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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 25 July 2025 has been entered.
Claims amended: 21, 31, 35, 40
Claims cancelled: 1-20
Claims added: 21-40
Claims currently pending: 21-40
Response to Arguments
Applicant, in the “Status of the Claims” and “Interview” sections, presents opening remarks regarding the disposition of the claims and the previously conducted interview. As no specific argument is raised in this/these section(s) with respect to the instant application, no rebuttal is required.
Applicant, in the “Section 101 Rejections” section, argues that the newly amended features of a “browser extension” parsing CSS and HTML elements of a website, “are additional technical elements that are not sales or marketing activities”. Applicant additionally argues that these elements render the claims into a practical application. Unfortunately, Examiner disagrees and holds that these elements represent extra-solution activity that amounts to mere data gathering using well-understood, routine, and conventional techniques in the art. This is noted in the grounds of rejection presented herein under 35 U.S.C. § 101, which were updated to reflect Applicant’s amendments to the claims. The elements of a browser plug-in performing parsing of elements of a website were well-known at the time the invention was filed as exemplified in Mezzacca (Pub. #: US 2014/0114755 A1) in at least 0058 that describes analyzing HTML elements for “Benefit-Conveying (BC) Code” input fields and stating that this type of parsing activity is “well known”: “As well known, this can be accomplished by traversing the Document Object Model (DOM) of the current web page”. Therefore, the grounds of rejection under said statute is herein maintained, albeit updated to reflect Applicant’s amendments to the claims.
Applicant, in the “Double Patenting Rejections” section, requests, “reconsideration of these rejections in view of the amendments above and on the remarks presented elsewhere herein”. The elements amended into the independent claims herein are also found within the patents to which the previous double patenting grounds of rejection was made, albeit, in dependent claims. The grounds of rejection presented herein under double patenting have been updated to reflect Applicant’s amendments to the claims. Therefore, the grounds of rejection are herein maintained.
Applicant, in the “Conclusion” section, presents closing remarks, but makes not substantial and specific arguments with respect to the instant application. Therefore, no Office response is required.
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 21-40 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 21-30 and 31-39 are directed towards a method. Claim 40 is directed towards a system. Thus, these claims, on their face, are directed to one of the statutory categories of 35 U.S.C. § 101.
Step 2A - Prong One: As per MPEP 2106.04, Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon. In Prong One examiners evaluate whether the claim(s) recites a judicial exception; that is, whether the claim(s) set forth or describe a law of nature, natural phenomenon, or abstract idea.
Claim 21 is presented here as a representative claim for specific analysis (The underlined claim terms here are interpreted as additional elements beyond the abstract idea.):
A method for automatic code testing, comprising:
monitoring, via a browser extension, a browsing session of a user on an e-commerce website, wherein the browser extension continuously conducts the monitoring in the background;
determining, via the browser extension, whether a trigger condition is present by parsing cascading style sheets (CSS) elements and/or one or more hypertext markup language (HTML) elements of the e-commerce website;
when the trigger condition is present, automatically performing, via the browser extension, a code test process by:
obtaining a plurality of codes for the e-commerce website, each code of the plurality of codes comprising corresponding data comprising one or more of historical code success, length of time since successful use, a savings amount, a last successful application, a popularity, a number of sources for each code, or a number of uses of each code;
providing the corresponding data to a machine learning model trained to output a likelihood of success for each code based on the corresponding data;
receiving the likelihood of success for each code, from the machine learning model;
determining a subset number equal to a threshold period of time for the code test process divided by a time to process a code;
determining a first subset of codes of the plurality of codes having a maximum quantity of codes equal to the subset number of the plurality of codes and having a likelihood of success higher than a threshold likelihood;
and performing the code test process for the first subset of codes to obtain a first test result;
and causing to output, via a graphical user interface, the first test result.
The claims here are based on the recitation of an abstract idea (i.e. recitation other than the additional elements delineated here with underlining and further addressed per Step 2A - Prong Two and Step 2B). The claims recite the abstract idea of testing discount codes based on a score associated with the code(s) which is found within falls within certain methods of organizing human activity.
