DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
This action is in response to amendments and remarks filed on 3/25/2026.
Claims 1-20 remain pending. Claims 1, 5-6, 8, 14, & 20 are amended. Claims 1-20 have been examined and are rejected.
Priority
This application was filed 3/8/2924 and is a continuation of application 17/406,146 filed 8/19/2021, now US 11,929,964.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/25/2026 has been entered.
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 time wise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory obviousness-type 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); and 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.
Claims 1-20 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over Claims 1-20 of U.S. Patent No. 11,929,964. Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter. Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See MPEP § 804.
Response to Arguments
Applicant’s arguments filed in the communications above have been fully considered but are not persuasive. In the communications filed, applicant argues in substance that:
Argument (a) Judd merely describes that the contents of a message composed by a sender can include third-party content and sharing (or share) buttons when sent. The only "action" associated with such a message is a messaging application "action" of displaying the message's contents in the same manner that the messaging application displays any other message. Furthermore, the message recipient decides whether or not to share and when to share content included in the message. A message application that displays a message that when sent by the sender includes third party content and/or share buttons that enables the message recipient to “control” whether and when to share content is not what is claimed, however.
According to the claimed subject matter, the claimed web page comprising a content provider's content item is associated with bot application information indicating a bot application set by the content provider to control a browser's display of the web page comprising the content item using both an action of a type and timing set by the content provider and indicated by the bot application, and the claimed computing device analyzes the claimed bot application information and determines the type of action set by the content provider and the timing set by the content provider for performing the action of the indicated type based on the analysis, determines to perform the action based on the timing determination, and causes the action to be automatically executed in accordance with the timing determination to perform the action, the executed action causing a UI of a browser that is displaying the web page with the content item to be modified according to the type of action and the timing set by the content provider.
Judd's description of a message whose contents can include third party content and/or sharing buttons when sent by the sender, which can then be displayed by a messaging application in its normal course and enabling a message recipient to "control" whether and when to share content using the sharing buttons included in the message when sent fails to disclose, teach or suggest at least the above-identified subject matter, which includes, inter alia, the claimed action set by the claimed content provider to be automatically executed according a timing set by the claimed content provider, which claimed execution causes the claimed browser UI that is displaying the claimed web page comprising the content provider's content item to be modified according to the action type and timing set by the content provider.
In response to argument (a), examiner respectfully disagrees.
Applicant argues that Judd does not teach analyzing the claimed bot application information and determining to perform the action, or automatically executing the action. With respect to these functions, the claim requires: (i) determining to perform an action, and (ii) automatically executing the action in accordance with the determination. The broadest reasonable interpretation of (i) comprises determining that a received message includes a script/code to be executed, and the broadest reasonable interpretation of (ii) comprises executing the identified script/code. Present amendments add that the bot application controls a web page according to a type of action.
According to the specification, the claimed “bot application information indicating a type of action” refers to an action or operation to be performed at the email recipient device and dictates the recipient’s experience while consuming the message. Examples from the specification include displaying an advertisement for downloadable applications when the recipient opens the message, or providing a pop-up window with functionality for sharing the message and/or advertisement with other users (see [0062-64] of the published specification). Thus from the specification, we can see that controlling a web page according to a type of action refers to the type of web content that is included in an email message and that will be displayed to the message recipient.
Similarly, Judd teaches generating an email newsletter message incorporating content published by third parties and/or social sharing buttons that enables a user to share advertisement related content with other users [Judd: 0029-31]. The incorporated content and social sharing buttons are displayed to the email recipient in Judd, and thus appear to be structurally and functionally identical to the claimed limitations even when viewed in light of [0062-64] of the published specification.
Applicant additionally argues that Judd does not teach the content item provider sets timing information indicating when to perform the action, However Judd was not cited for teaching said limitation. Rather, such limitation is taught by Beeman which provides: emails can be transmitted to users having content templates and styling set at the time of transmission and/or when the user actually views the email [Beeman: 0041], wherein the dynamic content comprises tags 322 and 324 in the body 320 of the email message defined by originator user 100 utilizing a campaign builder application [Beeman: 0021-22; 0027; Fig. 3].
