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 .
Response to Amendment
The amendment filed on June 5, 2025 cancelled no claims. Claims 2, 9, and 16 were amended and no new claims were added. Thus, the currently pending claims addressed below are claims 2-21.
Claim Interpretation
The following claim terms require interpretation:
first server: advertisement server and/or ad server (the applicant’s specification makes no mention of a first server. However, based on the applicant’s specification the advertisement/ad server performs the claimed steps of the first server.);
second server: a front end server (the applicant’s specification makes no mention of a second server. However, based on the applicant’s specification the front end server performs the claimed steps of the second server once the front end initially receives search results from a search server)
set of content: plural or plurality of advertisements (the applicant’s specification makes no mention of performing the claimed step with regard to the broader term of a set of content. However, the applicant’s specification does disclose performing the claimed steps with regards to a plural of advertisements and advertisements are a species of content).
Claim Rejections - 35 USC § 112
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 2-21 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.
Independent claims 2, 9, and 16 have been amended to recite “a load balancer configured to interact with the two servers, and execute instructions that cause the performance of operations comprising opening an electronic bidirectional communications session between the two servers, wherein communications between the two servers are routeda load balancer opening an electronic bidirectional communications session in the applicant’s specification. According to paragraphs 23, and 119-122 of the applicant’s disclosure the front end opens a first communication session with a load balancer and the load balancer opens a second communication session with the advertisement server. According to the applicant’s specification it is this order of steps that results in the electronic bidirectional communications session between the two servers. There is no support in the applicant’s specification of the load balancer opening both the first communication session and the second communication session. As such, independent claims 2, 9 and 16 fail to comply with the written description requirement.
Dependent claims 2-8, 10-15, and 17-21 fail to correct the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
The examiner recommends amending the claims to a load balancer configured to interact with the two servers such that the load balancer receives a first open message from the second server of the two servers; generates a second open message; and transmits the second open message to the first server of the two servers, thereby resulting in an electronic bidirectional communication session between the two servers as such limitations are supported by the applicant’s specification.
For the purpose of prosecuting the claims the examiner is going to interpret the limitation as if the load balancer receives a first open message from the second server of the two servers; generates a second open message; and transmits the second open message to the first server of the two servers, thereby resulting in an electronic bidirectional communication session between the two servers.
Independent claim 2 has been amended to recite “within the electronic bidirectional communications session, instructions cause a first server among the two servers to perform operations comprising: receiving a request that includes a search query and data instructing the first server that a response to the request is not required to be provided until a second server among the two servers provides search results that are identified as responsive to the search query to the first server; waiting to send a response to the request until the search results provided by the second server are considered based on the data instructing the first server that a response to the request is not required to be provided until the second server provides the search results; while waiting to send the response to the request and before the search results are provided by the second server, identifying, in response to receiving the request, a set of content related to the search query based on processing of the search query; receiving, from the second server, a search response that includes the search results generated by the second server using the search query; modifying the set of content based on one or more of the search results included in the search response from the second server; and after modifying the set of content based on the one or more of the search results included in the search response, responding to the request with content from among the modified set of content based on the search results being provided by the second server”. The examiner cannot find support for these limitations in the applicant specification. Based on the claim language there are instructions within the bidirectional communication session that cause the first server to perform the tasks of:
receiving a request that includes a search query and data instructing the first server that a response to the request is not required to be provided until a second server among the two servers provides search results that are identified as responsive to the search query to the first server;
waiting to send a response to the request until the search results provided by the second server are considered based on the data instructing the first server that a response to the request is not required to be provided until the second server provides the search results;
while waiting to send the response to the request and before the search results are provided by the second server, identifying, in response to receiving the request, a set of content related to the search query based on processing of the search query; receiving, from the second server, a search response that includes the search results generated by the second server using the search query;
modifying the set of content based on one or more of the search results included in the search response from the second server; and
after modifying the set of content based on the one or more of the search results included in the search response, responding to the request with content from among the modified set of content based on the search results being provided by the second server.