The phrase "certain methods of organizing human activity" applies to fundamental economic principles or practices including hedging insurance, mitigating risk; commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors business relations; managing personal behavior or relationships or interactions between people including social activities teaching, and following rules or instructions. Refer to MPEP 2106.04(a)(2) II. A-C.
The Remaining Claims: The additional independent claim(s) fail to recite any additional elements beyond those identified above except a processor executing instructions, and a memory storing instructions (claim 40). The dependent claims recite fail to recite any additional elements beyond those already identified except a first menu (claim 28, 29, 37, 38).
The dependent claims further reiterate the same abstract idea with further embellishments: claims 22-24 and 39 further embellish the algorithm used for processing codes; claims 25-27, 34-36 further embellish the triggering step by disclosing further details of the browsing monitoring; claims 28-30, 32, 33, 37, 38 present and receive information to and from a user using user interface elements or automatically. Therefore, the identified claims fall within the subject matter groupings of abstract ideas enumerated in MPEP 2106.04(a)(2).
Step 2A - Prong Two: As per MPEP 2106.04.II.A.2, Prong Two determines if the claim(s) recite additional elements that integrate the judicial exception into a practical application.
The claims offer the additional elements of: via a browser extension, e-commerce website, a processor executing instructions, a memory storing instructions. To be patent-eligible, the elements additional to the identified abstract idea must amount to more than "an instruction to apply the abstract idea . . . using some unspecified, generic computer" to render the claim patent-eligible. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 226 (2014). The additional element(s) are simply utilized as generic computing tools to implement the abstract idea, functioning as mere instructions to apply the exception as noted in MPEP 2106.05(f). Paragraph 098 of the specification describes the invention being performed by "a server computer, wireless device, and/or personal computer" such as "all manner of cellular or mobile phones" amongst a list of a myriad of computing devices. It would have been readily apparent to one having ordinary skill in the art (PHOSITA) at the time the invention was filed that the additional elements represent generic computing devices. Therefore, the claims amount to no more than a mere method, system, and/or computer program product to implement the abstract idea on a generic computer system. See MPEP § 2106.05(f).
The claims offer the additional element of: parsing cascading style sheets (CSS) elements and/or one or more hypertext markup language (HTML) elements of the e-commerce website. This represents extra-solution activity corresponding to mere data gathering steps. The additional element(s) represent insignificant extra-solution activity incidental to the primary process or product that are merely a nominal or tangential addition to the claim as noted in MPEP 2106.05(g).
The claims offer the additional elements of: and causing to output, via a graphical user interface, the first test result, and a first menu: These elements do not meaningfully limit the claim in that adding a final step of presenting data or receiving user input in a user interface does not add a meaningful limitation of the process. The additional element(s) represent insignificant extra-solution activity incidental to the primary process or product that are merely a nominal or tangential addition to the claim as noted in MPEP 2106.05(g).
Step 2B: As per MPEP 2106.05, the additional elements are analyzed, both individually and in combination, to determine whether an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim, as a whole, amounts to significantly more than the judicial exception itself.
As stated above, the claims contain the additional elements:
machine learning model represents a generic invocation of machine learning, which was well-understood, routine, and conventional at the time the invention was filed. Refer to, "Approaches to Machine Learning" by Pat Langley and Jaime G. Carbonell that disclosed the use of machine learning in 1984;
and causing to output, via a graphical user interface, the first test result, and a first menu represent a web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015) and represent using an "interface" to display information as in Affinity v DirecTV in which "The court rejected the argument that the computer components recited in the claims constituted an 'inventive concept'. It held that the claims added 'only generic computer components such as an 'interface', 'network', and 'database' and that 'recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible". Id. at 1324-25 (citations omitted). The court noted that nothing in the asserted claims purported to improve the functioning of the computer itself or "effect an improvement in any other technology or technical field". Mortgage Grader, 811 F.3d at 1325 (quoting Alice, 134 S. Ct. at 2359)".