Argument (b) In addition, the Examiner concedes that Judd fails to disclose: 1) the claimed bot application information further comprising timing information indicating a timing of when to perform an action of the claimed indicated type; 2) analyzing, by the computing device, the bot application information and determining the timing for performing the action of the indicated type based on the analysis; and 3) determining, by the computing device, to perform the action based on the timing determination. Beeman has been reviewed and is not seen to remedy the deficiencies of Judd identified herein and in the Office Action.
Beeman describes that an email message can include tags that can be used by a server to dynamically select content item that is rendered with the email message. See, e.g., ¶¶ 21-22, 33-35 and the Abstract of Beeman.
At ¶ 41 of Beeman, which was cited in the Office Action, Beeman describes that the content and styling of an email message is set at the time the email message is sent to the recipient's device, but that some of the email message's content can be determined when the user actually views the message.
In other words, Beeman describes that a sender's message can include tags that can be used by a content server to dynamically select content before the message is displayed, so that the message contains the dynamically-selected content when it is displayed. At most, Beeman describes that its tags can be used to modify an email message before it is displayed.
Beeman's description of using tags to modify an email message's contents before the message is displayed is starkly different in both structure and function from what is specifically claimed, namely, analyzing bot application information set by the claimed content provider indicating both the type of action and the time for performing the action, the claimed bot application information analysis determining: 1) the type of action set by a content provider that is to be performed by a user's client computing device; and 2) the action's timing set by the content provider, and then causing the determined action set by the content item's provider to be automatically executed in accordance with the determined timing set by the content item's provider, where the executed action causes a UI of a browser that is displaying the web page with the content provider's content item to be modified according to the type of action and the timing set by the content provider. Beeman's description of a message that contains tags set by the sender that are then used by a content server to dynamically select content for the message prior to the message even being displayed fails to disclose at least this claimed subject matter.
In response to argument (b), examiner respectfully disagrees.
According to the specification, the claimed bot information includes instructions such as code or scripts embedded in an email message that cause an action or operation to be performed at the recipient device, an example of which includes information identifying supplemental content (e.g. identified by a URL) to be digitally rendered at the recipient device. See e.g. [0063; 0076]. Paragraph [0074] of the specification clarifies that the timing for performing the action comprises performing the action upon delivery of the message, or performing the action upon opening of the message. Thus in view of the specification, the broadest reasonable interpretation of the claimed analyzing the bot application information and determining the timing for performing the action would include a determination that a message includes supplemental content to be rendered at the recipient device upon delivery or opening of the message.
Similarly, Beeman teaches emails can be transmitted to users having content templates and styling set at the time of transmission and/or when the user actually views the email [Beeman: 0041], wherein upon rendering the email message within a web browser application on a recipient device (i.e. the user views the email), interpreting the href tag and img tag causing the recipient device to transmit a request to a dynamic content server which subsequently returns a content item for presentation to the recipient user [Beeman: 0033-35; Figs. 2 & 4]. As such, Beeman appears to read on the claimed limitation.
For at least these reasons, applicant’s arguments are considered not persuasive.
Claim Rejections – 35 USC § 103
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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7, 10-17, & 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Judd et al. (US 2013/0232014 A1) in view of Beeman et al. (US 2020/0374247 A1).
