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 .
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5, 7-10, 12, 14-17 and 19 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-4, 9-12 and 17-20 of U.S. Patent No. 11,882,198. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined application claim is anticipated by the reference claims.
Claims 1-3 are anticipated by claims 1-3, respectively, of the ‘198 Patent.
Claim 5 is anticipated by claim 4 of the ‘198 Patent.
Claim 7 is anticipated by claim 1 of the ‘198 Patent.
Claim 8 is anticipated by claim 9 of the ‘198 Patent.
Claim 9 is anticipated by claim 10 of the ‘198 Patent.
Claim 10 is anticipated by claim 11 of the ‘198 Patent.
Claim 12 is anticipated by claim 12 of the ‘198 Patent.
Claim 14 is anticipated by claims 9 and 15 of the ‘198 Patent.
Claim 15 is anticipated by claim 17 of the ‘198 Patent.
Claim 16 is anticipated by claim 18 of the ‘198 Patent.
Claim 17 is anticipated by claim 19 of the ‘198 Patent.
Claim 19 is anticipated by claim 20 of the ‘198 Patent.
Claims 4, 11 and 18 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 9 and 17 of U.S. Patent No. 11,882,198 in view of U.S. Patent Application Publication 2018/0357682 to Jackson, III et al.
Patent ‘198 do not disclose:
As concerns claims 4, 11 and 18, the inventions of claim 1, 8 and 15, wherein the context information comprises one or more of a device context, a network context, a user context, request context, a content context, or a user interface context.
Jackson, III et al. ‘682 teach:
As concerns claims 4, 11 and 18, the inventions of claim 1, 8 and 15, wherein the context information comprises one or more of a device context, a network context, a user context (0007-application activity of user), request context, a content context, or a user interface context.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide the system of Patent ‘198 with a user context, as taught by Jackson, III et al. ‘682, in order to provide a user tailored experience.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 7-12 and 14-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication 2018/0357682 to Jackson, III et al.
As concerns claim 1, a method comprising:
receiving, from a user device (Fig. 1A; 0005-mobile computing device), a request (0005-request from mobile computing device) for a first content item (0005-request for web data; 0008-media);
determining, based on context information (0007-application activity of user; 0010) associated with the user device, a second content item (0005-0006-second view pane; 0008; Fig. 5) associated with the first content item, wherein the second content item comprises additional content predicted (0007-HTTPS link to second view pane embedded based on predictive analytic; 0010) to be requested by the user device (0008-additional media; 0010; Fig. 5; 0021; 0023-predictive analytics, additional media…video clip, published post, picture, puzzle, game, etc.; 0033-additional media in web resource, tags or attributes embedded into the code); and
sending, to the user device and based on the request, the first content item and the second content item (0008-displaying media, first and second view panes (corresponding to embedded link)).
As concerns claim 8, a device comprising: one or more processors (0005); and memory (0005) storing instructions that, when executed by the one or more processors, cause the device to:
receive, from a user device (Fig. 1A; 0005-mobile computing device), a request (0005) for first content item (0005-web data; 0008-media);
determine, based on context information (0007-application activity of user) associated with the user device, a second content item (0006-second view pane; 0008; 0023-predictive analytics, additional media…video clip, published post, picture, puzzle, game, etc.) associated with the first content item, wherein the second content item comprises additional content predicted (0007-HTTPS link to second view pane embedded based on predictive analytic; 0010) to be requested by the user device; and
send, to the user device and based on the request, the first content item and the second content item (0008-displaying media, first and second view panes (corresponding to embedded link)).
As concerns claim 15, a system comprising:
a server device (Fig. 3, 204) configured to:
receive, from a user device (Fig. 1A; 0005-mobile computing device), a request (0005) for the first content item,
determine, based on context information (0007-application activity of user) associated with the user device, a second content item (0006-second view pane; 0008-web data corresponding to second view pane; 0008-0010) associated with the first content, wherein the second content item comprises additional content predicted (0007-HTTPS link to second view pane embedded based on predictive analytic; 0010; 0023-predictive analytics, additional media…video clip, published post, picture, puzzle, game, etc. ) to be requested by the user device; and
send, to the user device and based on the request, the first content item and the second content item (0008-displaying media, first and second view panes (corresponding to embedded link)); and a user device configured to: receive the first content item and the second content item.
As concerns claim 2, the method of claim 1, wherein the additional content comprises one or more of an image (0009-displayed advertisement on a computer display is an “image”; 0023-picture; 0043) representing the second content item (0008-embedded link, web data corresponding to second view pane) or metadata describing the second content item.