parsing cascading style sheets (CSS) elements and/or one or more hypertext markup language (HTML) elements of the e-commerce website represents mere data gathering similar to Consulting and updating an activity log, Ultramercial, 772 F.3d at 715, 112 USPQ2d at 1754 and more specifically to parsing HTML elements for specific features is exemplified in Mezzacca (Pub. #: US 2014/0114755 A1) in at least 0058 that describes analyzing HTML elements for “Benefit-Conveying (BC) Code” input fields and stating that this type of parsing activity is “well known”: “As well known, this can be accomplished by traversing the Document Object Model (DOM) of the current web page”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. US 11,587,111 B2 in view of King (Pub. #: US 2014/0074579 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application correspond closely to the claims in '111 but with some features removed. For example, claim 21 in the instant application vice claim 1 in '111 presents as:
21.A method for automatic code testing, comprising: monitoring a browsing session of a user on an e-commerce website, wherein the browser extension continuously conducts the monitoring in the background;
determining whether a trigger condition is present by parsing cascading style sheets (CSS) elements and/or one or more hypertext markup language (HTML) elements of the e-commerce website;
and when the trigger condition is present, automatically performing a code test process by:
obtaining a plurality of codes for the e-commerce website, each code of the plurality of codes comprising corresponding data comprising historical code success, length of time since successful use, a savings amount, a last successful application, a popularity, a number of sources for each code, or a number of uses of each code;
providing the corresponding data to a likelihood of success for each code based on the corresponding data;
receiving the likelihood of success for each code, from the
determining a subset number equal to a threshold period of time for the code test process divided by a time to process a code;
determining a first subset of codes plurality of codes having a maximum quantity of codes equal to the subset number of the plurality of codes and having a likelihood of success higher than a threshold likelihood;
and performing the code test process for the first subset of codes to obtain a first test result.
Claim 21 of the instant application contains the browser plugin monitoring of CSS and/or HTML elements of claims 2 and 3 of the ‘111 patent. The dependent claims contain largely similar claim language with similarly minor differences and with claims 23-24 of the instant application containing elements from claim 1 of '111 that were removed to create claim 21 of the instant application; i.e, the deleted elements above are present in claims 22-24. Claims 26, 27, 28, 29, 30 of the instant application correspond to claims 3, 4, 5, 6, 7 of patent '111, respectively.
The change from a generic "score" to a "likelihood of success" gives semantic meaning to the score. Patent '111 does not appear to make this explicit. However, King teaches a technique of computing and displaying a success rate in at least Figure 2, 0013, and 0040 with further detail in 0040 that describes how the measure of success is used "to assist a prospective consumer to assess the likelihood of successfully taking advantage of the promotional offer"
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the claimed invention of '111 that scores, using a machine learning model, potential codes to determine a "likelihood of success" with the technique of computing a likelihood of success as taught by King. Motivation to combine '111 with King derives from both references pertaining to browser systems for automatically determining discount codes for users to access promotional offerings (King: 0015-0018).
Claims 31-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. US 11,587,111 B2 in view of Hudson et al. (Pub. #: 2017/0186027 A1) in view of King (Pub. #: US 2014/0074579 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application correspond closely to the claims in '111 but simplify the threshold feature and apply an unspecified machine learning algorithm to select a "code having a most optimal likelihood of success". Claim 31 of the instant application contains the browser plugin monitoring of CSS and/or HTML elements of claims 2 and 3 of the ‘111 patent. As for claim 31 and 40: Patent '111 does not appear to claim: "and applying a selection algorithm to select a selected code from the valid set of codes based on at least one of the selected code being associated with the user, the selected code having a most optimal likelihood of success, or the selected code being associated with a fastest estimated shipping time". However, Hudson teaches a technique for testing codes in which the browser extension therein "discovers multiple functioning codes, the browser extension will generally apply the code that saves the consumer the most money" in at least Figure 7D, Figure 8A, and 0081.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the claimed invention of '111 with the technique of displaying the most optimal code of the tested codes to the user as taught by Hudson. Motivation to combine '111 with Hudson comes from both pertaining to testing discount codes on websites and to allow users to utilize the most optimal codes available to them (Hudson: 0002 and 0003-0008).