With regard to Claim 1, Judd teaches:
A method comprising:
identifying, by a computing device, bot application information associated with a web page comprising a content item of a content provider, the bot application information indicating a bot application set by the content provider to control the web page comprising the content item using an action of a type indicated by the bot application that is to be performed at a client computing device of a user, (a client can access an email builder module to generate an email newsletter message to be sent to one or more customers of the client comprising content incorporated into the email newsletter such as social sharing buttons and/or content published by third parties, wherein hyperlinks may be incorporated into the email newsletters to drive traffic to the websites or webpages of the client [Judd: 0029-31], wherein upon clicking a content item in an email client view, the recipient is presented with additional content in an email web view [Judd: 0031-32; 0047; Figs. 1-2]);
analyzing, by the computing device, the bot application information and determining the type of action of the indicated type based on the analysis; and causing, by the computing device, the action to be automatically executed in accordance with the determination to perform the action, the executed action causing a UI that is displaying the web page comprising the content item to be modified according to the type of action; (the incorporated social sharing buttons are displayed to the email recipient enabling readers to easily share information to their social networks [Judd: 0031]).
However, Judd does not explicitly teach (where underlining indicates the portion of each limitation not taught):
the bot application information indicating a bot application set by the content provider to control a browser’s display of the web page;
the bot application information further comprising timing information set by the content item’s provider indicating a timing of when to perform the action of the indicated type;
analyzing, by the computing device, the bot application information and determining the timing for performing the action of the indicated type based on the analysis;
determining, by the computing device, to perform the action based on the timing determination;
and causing, by the computing device, the action to be automatically executed in accordance with the timing determination to perform the action.
In a similar field of endeavor involving delivering dynamic content in email messages, Beeman discloses:
the bot application information indicating a bot application set by the content provider to control a browser’s display of the web page; (the received email message is rendered within a web browser application, and the HTML content of the email message is interpreted (i.e. analyzed) to transmit a request for dynamic content [Beeman: 0033]);
the bot application information further comprising timing information set by the content item’s provider indicating a timing of when to perform the action of the indicated type; (emails can be transmitted to users having content templates and styling set at the time of transmission and/or when the user actually views the email [Beeman: 0041], wherein the dynamic content comprises tags 322 and 324 in the body 320 of the email message defined by originator user 100 utilizing a campaign builder application [Beeman: 0021-22; 0027; Fig. 3]);
analyzing, by the computing device, the bot application information and determining the timing for performing the action of the indicated type based on the analysis; determining, by the computing device, to perform the action based on the timing determination; and causing, by the computing device, the action to be automatically executed in accordance with the timing determination to perform the action; (upon rendering the email message within a web browser application on a recipient device (i.e. the user views the email), interpreting the href tag and img tag causing the recipient device to transmit a request to a dynamic content server which subsequently returns a content item for presentation to the recipient user [Beeman: 0033-35; Figs. 2 & 4]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Judd in view of Beeman in order to analyze bot application information to determine timing information for performing the action in the system of Judd.
One of ordinary skill in the art would have been motivated to combine Judd with Beeman as doing so would allow the most relevant content to be delivered to the user even in the event that there is a delay in the recipient opening the email message [Beeman: 0006].
With regard to Claim 2, Judd-Beeman teaches:
The method of claim 1, wherein the bot application information is included in the web page and the analyzing comprises analyzing the web page; (upon clicking a content item in an email client view, the recipient is presented with additional content in an email web view [Judd: 0031-32; 0047; Figs. 1-2]. Beeman teaches the received email message is rendered within a web browser application, and the HTML content of the email message is interpreted (i.e. analyzed) to transmit a request for dynamic content [Beeman: 0033]).
With regard to Claim 3, Judd-Beeman teaches:
The method of claim 1, wherein the content item is at least one of an article, social media post, and a web application; (utilizing the user interface to build and send out email newsletters or other types of electronic communications such as email campaigns, blog posts, alerts, mobile notifications, publications, news releases, announcements, invitations, etc. [Judd: 0024-25]. Beeman teaches the received email message is rendered within a web browser application, and the included content type may be “article”, “recipes”, “blog”, “obituaries”, or other content type that can be specified by a particular user as appropriate to their business or use case [Beeman: 0033; 0027]).
