DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
This action is in reply to the reply filed on 1/27/2026.
Claims 31-138 are pending and have been examined.
Priority
Examiner finds that there is support for the elements claimed and the claims have been examined in view of the provisional applications filed on 10/14/2005 and 1/11/2005.
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 31-138 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12038994. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application are slightly broader than the and thus fully encompass the claims of 12038994.
Claims from 18/748,038
Claims from 12038994
Claims 31, 58, 85, 112
generate an initial hierarchy menu datastructure of graphical user interface menu item from a source website for an advertisement at a target website and where each menu item has a reference target identifier, and where at least one graphical user interface menu item includes a link to another menu in the initial hierarchy menu datastructure,
in which the initial hierarchy menu datastructure includes a structure organizing a multi-level menu arrangement,
in which a multi-level menu arrangement is structured to appear over a content item on graphical user interface display,
in which the multi-level menu arrangement includes at least one of the graphical user interface menu item having at least one hyperlink,
in which the graphical user interface menu item is associated with the content item being displayed,
in which the menu items are links to effect a purchase,
in which a hierarchy of menu items from the initial hierarchy menu datastructure is structured for activation triggered interaction with an ad;
verify that the initial hierarchy menu datastructure's reference target identifiers and associated menu item information are valid in which the at least one hyperlink is dynamically checked to successfully resolve to a location to the source website;
distribute the initial hierarchy menu datastructure for consideration by menu viewers;
obtain menu viewer's usage tracking indicia datastructure of an initial hierarchy from the target website,
in which the menu viewer's usage tracking indicia datastructure includes a number of impressions made by menu items,
in which the menu viewer's usage tracking indicia datastructure includes which graphical user interface menu item is engaged;
provide an update to the graphical user interface menu item in the initial hierarchy menu datastructure,
in which the update to the graphical user interface menu item re-arranges the order of multi-level menu arrangement of the graphical user interface menu item for display.
Claims 32, 59, 86, 113
in which menu items may include any of: graphics, video, forms,composite media, and
in which the reference target identifier is any of: digital object identifier, universal name identifier,universal resource identifier, universal resource locator, universal resource name.
Claims 33, 60, 87, 114:
in which menu items relate to any of: internal product information, external information, government information, medical patient information, content management information, RFID information, personal identity information, military information, document management information.
Claims 34, 61, 88, 115:
in which menu items may include information from a back-end server.
Claims 35, 62, 89, 116:
in which the back-end server is a knowledge-management system.
Claims 36, 63, 90, 117:
in which the menu items include live inventory.
Claims 37, 64, 91, 118:
in which the hierarchy of menu items is brought about by any of:a banner advertisement, a sponsored advertising link, a media player, a document, consultants employing a menu building user interface, marketing analysts employing a menu building user interface.
Claim 38, 65, 92, 119:
in which the viewers' usage indicia includes any of: users' purchasing behavior, independently-recorded user preference information.
Claim 39, 66, 93, 120:
in which the viewers' usage indicia includes independently-recorded user information that is associated with a category of users.
Claim 40, 67, 94, 121:
in which the category of users include any of anonymized metrics analyzing a type of user by income, interests, demographics, preferences.
Claim 41, 68, 95, 122:
in which the viewers' usage indicia includes metrics recorded by a site hosting the menu.
Claims 42, 69, 96, 123:
in which the metrics include any of: analyzing based on time of day, geographical location of site visitors.
Claim 43, 70, 97, 124:
in which the viewers' usage indicia is effected by tracking of the menu viewer's usage of the initial hierarchy.
Claim 44, 71, 98, 125:
in which tracking includes any of: an amount of time a menu item is considered, a number of times a menu item is selected, a number of times a menu item is passed over.
Claim 45, 72, 99, 126:
in which the update is performed automatically.
Claim 46, 73, 100, 127:
in which the update is performed manually with a menu editor.
Claim 47, 74, 101, 128:
in which the menu editor displays tracking statistics.
Claim 48, 75, 102, 129:
in which the tracking statistics include any of: a number of impressions made by menu items, a number of times a menu item is selected, an amount of time a menu item is considered, a number of times a menu item is passed over.
Claim 49, 76, 103, 130:
in which the menu editor displays usage constraints that limit how a menu item may be used.
Claims 50, 77, 104, 131:
in which the usage constraints include any of: a number of impressions made by menu items, a number of times a menu item is selected, an amount of time a menu item is considered, a number of times a menu item is passed over.
Claims 51, 78, 105, 132:
in which update includes arranging more popular menu items more prominently, and in which greater prominence includes any of: higher placement in a menu hierarchy, higher placement within a tier of a menu hierarchy.
Claim 52, 79, 106, 133:
in which more popular menu items are menu items that have been selected more frequently.
Claim 53, 80, 107, 134:
in which update includes any of: placement of sponsored advertising of menu items, arranging less popular menu items more prominently.
Claims 54, 81, 108, 135:
in which update includes any of: arranging the menu items based on context, arranging the menu items to increase efficacy of the sponsored advertising.
