 13, 14, 22, and 23 have been amended. No claims have been added or canceled. Claims 1, 2, 6-8, 10-14, 18-20, and 22-24 are currently pending in the present application.
Response to Amendment
The amendments to the claims do not fully comply with the requirement of 37 CFR 1.121(c)(2) that amended claims must include markings indicating the changes made relative to the immediate prior version of the claims. In particular, at least Claim 1 includes text, marked with strikethrough for deletion, which was previously deleted from the claim. At least Claim 10 appears to have had text added without being marked with underlining as required, and at least Claim 10 also appears to have had text deleted without being marked with strikethrough or double brackets as required. As a courtesy and in order to advance prosecution, the claims have been treated as though they were fully compliant with the requirements of 37 CFR 1.121(c). Applicant is reminded that all future amendments must fully comply with the provisions of 37 CFR 1.121.
Response to Arguments
Applicant's arguments filed 18 May 2026 have been fully considered but they are not persuasive.
Regarding the objection to the specification for failure to provide proper antecedent basis for the claimed subject matter and the rejection of Claims 1, 2, 6-8, 10-14, 18-20, and 22-24 under 35 U.S.C. 112(a) for failure to comply with the written description requirement, and with respect to independent Claims 1 and 13, it is acknowledged that the additional newly cited paragraphs and Applicant’s remarks (see pages 8-9 of the present response, citing paragraphs 0057, 0058, 0086, 0094, 0102, 0043, and 0045 of the specification; see also pages 10-11 of the present response) appear to provide sufficient support for executing a security compliance assessment based at least in part on a set of parameters associated with a publisher. However, the objection to the specification is maintained because the amendments have raised new issues, as detailed below.
Regarding the objection to the specification for informalities, regarding the lack of a summary, the Examiner interprets Applicant’s statement that the summary is not mandatory (page 9 of the present response) as an indication that the optional summary was intentionally omitted.
Further, Applicant alleges that the objections are duplicates of those included in the previous non-final Office action, which were allegedly addressed by the amendments submitted 21 June 2023 (page 9 of the present response). However, first, it is noted that the amendment filed 21 June 2023 was not entered because it was not fully compliant with 37 CFR 1.121 and not fully responsive under 37 CFR 1.111 as set forth in the notice mailed 13 October 2023. Further, even when considering the subsequent amendments to the specification filed 25 June 2024, which were entered, the informalities set forth in the final Office action mailed 04 September 2025 are NOT identical to the objections raised in the non-final Office action mailed 21 December 2022. Rather, the objections in the final Office action specifically refer to new issues raised by the 25 June 2024 amendments and/or issues which were not clearly addressed by those amendments (see pages 6-8 of the final Office action; see also the objection below).
Regarding the objection to the drawings for informalities, first, it is noted that the replacement Figure 6 still appears to be of poor and grainy quality such that the text therein is still difficult to read. Further, Applicant alleges that the objection relating to inconsistencies in URLs and other code between the specification and drawings was raised in the previous non-final Office action and requests further specification of what is objected to (page 9 of the present response). However, the objection set forth in the final Office action mailed 04 September 2025 did specifically point out the URLs which were identified as inconsistent between the drawings and specification (see page 5 of the final Office action; see also the objection below).
Regarding the rejection of Claims 1, 2, 6-8, 10-14, 18-20, and 22-24 under 35 U.S.C. 112(b) as indefinite, and with particular reference to Claims 10 and 22, Applicant argues that the claims have been amended to recite “the first digital content tag” to address the indefiniteness of “the digital content tag” (page 12 of the present response). However, the amendments have raised new issues, as detailed below. With particular reference to Claim 13, Applicant argues that the claim has been amended to replace “at a first compute device” with “at the computer system” (page 12 of the present response). However, it appears that such an amendment has not actually been made in Claim 13, rather “at a first compute device” has been replaced with “by a first compute device” which does not clearly address the issue.