As concerns claim 3, the method of claim 1, wherein the context information comprises a requested resource depth indicating a number of levels of content associations of interest (0023-random forests; (“additional level”) additional data point for further configuring the random forest to determine optimal advertisements).
As concerns claim 4, the method of claim 1, wherein the context information comprises one or more of a device context, a network context, a user context (0007-application activity of user), request context, a content context, or a user interface context.
As concerns claim 5, the method of claim 1, wherein the sending the first content item and the second content item comprises sending the first content item in a first response to the request (0005) and sending the second content item in a second response to the request (0008-user interaction).
As concerns claim 7, the method of claim 1, wherein the determining the second content item comprises determining, based on applying the context information to a user model for content access prediction (0007-predictive analytic techniques), the additional content.
As concerns claim 9, the device of claim 8, wherein the additional content comprises one or more of an image (0009-displayed advertisement on a computer display is an “image”; 0023-picture) representing the second content item or metadata describing the second content item.
As concerns claim 10, the device of claim 8, wherein the context information comprises a requested resource depth indicating a number of levels of content associations of interest (0023-random forests; (“additional level”) additional data point for further configuring the random forest to determine optimal advertisements).
As concerns claim 11, the device of claim 8, wherein the context information comprises one or more of a device context, a network context, a user context (0007-application activity of user), request context, a content context, or a user interface context.
As concerns claim 12, the device of claim 8, wherein the instructions that, when executed by the one or more processors, cause the device to send the first content item and the second content item comprises instructions that, when executed by the one or more processors, cause the device to send the first content item in a first response to the request (0005) and send the second content item in a second response to the request (0008-user interaction).
As concerns claim 14, the device of claim 8, wherein the instructions that, when executed by the one or more processors, cause the device to determine the second content item comprises instructions that, when executed by the one or more processors, cause the device to determine, based on applying the context information to a user model for content access prediction (0007-predictive analytic techniques), the additional content.
As concerns claim 16, the system of claim 15, wherein the additional content comprises one or more of an image (0009-displayed advertisement on a computer display is an “image”; 0023-picture) representing the second content item or metadata describing the second content item.
As concerns claim 17, the system of claim 15, wherein the context information comprises a requested resource depth indicating a number of levels of content associations of interest (0023-random forests; (“additional level”) additional data point for further configuring the random forest to determine optimal advertisements).
As concerns claim 18, the system of claim 15, wherein the context information comprises one or more of a device context, a network context, a user context (0007-application activity of user), request context, a content context, or a user interface context.
As concerns claim 19, the system of claim 15, wherein server device is configured to cause sending of the first content item and the second content item based on sending the first content item in a first response to the request (0005) and sending the second content item in a second response to the request (0008-user interaction, second content).
Response to Arguments
Applicant's arguments filed September 25, 2025 have been fully considered but they are not persuasive.
The Double Patenting rejection provided a mapping of the claims of U.S. Patent No. 11,882,198 that anticipated the claims of the current application. The Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
As concerns the prior art of Jackson III, the applicant’s claims are given the broadest reasonable interpretation and limitations from the specification are not read into the claims. The applicant’s claims are broader in scope than what the applicant is arguing in reference to the prior art.
The applicant argues Jackson III does not disclose “the second content item comprises additional content predicted to be requested by the user device” as recited in claim 1. The applicant further argues the “second view pane” of Jackson III merely includes suggested advertisements…because suggested advertisements…are not content that would be requested by a user.
The examiner disagrees with applicant’s interpretation that the advertisements of Jackson III do not disclose the claimed invention. The claimed limitations are broad in scope and given the broadest reasonable interpretation without reading limitations into the claims. Additionally, the applicant has provided no evidence that a user would not want or request particular advertisements. Regardless, Jackson III discloses “additional media”, wherein this media can embody such media as “the additional media may be …a video clip associated with a published post, a picture, a puzzle, a game, etc.”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPN 10,171,622 disclose content responsive to a request and a predicted set of content a user may request.
US Pub. No. 2018/0191860 disclose managing user requests, resolving requests and providing predictive solutions to the requests based on context (0021).
US Pub. No. 2015/0379157 disclose sending response and predict web content user is likely to predict next for further web content (0033).
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 JOHN B WALSH whose telephone number is (571)272-7063. The examiner can normally be reached 7:30-3:30 pm.
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, Christopher L Parry can be reached at 571-272-8328. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN B WALSH/Primary Examiner, Art Unit 2451
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