With regard to Claim 4, Judd-Beeman teaches:
The method of claim 1, wherein the bot application information comprises at least one of a Uniform Resource Locator (URL) associated with a network location, a resource identifier (ID) associated with a database of alternate content, and instructions for sharing the content item with a set of contacts of the user; (hyperlinks may be incorporated into the email newsletters to drive traffic to the websites or webpages of the client [Judd: 0029-31], and the incorporated social sharing buttons are displayed to the email recipient enabling readers to easily share information to their social networks [Judd: 0031]. Beeman teaches that the href tag and img tag contain URLs that reference a dynamic content server and/or unique embedded identifiers (i.e. resource identifiers), interpretation of which causes the recipient device to transmit a request to a dynamic content server which subsequently returns a content item for presentation to the recipient user [Beeman: 0021; 0033-35; 0045; Figs. 2 & 4]).
With regard to Claim 5, Judd-Beeman teaches:
The method of claim 4, further comprising: when the bot application information comprises a URL, accessing, by the computing device, the network location associated with the URL; retrieving, by the computing device, supplemental content from the network location; and causing, by the computing device, in accordance with the determined timing, the supplemental content to be displayed in association with the content item within the modified UI; (the href tag and img tag contain URLs that reference a dynamic content server, interpretation of which causes the recipient device to transmit a request to a dynamic content server which subsequently returns a content item for presentation to the recipient user [Beeman: 0021; 0033-35; Figs. 2 & 4], wherein emails can be transmitted to users having content templates and styling set at the time of transmission and/or when the user actually views the email [Beeman: 0041]).
With regard to Claim 6, Judd-Beeman teaches:
The method of claim 4, further comprising: when the bot application information comprises the resource ID, retrieving, by the computing device from the database, based on the resource ID, alternate content; and causing, by the computing device, in accordance with the determined timing, the alternate content to be displayed in association with the content item within the modified UI; (the href tag and img tag contain unique embedded identifiers, wherein the UUID contained within the request may be utilized by the dynamic content server to identify content of interest to a particular user associated with the UUID [Beeman: 0033-35; 0045; Figs. 2 & 4], wherein emails can be transmitted to users having content templates and styling set at the time of transmission and/or when the user actually views the email [Beeman: 0041]).
With regard to Claim 7, Judd-Beeman teaches:
The method of claim 6, further comprising accessing, by the computing device, alternate content that has been uploaded to the database by the content item’s provider; (content is incorporated into the email newsletter from various databases managed by the newsletter creator [Judd: 0030; Fig. 2]. Beeman teaches the dynamically-selected images or content items are stored on a Content Delivery Network for prompt service back to, and rendering by, the recipient's email client [Beeman: 0008]. Examiner notes that the content stored in the CDN was necessarily uploaded by the content item’s provider).
With regard to Claim 10, Judd-Beeman teaches:
The method of claim 1, wherein the determined timing relates to at least one of the content item being displayed in the UI of the browser and the user interacting with the content item; (the incorporated social sharing buttons are displayed to the email recipient enabling readers to easily share information to their social networks by interacting with the share buttons [Judd: 0031]. Beeman teaches emails can be transmitted to users having content templates and styling set at the time of transmission and/or when the user actually views the email [Beeman: 0041]).
With regard to Claim 11, Judd-Beeman teaches:
The method of claim 1, wherein the computing device is the client computing device; (the email message is rendered on recipient device via a locally-installed email client [Beeman: 0033]).
With regard to Claim 12, Judd-Beeman teaches:
The method of claim 1, wherein the computing device is a server computing device; (the email message is rendered by interacting with a remote webmail server to render the message within a web browser application [Beeman: 0033]).
With regard to Claim 13, Judd-Beeman teaches:
The method of claim 1, wherein the bot application information relates to multiple bot applications; (the generated email newsletter message comprises content incorporate into the email newsletter such as social sharing buttons and/or content published by third parties [Judd: 0029-31]. Beeman teaches the email advertisement can have a template with a static image and multiple other content items that are determined dynamically [Beeman: 0045; Fig. 4]).