Regarding the rejection of Claims 1, 2, 6-8, 13, 14, and 18-20 under 35 U.S.C. 103 as unpatentable over Lefenfeld et al, US Patent Application Publication 2009/0187486, in view of Ranadive et al, US Patent 8516590, and Huang et al, US Patent 9876877, and with particular reference to amended independent Claims 1 and 13, Applicant argues that Huang, individually, does not disclose an identifier for content that includes script instructions used to load third party digital content (pages 13-14 of the present response, citing Huang, column 7, lines 25-43). Although Applicant asserts that the script is not included in the URL but is a separate component of a message accompanying a URL (page 14 of the present response), it is noted that it is the URL message as a whole, including the modified/signed URL, an appended extension, and script code, which is considered to correspond to the claimed identifier that includes the script instructions. Although Applicant argues that a redirect script in Huang causes a device to receive a landing page rather than to load content (page 14 of the present response), Huang explicitly states that a page is forwarded to the user (column 7, lines 39-54).
Applicant further argues that the signed URL in Huang is different from the claimed tag (page 15 of the present response, citing Huang, column 8, lines 17-23, and column 15, lines 1-10). In response to applicant's argument that the URLs are used for different purposes, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Applicant additionally argues that Huang, individually, does not describe a security compliance assessment, a blocking rule, or a blocking-enabled tag (pages 15-16 of the present response, citing elements 160, 201, 202, 630, 730, and 103). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant also argues that the cited motivation to combine Huang is “misaligned” with the claimed invention (page 16 of the present response). However, as per MPEP § 2144(IV), rationale different from Applicant’s is permissible.
With respect to the rejection of Claims 10-12 and 22-24 under 35 U.S.C. 103 as unpatentable over Lefenfeld, Ranadive, and Huang, and further in view of Grant et al, US Patent 823427, Applicant argues that no rationale was provided to motivate combining the user interaction emulation of Grant with the security assessment and identifier-based blocking architecture of the other references (pages 14-15 of the present response, citing Grant, column 15, lines 56-64). In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, motivation was explicitly cited in Grant; namely, it would have been obvious to incorporate the sample-based controls of Grant, in order to assist in replacing content that is not desired (see Grant, column 9, lines 42-61).
Therefore, for the reasons detailed above, the Examiner maintains the rejection as set forth below.
Drawings
The objections to the drawings for failure to comply with 37 CFR 1.84(p)(5) are withdrawn in light of the amendments to the specification. The objections to the drawings for informalities are NOT withdrawn for the reasons detailed above, and because not all of the issues have been clearly addressed, as set forth below.
The drawings are objected to because they include informalities. Figure 6 is still generally poor in quality, such that it is difficult to read text and portions of text are largely illegible. Further, the various URLs and other code in Figures 8-10, 12, and 13 do not clearly match what is described in the specification; in particular, compare at least the URLs in step 917 and paragraph 0096, step 923 and paragraph 0099, step 1017 and paragraph 0105, step 1203 and paragraph 0116, step 1204 and paragraph 0117, and step 1207 and paragraph 0118. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The objection to the disclosure for informalities is NOT withdrawn, because not all issues have been addressed as discussed above. The objection to the specification for failure to provide proper antecedent basis for the claimed subject matter is NOT withdrawn because the amendments previously raised new issues, as detailed below.
The disclosure is objected to because of the following informalities:
The specification includes grammatical and other errors. For example, in paragraphs 0007 and 0008, line 1 (see page 2 of the 25 June 2024 response), “a” should be inserted before “digital content blocking engine”. In paragraph 0021, line 9 (see page 2 of the 25 June 2024 response), it is not clear what the subject of the verb “is loaded” is intended to be. In paragraph 0029, line 12 (see page 3 of the 25 June 2024 response), the singular article “an” does not agree with the plural “embodiments”. In paragraph 0034, line 5 (see page 4 of the 25 June 2024 response), it appears that “users” should instead be the possessive “users’”. In paragraph 0038, line 5 (see page 5 of the 25 June 2024 response), “another” does not agree in number with “servers”, and in paragraph 0038, line 12, “other” should read “another”. In paragraph 0042, line 6 (see original specification), the phrase “on one or more specialized processors” is grammatically unclear in context. In paragraph 0043, line 14 (see page 6 of the 25 June 2024 response), it appears that “publishers” should be possessive, and in paragraph 0043, line 15, it appears that “deliverance” should read “delivery”. In paragraph 0045 (see original specification), the sentence at lines 7-9 is a run-on (noting the comma splice after “content servers”). In paragraph 0046, line 6 (see page 7 of the 25 June 2024 response), it appears that “on” may be intended to read “in”. In paragraph 0046, line 10, the phrase “thus redirects calls” appears to be missing critical language. In paragraph 0048, line 7 (see original specification), there is an unmatched left parenthesis. In paragraph 0049, line 12 (see page 7 of the 25 June 2024 response), it appears that “in” should be deleted. In paragraph 0050 (see pages 7-8 of the 25 June 2024 response), the sentence at lines 5-7 is a fragment. In paragraph 0054, line 2 (see original specification), a semicolon should be inserted before “however”. Beginning in paragraph 0085 (see original specification), reference is made to “block-enabled tags”, which is inconsistent with prior references to “blocking-enabled tags”. Additional grammatical and other errors may be present which have not been detailed herein.