Claims 55, 82, 109, 136:
in which the placement of sponsored advertising is based on any of: context, increased prominence, higher bids for ad placement, locations that have been determined to be most effective through tracking, subject to usage constraints.
Claims 56, 83, 110, 137:
in which update includes any of: placing menu items to increase efficacy, arranging the menu items to increase efficacy, placing menu items based on context.
Claim 57, 84, 111, 138:
in which the context is based on any of: content of references targeted by menu items in the hierarchy of menu items, other menu items within the hierarchy of menu items.
Claims 1, 29, 30
generate, via the at least one processor, an initial hierarchy menu datastructure of graphical user interface menu items from a source website for an advertisement at a target website and where each menu item has a reference target identifier, and where at least one graphical user interface menu item includes a link to another menu in the initial hierarchy menu datastructure,
in which the initial hierarchy menu datastructure includes a structure organizing a multi-level menu arrangement,
in which a multi-level menu arrangement is structured to appear over a content item on graphical user interface display,
in which the multi-level menu arrangement includes at least one of the graphical user interface menu item having at least one hyperlink,
in which the graphical user interface menu item is associated with the content item being displayed,
in which the multi-level menu arrangement of the graphical user interface menu items is ordered for display according to levels of usage,
in which the menu items are links to effect a purchase,
in which a hierarchy of menu items from the initial hierarchy menu datastructure is structured for activation triggered interaction with an ad;
verify that the initial hierarchy menu datastructure's reference target identifiers and associated menu item information are valid in which the at least one hyperlink is dynamically checked to successfully resolve to a location to the source website;
distribute, via a communications network, the initial hierarchy menu datastructure for consideration by menu viewers;
obtain menu viewer's usage tracking indicia datastructure of an initial hierarchy from the ta website,
in which the menu viewer's usage tracking indicia datastructure includes a number of impressions made by menu items,
in which the menu viewer's usage tracking indicia datastructure includes which graphical user interface menu item is engaged;
provide an update to the menu item in the initial hierarchy menu datastructure based on the indicia of usage,
in which the update to the graphical user interface menu item re-arranges the order of multi-level menu arrangement of the graphical user interface menu item for display according to levels of usage.
Claim 2:
in which menu items may include any of: graphics,video, forms, composite media, and in which the reference target identifier is any of: digital object identifier, universal name identifier,universal resource identifier, universal resource locator, universal resource name.
Claim 3:
in which menu items relate to any of: internal product information, external information, government information, medical patient information, content management information, RFID information, personal identity information, military information, document management information.
Claim 4:
in which menu items may include information from a back-end server.
Claim 5:
in which the back-end server is a knowledge- management system.
Claim 6:
in which the menu items include live inventory.
Claim 7:
in which the hierarchy of menu items is brought about by any of: a banner advertisement, a sponsored advertising link, a media player, a document, consultants employing a menu building user interface, marketing analysts employing a menu building user interface.
Claim 8:
in which the viewers' usage indicia includes any of: users' purchasing behavior, independently-recorded user preference information.
Claim 9:
in which the viewers' usage indicia includes independently-recorded user information that is associated with a category of users.
Claim 10:
in which the category of users include any of anonymized metrics analyzing a type of user by income, interests, demographics, preferences.
Claim 11:
in which the viewers' usage indicia includes metrics recorded by a site hosting the menu.
Claim 12:
in which the metrics include any of: analyzing based on time of day, geographical location of site visitors.
Claim 13:
in which the viewers' usage indicia is effected by tracking of the menu viewer's usage of the initial hierarchy.
Claim 14:
in which tracking includes any of: an amount of time a menu item is considered, a number of times a menu item is selected, a number of times a menu item is passed over.
Claim 15:
in which the update is performed automatically
Claim 16:
in which the update is performed manually with a menu editor.
Claim 17:
in which the menu editor displays tracking statistics.
Claim 18:
in which the tracking statistics include any of:a number of impressions made by menu items, a number of times a menu item is selected, an amount of time a menu item is considered, a number of times a menu item is passed over.
Claim 19:
in which the menu editor displays usage constraints that limit how a menu item may be used.
Claim 20:
in which the usage constraints include any of:a number of impressions made by menu items, a number of times a menu item is selected, an amount of time a menu item is considered, a number of times a menu item is passed over.
Claim 21:
in which update includes arranging more popular menu items more prominently, and in which greater prominence includes any of: higher placement in a menu hierarchy, higher placement within a tier of a menu hierarchy.
Claim 22:
in which more popular menu items are menu items that have been selected more frequently.
Claim 23:
in which update includes any of: placement of sponsored advertising of menu items, arranging less popular menu items more prominently.
Claim 24:
in which update includes any of: arranging the menu items based on context, arranging the menu items to increase efficacy of the sponsored advertising.
Claim 25:
in which the placement of sponsored advertising is based on any of: context, increased prominence, higher bids for ad placement, locations that have been determined to be most effective through tracking, subject to usage constraints.
Claim 26:
in which update includes any of: placing menu items to increase efficacy, arranging the menu items to increase efficacy, placing menu items based on context.