The change from a generic "score" to a "likelihood of success" gives semantic meaning to the score. Patent '111, in view of Hudson, does not appear to make this explicit. However, King teaches a technique of computing and displaying a success rate in at least Figure 2, 0013, and 0040 with further detail in 0040 that describes how the measure of success is used "to assist a prospective consumer to assess the likelihood of successfully taking advantage of the promotional offer"
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the claimed invention of '111, in view of Hudson, that scores, using a machine learning model, potential codes to determine a "likelihood of success" with the technique of computing a likelihood of success as taught by King. Motivation to combine '111, in view of Hudson, with King derives from both references pertaining to browser systems for automatically determining discount codes for users to access promotional offerings (King: 0015-0018).
Claim 32 is not patentably distinct from claim 5 of '111 in view of Hudson in view of King. Examiner notes that claim 5 contains display of a "success indicator". Claim 33 is not patentably distinct from claim 4 of '111 in view of Hudson in view of King. Claims 34 and 35 are not patentably distinct from claim 3 of '111 in view of Hudson in view of King. Claim 36 is not patentably distinct from claim 4 of '111 in view of Hudson in view of King. Claims 37 and 38 are not patentably distinct from claims 5 and 6 of '111 in view of Hudson in view of King. Claim 39 is not patentably distinct from claim 1 of '111 in view of Hudson in view of King.
Potentially Allowable Subject Matter
Claim(s) 21-40, as currently written, have overcome the prior art. However, the grounds of rejection under 35 U.S.C. § 101 and Double Patenting are currently pending and represent a barrier to allowability.
The claims offer an extremely high level of detail and specific limitations which are not found in a typical discount code testing system These limitations includes a specific algorithm for testing the codes that maintains a user's attention by not taking an excessive amount of time to return a result by using a machine learning model to score each discount code, dividing the codes into subsets by selecting a number of codes that would likely be tested under a threshold period of time based upon the average time to process a discount code, testing the first subset of codes and displaying a menu with the results of the testing process to the user. Thus, the high level of detail in combination with specific functions renders the claims allowable over the art of record.
Examiner sets forth the following references as being pertinent to Applicant's inventive concept:
Hudson et al. (Pub. #: 2017/018027 A1) teaches a browser plug-in for checking one or more discount codes associated with an electronic commerce platform to determine the best result for the consumer. Hudson does not disclose a machine learning model to score each discount code, dividing the codes into subsets by selecting a number of codes that would likely be tested under a threshold period of time based upon the average time to process a discount code, and testing the first subset of codes and displaying a menu with the results of the testing process to the user.
Lemphers et al. (Pub. #: US 2013/0138495 A1) teaches a system for automatically testing promotion codes using a set of drivers to test the codes in parallel to speed up the overall process. Lemphers does not disclose a machine learning model to score each discount code, dividing the codes into subsets by selecting a number of codes that would likely be tested under a threshold period of time based upon the average time to process a discount code, and testing the first subset of codes and displaying a menu with the results of the testing process to the user.
Corrieri et al. (Pub. #: 2019/0392503 A1) teaches a system for testing a total cost of goods at several e-commerce merchants, including the effect of coupon codes. Corrieri does not disclose a machine learning model to score each discount code, dividing the codes into subsets by selecting a number of codes that would likely be tested under a threshold period of time based upon the average time to process a discount code, and testing the first subset of codes and displaying a menu with the results of the testing process to the user.
Mezzacca (Pub. #: 2014/0114755 A1) teaches a system for testing "benefit-conveying" codes of an e-commerce website including presenting the results to the user in a user interface element such that the user can select the best benefit. Mezzacca does not disclose a machine learning model to score each discount code, dividing the codes into subsets by selecting a number of codes that would likely be tested under a threshold period of time based upon the average time to process a discount code, and testing the first subset of codes and displaying a menu with the results of the testing process to the user.
Perry et al. (Pub. #: US 2007/0073580 A1) teaches a system for parsing of web pages to identify product triggers for the sending of promotional material to a user based thereon.
Conclusion
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/SCOTT SNIDER/Examiner, Art Unit 3621