Appropriate correction is required. The above is not intended to be an exhaustive list of errors in the specification. The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Independent Claims 1 and 13 have been amended to recite “the identifier including script language instructions used to load the corresponding third-party digital content”. Although the specification generally describes an identifier including script language instructions, the specification does not clearly describe script language instructions used to load the corresponding third-party digital content. Therefore, there is not clear antecedent basis for the claimed subject matter. See also the rejection under 35 U.S.C. 112(a) for failure to comply with the written description requirement set forth below.
Claim Rejections - 35 USC § 112
The rejection of Claims 1, 2, and 6-8 under 35 U.S.C. 112(b) as indefinite is withdrawn in light of the amendments to the claims. The rejection of Claims 1, 2, 6-8, 10-14, 18-20, and 22-24 under 35 U.S.C. 112(a) for failure to comply with the written description requirement is NOT withdrawn, because the amendments have raised new issues as set forth below. The rejection of Claims 10-14, 18-20, and 22-24 under 35 U.S.C. 112(b) as indefinite is NOT withdrawn, because not all issues have been addressed and/or because the amendments have raised new issues, as detailed below.
The following is a quotation 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, 2, 6-8, 10-14, 18-20, and 22-24 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 claims contain 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.
Independent Claims 1 and 13 have been amended to recite “the identifier including script language instructions used to load the corresponding third-party digital content”. Although Applicant has pointed to paragraphs 0063 and 0086 for support for the claims as amended, neither of these paragraphs appears to explicitly describe any script language instructions, nor do these paragraphs appear to explicitly describe loading third-party digital content. Further, although the specification generally describes an identifier including script language instructions, there appears to be no mention elsewhere in the specification of script language instructions used to load the corresponding third-party digital content. Therefore, there is not clearly sufficient written description of the claimed subject matter.
Claims not specifically referred to above are rejected due to their dependence on a rejected base claim.
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 10-14, 18-20, and 22-24 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 10 recites “the first” in line 3. It appears that a noun is missing after this adjective.
Claim 13 recites “a first compute device” in line 5. It is not clear whether this first compute device is the claimed computer system recited in line 1 or if it is a distinct device. The above ambiguities render the claim indefinite
Claim 22 recites “the first” in line 3. It appears that a noun is missing after this adjective.
Claims not specifically referred to above are rejected due to their dependence on a rejected base claim.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 2, 6-8, 13, 14, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lefenfeld et al, US Patent Application Publication 2009/0187486, in view of Ranadive et al, US Patent 8516590, and Huang et al, US Patent 9876877.
In reference to Claim 1, Lefenfeld discloses a method that includes receiving at a first device a plurality of digital content tags configured to execute in client environments to load corresponding third-party digital content (paragraph 0092 and Figure 10, step 1015; paragraphs 0109-0111 and Figure 18, step 1810; Figure 19, step 1910; Figure 20, step 2005); executing a security compliance assessment on the each of the content tags and determining a security or compliance issue associated with the tag and an identifier that uniquely identifies the responsible content (Figure 8D, fraud prevention, for example; see also paragraph 0090; see also paragraph 0093, domain of content; paragraphs 0086, 0092, identifier or URL for content); generating a blocking rule matching the identifier of the content and a blocking-enabled tag related to the blocking rule (Figure 8D, fraud prevention, for example; paragraphs 0069, 0075, 0077 regarding rules and policies; see also paragraphs 0093, 0086, 0092 for identifiers); and providing the tag to prevent the third-party content from being loaded or displayed based on the blocking rule (see Figure 10, steps 1040, 1050; Figures 12-13, swapping ads; see also Figures 18-20, generating substitute content; paragraphs 0093-0095, 0099-0102, 0109-0111). However, Lefenfeld does not explicitly disclose that the security compliance assessment is based on parameters associated with a publisher.
