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 .
DETAILED ACTION
Claims 1-5 and 7-11 are pending.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Arguments
The applicant’s petition to filed 11/3/2025 to correct the priority for the instant application was NOT approved, see Petition Decision dated 2/27/2026. The examiner advises the applicant review that Decision, refile the petition while correcting the previous petitions deficiencies.
With respect the Double Patenting rejections, the applicant indicated that a Terminal Disclaimer was filed with the response dated 11/3/2025. However, there does not appear to be a Terminal Disclaimer or Terminal Disclaimer approval in the case file and therefore the Double Patenting Rejections have been maintained below.
With respect to the previously applied 35 USC 112 rejections, the applicant has indicated they have amended to overcome those rejections but has not provided any arguments that specifically point out how the rejection was overcome.
The examiner has maintained those rejections as the amendments do not appear to alleviate them. Further the subject matter of claim 4, if rolled up into the independent claims and correcting its own typographical error noted below in the 35 USC 112 section, would overcome the 35 USC 112 rejection of the independent claims.
Priority
This application repeats a substantial portion of prior Application No. 18/216,905, filed 6/30/2023, and adds disclosure not presented in the prior application. Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
The examiner acknowledges application 18/216,905 is referenced in the instant specification [001], but the Application Data Sheets dated 9/30/2023 and 11/11/2024 fail to list the instant application as a CIP with application 18/216,905 as the parent. The examiner advises this or any other issue preventing this application for being a proper CIP be corrected.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1-11 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-11 of US Pat. 12,190,130.
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are directed to substantially similar systems, methods, and/or media with the subject matter of the instant claims being disclosed by the claims of ‘130. For example, contrast instant claim 1 with claim 1 of ‘130.
Instant claims 1
‘130 Claim 1
A computer-implemented method in a network device with a web browser having an extension for evaluating web requests using internal coordination to make asynchronous information synchronously available, prior to dispatching the web requests, the method comprising:
A computer-implemented method in a network device with a web browser having an extension for evaluating web requests using internal coordination to make asynchronous information synchronously available, prior to dispatching the web requests, the method comprising:
installing the web browser extension to intercept web requests for a URL to a browser;
intercepting, by the web browser extension, a web request to the web browser, for a Universal Resource Locator (URL), and determining whether information is synchronously available to evaluate the web request;
intercepting, by the web browser extension, a web request to the web browser and determining whether information is synchronously available to evaluate the web request;
responsive to not having information for synchronous evaluation, redirecting, by the web extension, the web request to display a gateway page while asynchronous obtaining information from an external information provider server, the request tracked with a request identifier and storing the asynchronously gathered information for synchronous access along with the request identifier;
responsive to not having information for synchronous evaluation, redirecting, by the web extension, the web request to display a gateway page while asynchronous obtaining information from an external information provider server, the request tracked with a request identifier and storing the asynchronously gathered information for synchronous access along with the request identifier;
reissuing the web request to the web browser by the gateway page;
responsive to an automated notification from the web browser extension, reissuing the web request to the web browser by the gateway page to replace the gateway page with response content from the web request;
intercepting, by the browser extension, the reissued web request to synchronously evaluate the gathered information;
intercepting, by the browser extension, the reissued web request to synchronously evaluate the gathered information;
and evaluating the reissued web request based on the fetched information.
evaluating the reissued web request based on the fetched information;
Further, contrast instant independent claims 10 and 11 with claims 9 and 10 of ‘130 and dependent claims 2-5 and 7-9 correspond with subject matter disclosed by the dependent claims of ‘130.
Therefore, if a patent were to be granted, it may result in improper timewise extension of the “right to exclude” of the subject matter and/or may lead to possible harassment by multiple assignees.
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 1-5 and 7-11 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.
Claims 1-3, 5, and 7-11 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements/steps, such omission amounting to a gap between the elements/steps. See MPEP § 2172.01.
By reciting in claim 1, for example, “determining whether information is synchronously available to evaluate the web request… responsive to not having information for synchronous evaluation, redirecting…” the claim has established what occurs when “information is not synchronously available” but has not indicated what occurs when the information is “synchronously available” thus amounting to a gap between the elements/steps.
The examiner acknowledges dependent claim 4 which recites, “responsive to having the information for synchronous evaluation, synchronously evaluating, the browser, the web request,” which fills in these gaps. However, claim 4 contains a separate indefinite issue addressed below and thus still rejected under 35 USC 112 but not under the same rationale. Claims 10 and 11 are similarly rejected and claims 1-3 and 5-9 are rejected as being dependent from claim 1 and not alleviating the above rejection.
Claim 4 recites, “responsive to having the information for synchronous evaluation, synchronously evaluating, the browser, the web request,” but appears to contain typographical/grammatical errors because the limitation does not have a clear reading. In other words, it appears to the examiner the claim should recite something akin to, “responsive to having the information for synchronous evaluation, synchronously evaluating, by the browser, the web request,” so as to have the claim make grammatical sense.
Allowable Subject Matter
Claims 1-11 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, in addition to alleviating the Double Patenting rejections set forth in this Office action.
Conclusion
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 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 THOMAS J DAILEY whose telephone number is (571)270-1246. The examiner can normally be reached 9:30am-6:00pm.
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, Umar Cheema can be reached on 571-270-3037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS J DAILEY/ Primary Examiner, Art Unit 2458
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