The only support the examiner can find in the applicant’s specification of instructions within a communication session are found in paragraphs 121-122 and 128-129. In paragraphs 121-122 an open message (open instruction) is sent from the front end (i.e., second server) to the load balancer and an open message (open instruction) is sent from the load balancer to the ads server (i.e., first server). In paragraphs 128-129, a close message (close instruction) is sent from the ads server (i.e., first server) to the load balancer, and a close message (close instruction) is sent from the load balancer to the first ad server(i.e., second server). Since the open instruction is used in the generating of the bidirectional communication session, it cannot be consider to be instructions within a bidirectional communication session. Thus, the only support, in the applicant’s specification for an instruction within a bidirectional communication session would be a close instruction since the bidirectional communication session is open when the first close instruction is sent from the ads server (i.e., first server) to the load balancer. The examiner can find no other support in the applicant’s specification for instructions within a bidirectional communication session that cause any of the servers to perform operations, much less the performing the operations of:
receiving a request that includes a search query and data instructing the first server that a response to the request is not required to be provided until a second server among the two servers provides search results that are identified as responsive to the search query to the first server;
waiting to send a response to the request until the search results provided by the second server are considered based on the data instructing the first server that a response to the request is not required to be provided until the second server provides the search results;
while waiting to send the response to the request and before the search results are provided by the second server, identifying, in response to receiving the request, a set of content related to the search query based on processing of the search query;
receiving, from the second server, a search response that includes the search results generated by the second server using the search query;
modifying the set of content based on one or more of the search results included in the search response from the second server; and
after modifying the set of content based on the one or more of the search results included in the search response, responding to the request with content from among the modified set of content based on the search results being provided by the second server.
Therefore, it is clear that the applicant’s specification does not support for “within the electronic bidirectional communications session, instructions cause a first server among the two servers to perform operations comprising: receiving …; waiting to send a response to the request …; while waiting to send the response to the request and before the search results are provided by the second server, identifying…; receiving…; modifying…; and after modifying the set of content based on the one or more of the search results included in the search response, responding…”. As such, independent claim 2 fails to comply with the written description requirement.
Dependent claims 2-8 fail to correct the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
The examiner recommends amending the claims to recite “while the electronic bidirectional communication session is open, performing, by the first server of the two servers, operations comprising: …” as such limitations are supported by the applicant’s specification.
For the purpose of prosecuting the claims the examiner is going to interpret the limitation as if the first server performs the claimed operations while the communication session is open.
Independent claims 9 and 16 have been amended to recite “within the electronic bidirectional communications session” the first server and/or second server performs the steps of receiving…, searching…, waiting…, …identifying…, receiving…, modifying…, and …responding…”. The examiner cannot find support for these limitations in the applicant specification. Based on the claim language each of these steps are performed by the ads server (i.e., first server) or front end (i.e., second server) within the electronic bidirectional communication session. While the applicant’s specification has support for the ads server (i.e., first server) and/or front end (i.e., second server) performing these steps while the electronic communication session is open, the examiner can find no support for the ads server (i.e., first server) or front end (i.e., second server) performing these steps “within the electronic bidirectional communication session”. As such, independent claims 9 and 16 fail to comply with the written description requirement.
Dependent claims 10-15 and 17-21 fail to correct the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
The examiner recommends amending the claims to recite “while the electronic bidirectional communication session is open: …” as such limitations are supported by the applicant’s specification.
For the purpose of prosecuting the claims the examiner is going to interpret the limitation as if the first server and second server perform the claimed operations while the communication session is open.
Independent claims 2, 9 and 16 as currently amended recites “receiving, from the second server, a search response that includes the search results generated by the second server using the search query”; “searching, by the second server, for the search results using the search query”; and “searching, by a second server, for the search results using the search query” respectively. The examiner cannot find support for the front end (i.e., second server) generating search results using a search query in the applicant specification. Based on the applicant’s specification the “front end” server receives a search request, sends the search request to a search server, and receives search results generated by the search server using the search query. There is no support in the applicant’s specification for the “front end” server (i.e., second server) generating search results using the search query. The closest support for this limitation is found in paragraphs 78-86 where the front end (i.e., second server) receives search results from the search server and selects only a portion of the search results to transmit to the ads server (i.e., first server). However, the generation of the portion of the search results is based on preference setting of the user or based on some other information. However, there is no disclosure in the applicant’s specification of the front end (i.e., second server) generating the portion of the search results using the search query. As such, independent claims 2, 9 and 16 fail to comply with the written description requirement.
Dependent claims 2-8, 10-15, and 17-21 fail to correct the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
The examiner recommends amending the claims to remove the limitations directed to the second server generating search results based on a search query and perhaps replacing such a limitation with transmitting, by the second server, the search query to a search server and receiving, by the second server, search results generated by the search server using the search query as such limitations are supported by the applicant’s specification.