Ranadive discloses a method that includes executing a security compliance assessment based on a set of parameters associated with a publisher (column 25, line 54-column 26, line 21) and preventing third-party content from being served (column 26, lines 4-16). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Lefenfeld to include the publisher-based security assessment of Ranadive, in order to allow remediation of malicious advertisements (see Ranadive, column 9, lines 55-67, and column 26, lines 4-16).
However, while Lefenfeld and Randive generally disclose script language instructions (see Lefenfeld paragraph 0078; see also Ranadive, throughout), neither Lefenfeld nor Ranadive explicitly discloses an identifier that includes script language instructions used when executing a tag. Huang discloses a method that includes an identifier for content that includes script instructions used to load content when executing a tag (see column 7, lines 25-43, URL, i.e. identifier, includes script code instructions used when redirecting to different content). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the method of Lefenfeld and Ranadive to include the identifier including script language instructions as taught by Huang to be used to load the third-party digital content of Lefenfeld, in order to implement redirection to different content for better tracking (see Huang, column 1, line 60-column 2, line 42, for example).
In reference to Claim 2, Lefenfeld, Ranadive, and Huang further disclose determining an identifier using network log information (see Lefenfeld, paragraph 0089; Ranadive, column 6, lines 3-14; Huang, column 5, lines 6-29).
In reference to Claim 6, Lefenfeld, Ranadive, and Huang further disclose the identifier is based on a response (see Ranadive, column 15, lines 16-24; Huang, column 7, lines 25-43).
In reference to Claim 7, Lefenfeld, Ranadive, and Huang further disclose requesting second third-party content in place of the corresponding third-party content (see Lefenfeld, Figure 10, steps 1040, 1050; Figures 12-13, swapping ads; see also Figures 18-20, generating substitute content; paragraphs 0093-0095, 0099-0102, 0109-0111; see also Huang, column 5, lines 6-55).
In reference to Claim 8, Lefenfeld, Ranadive, and Huang further disclose rules based on policies of a publisher (see Ranadive, column 25, line 54-column 26, line 21; see also Lefenfeld, paragraphs 0064 and 0077).
Claims 13, 14, and 18-20 are directed to systems having functionality corresponding substantially to the methods of Claims 1, 2, and 6-8, and are rejected by a similar rationale, mutatis mutandis.
Claims 10-12 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Lefenfeld, Ranadive, and Huang as applied to Claims 1 and 13 above, and further in view of Grant et al, US Patent 823427.
In reference to Claims 10 and 22, Lefenfeld, Ranadive, and Huang disclose everything as detailed above with respect to Claims 1 and 13. However, none of Lefenfeld, Ranadive, or Huang explicitly discloses performing sample-based controls replicating or mimicking a client environment or user interactions. Grant discloses a method that includes executing a security compliance assessment by performing sample-based controls by replicating or mimicking an environment on a device (see column 15, line 24-column 16, line 3, especially column 15, lines 56-64) including replicating or mimicking user interactions with client environments (see column 15, lines 56-64) and preventing third-party content from being served (column 9, line 60-column 10, line 2). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the method and system of Lefenfeld, Ranadive, and Huang to include the sample-based controls of Grant, in order to assist in replacing content that is not desired (see Grant, column 9, lines 42-61).
In reference to Claims 11, 12, 23, and 24, Lefenfeld, Ranadive, Huang, and Grant further disclose analyzing information from the sample-based controls and replicating or emulating user interactions including hovering or clicking (Grant, column 15, lines 56-64).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zachary A Davis whose telephone number is (571)272-3870. The examiner can normally be reached Monday-Friday, 9:00am-5:30pm, Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rupal D Dharia can be reached at (571) 272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Zachary A. Davis/Primary Examiner, Art Unit 2492
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