With regard to Claims 14-17 & 19-20, they appear substantially similar to the limitations recited by claims 1, 4-6, & 10 and consequently do not appear to teach or further define over the citations provided for said claims. Accordingly, claims 14-17 & 19-20 are rejected for the same reasons as set forth in claims 1, 4-6, & 10.
Claim 8-9 & 18 are rejected under 35 U.S.C. 103 as being unpatentable over Judd et al. (US 2013/0232014 A1) in view of Beeman et al. (US 2020/0374247 A1) as applied to Claims 4 & 15 above, and further in view of Acharyya et al. (US 2016/0248719 A1).
With regard to Claim 8, Judd-Beeman teaches the method of claim 4, but does not teach:
analyzing, by the computing device, contact information of the user to determine the set of contacts; and enabling, by the computing device, in accordance with the determined timing, the user to share the content item with each contact in the set of contacts via the modified UI.
In a similar field of endeavor involving sharing content via social media contacts, Acharyya discloses:
analyzing, by the computing device, contact information of the user to determine the set of contacts; and enabling, by the computing device, in accordance with the determined timing, the user to share the content item with each contact in the set of contacts via the modified UI; (providing a social media interface that allows a user to provide input sharing operation such that the content will be shared only with the members of the selected sharing group, wherein in response to detecting that content is being prepared to be shared in a social media interface, the application determines a level of sentiment match, such as within a threshold, between the sentiment of the content and the sentiments of a set of social connections [Acharyya: 0092; 00100; Figs. 5-6]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Judd-Beeman in view of Acharyya in order to analyze and determine a set of contacts with which the recipient can share in the system of Judd-Beeman.
One of ordinary skill in the art would have been motivated to combine Judd-Beeman with Acharyya as doing so would allow NLP to perform a comparison to identify the sentiments of social media contacts that match with the sentiment of the content, thereby increasing the relevancy of information shared to the user’s contacts [Acharyya: 0045; 0100].
With regard to Claim 9, Judd-Beeman-Acharyya teaches:
The method of claim 8, wherein the determination of the set of contacts is based at least in part on a context of the content item and interests of each contact in the set of contacts; (the application determines a level of sentiment match, such as within a threshold, between the sentiment of the content and the sentiments of a set of social connections, for example, by using NLP to analyze a sentiment of the content, and sentiments of various social connections using their respective structured and unstructured data, and then performing a comparison to identify the sentiments that match with the sentiment of the content within a threshold [Acharyya: 0100; Fig. 6]).
With regard to Claim 18, it appears substantially similar to the limitations recited by claim 8 and consequently does not appear to teach or further define over the citations provided for said claim. Accordingly, claim 18 is rejected for the same reasons as set forth in claim 8.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Lombas et al. (US 11,321,413 B1) which teaches upon a user's opening an email, the email client loads the email, identifies a need for an ad in the email, and requests an ad from the ad server operated by the advertising agency, wherein the ad server receives a request for an advertisement and an associated number of pixels, and selects an ad bundle from the database in dependence upon one or more criteria such as profitability, demographics, location, time and so on [4:1-25].
Jamison et al. (US 2012/0042025 A1) which teaches a system where e-mail opens are treated like web page impressions, allowing the e-mail to retrieve the most targeted and relevant advertisement for the recipient such that images contained in the e-mail message can be rendered at the time of open, allowing an ad-server, which may be an in-house ad server of the targeted e-mail server or a third party ad server, to treat e-mail inventory with the same logic that drives online advertising on webpages [0013].
Hazarika (US 2013/0151633 A1) which teaches engaging a "Share" user interface on email messages placed on email messages in the form of an icon [0023].
In the case of amendments, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and support, for ascertaining the metes and bounds of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN MOREAU whose telephone number is (571) 272-5179. The examiner can normally be reached on Monday to Thursday and alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Gillis can be reached at (571) 272-7952. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/AUSTIN J MOREAU/Primary Examiner, Art Unit 2446
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