For the purpose of prosecuting the claims the examiner is going to interpret the limitation as if the second server: transmitted the search query to a search server; received, from the search server, search results generated using the search query; and transmitted the search results to the first server via the bidirectional communication session.
Claim Rejections - 35 USC § 101
The proposed amendment filed on June 5, 2025 has overcome the 35 USC 101 rejection of claims 2-21. The claims as amended recite a specific arrangement of devices each performing significant steps which result in an improvement that transforms the abstract idea into a practical application under Step 2a, Prong 2 and/or is considered significantly more under Step 2b. Thus, the rejection is hereby withdrawn.
Possible Allowable Subject Matter
Claims 2-21 contain subject matter that would be allowable is the applicant were to overcome the 35 USC 112 rejections identified above.
The following is a statement of reasons for the indication of allowable subject matter:
The examiner has been unable to find prior art that discloses receiving a request that includes both a search query and data instructing the first server that a response to the request is not required to be provided until search results identified as responsive to the search query are provided to the first server and waiting to send a response to the request until the search results provided by the second server are considered based on the data instructing the first server that a response to the request is not required to be provided until the second server provides the search results.
The closest art is US Patent Number: 10,049,386 which discloses every limitation of the claims except that the second request includes an indication that an advertisement response is to be provided. However, this art cannot be considered prior art based on its effective filing date being two months after the effective filing date of the instant application and having at least one common inventor and a common assignee with the instant application.
The next closest prior art is Hylton (PGPUB: 2011/0191338) and Datar (US Patent Number: 7,873,621) which discloses
a front end configured to perform operations comprising: receiving a search query; sending the search query to a first server; sending, to a second server, a first request including the search query; and receiving search results from the first server; and
the second server, wherein the second server is configured to perform operations comprising: identifying, in response to receiving the first request, a first set of advertisements related to the search query; receiving a second request that includes at least some of the search results; modifying the first set of advertisements based on the at least some of the search results included in the second request; and sending, in response to the second request, a response that includes at least one advertisement from among the modified first set of advertisements, wherein the at least one advertisement is combined into a search results page with the search results.
While the first and second advertisement requests can occur at different times and the selected advertisements appear to be delivered after the second request, there is no explicit disclosure that the request includes both a search query and an indication that a response to the request is not required to be provided until the search results identified as responsive to the search query are provided to the first server and waiting to send a response until the search results provided by the second server are considered based on the indication.
Therefore, the examiner has been unable to find prior art that teaches each and every limitation of the claims. Thus, claims 2-21 contain subject matter that is allowable over the prior art.
Response to Arguments
Applicant's arguments filed June 5, 2025 have been fully considered but they are moot as the amended claims have overcome the rejections raised in the Office Action dated March 7, 2025. However, the instant amendment has resulting in new 35 USC 112(a) rejections as detailed above.
The examiner notes that while the claims as amended have overcome the 35 USC 101 rejection, the only significant step being performed by the second server is generating search results using the search query which is not supported by the applicant’s specification as detailed in the 35 USC 112(a) rejection above. Merely removing this limitation is likely to result in the claims being rejected under a new 35 USC 101 rejection. To avoid such a situation the examiner suggests amending the claims to recite: transmitting, by the second server, the search query to one or more search servers; receiving, by the second server and from the one or more search servers, search results generated based on the search query; determining, by the second server, a subset of search results from the search results based on a preference setting of the user; and transmitting the subset of the search results to the first server via the electronic bidirectional communication session. The remainder of the claim would also need some tweaking so that the action being performed by first server that are currently based on the search result would instead be performed now being performed based on the subset of the search results. By amending the claim in this manner, the second server still performs a significant step associated with selecting a subset of the search results received from a search server based on a preference setting of the user as supported by paragraph 78 of the applicant’s specification. In effect substituting the significant step of generating search results using the search query, which is not supported by the applicant’s specification, with the significant step of determining a subset of search results from the search results based on a preference setting of the user which is supported by the applicant’s specification. Such an amendment would still represent a specific arrangement of devices, each performing a significant step that results in an improvement capable of transforming an abstract idea into a practical application under Step 2a, Prong 2 and/or capable of being considered significantly more than the abstract idea.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN W VAN BRAMER whose telephone number is (571)272-8198. The examiner can normally be reached Monday-Thursday 5:30 am - 4 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Spar Ilana can be reached on 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/John Van Bramer/Primary Examiner, Art Unit 3622