Claim 27:
in which the context is based on any of: content of references targeted by menu items in the hierarchy of menu items, other menu items within the hierarchy of menu items.
Reasons for Overcoming the Art of Record
The claims include “generate…hierarchy menu data structure…where each menu item has a reference target identifier, and where at least one menu item includes a link to another menu in the hierarchy”, which is interpreted to mean that each menu item includes a link (i.e. reference target identifier) to a webpage of the source website (i.e. advertising at the target website) and at least one of the menu item includes a link to another menu where the webpage or the other menu is displayed depending on the type of user interaction. See, [0244] were a rollover interaction calls a menu and click calls the website.
The claims include “generate…hierarchy menu datastructure” that includes a “multi-level menu arrangement” and “in which” limitation related to the generation, which are interpreted in light of Paragraph [0089]. These limitation correlate to the specification description of generating a menu structure specification having multiple menus where each menu is populated with menu items. Further, Figure 18 shows the construction of a resulting MultiLink menu 1810 that is being overlaid on the source website and Figure 16 shows ordering menu items and how the user navigates from higher level menus (1633) to lower level menus (1621) by providing a first type of interaction with the menu items without having to traverse the underlying webpages, unless the user wants to view any of the underlying webpage, in which case the user at any time can provide a different type of interaction with any of the menu items to invoke the underlying webpage (i.e. navigate to the back-end system and display the webpage like the one shown in 1622). See, [0197, 0242].
The generation step and related limitations distinguish over the search results disclosed in Singh. Put another way the claims do not read on search engines that return a ranked list of search results with links to websites. In light of the specification the generation step is using the data structure of a source website having multiple layers of webpages to create a structure having multiple menus and menu items that mimic the website structure.
The claims also include a dynamically verifying at least one hyperlink resolves to the source website (i.e. either the top level source webpage or a lower level webpage linked to the source website).
The claims also include distributing the initial hierarchy menu data structure and tracking impressions and tracking engagements. Engaging causes impression with at least one of the menu items by either causing another menu to be displayed or taking the user to a webpage at the source website. For examples rolling over the menu item in a first menu causes an impression of a menu item by displaying a menu at a lower level in the multi-level menu arrangement and clicking on a menu item causes an impression of the webpage at the source website.
The claims also include providing an update to the menu items in the initial hierarch menu data structure based on usage, such as click or roll-over interactions that cause impressions. The update either moves the menu item up or down within the GUI menu and/or moves the menu item to a higher or lower level GUI menu in the multi-level menu arrangement.
Examiner’s search did not yield a reasonable combination of references that discloses the claimed ordered combination of limitations in the context of the claimed invention.
Art of Record
Singh et al. (U.S. 2002/0165849; Hereafter: Singh): Singh is overcome based on the interpretations set forth above.
Ruthfield et al. (U.S. 2005/0149512; Hereafter: Ruthfield): Ruthfield is the closest available reference. Ruthfield discloses a similar menu structure having multiple menus with multiple menu items with links to the user’s favorite website where the links are reordered based on usage and displayed over content. However, the menu structure is not generated based on structure of a source website, the links are not for an advertisement at a target website, the links are not verified, the links are not triggering an interaction with an ad, and the menu items are not links to effect a purchase.
Clark et al. US 2006/0095343: Clark discloses cascading commerce menus. The cascading menu contain a top-level menu that lists a first high-level set of products, services, and/or advertising categories, and a series of descending sub-menus where each sub-menu further defines the product, service, and advertising categories into more detailed subcategories. Clark discloses menu items that are advertising to effect a purchase and modifying the categories based on user interest. Further, Clark discloses the menu items include links to content catalog pages, and placing a cursor over the menu items causes a second sub-menu. In Clark, the cascading commerce menu is created from text files the include classes of product and products where the menu structure mimics a catalog associated with commerce facilitator or service provider, which is at least similar to constructing the menu based on a source website.
Storch et al. US 7,308,420: Storch discloses a hierarchical menu system including links to other advertising content. Particularly, on a website a series of nested menus is provided and allows the user to navigate to various webpages, for example, when selecting the menu for Target, the menu opens a sub menu with links to the retailer shopping site, periodic advertising circular, store locator, on-line periodical, and shopping sites and catalogs affiliated with the retailer.
Donker et al. US 2004/0107267: discloses dynamically checking availability of hyperlinks on a web page.
Peel, Jr. et al US 6,961,897: discloses HTML menu structure that mimics the functionality of a tree view of a corresponding website to display Web pages with links that hierarchically presents homepages and associated webpages. Peel discloses expanding and contracting the list of menu items using plus and minus check boxes and Peel suggests that the menu items provide the user the ability to navigate to specific pieces of content associated with menu item via links.
Kotas et al. U.S. 2003/0204449: discloses verifying and validating that an identifier is associated with menu item information.
Tinkler US 6,411,999: discloses dynamically building a menu of zone button (i.e. menu items) based on the object table of a webpage.
King US 2005/0223023, Smyth et al. US 2003/0065706, Borysewicz US 6,732,332 and Arcuri et al. US 6,792,475: disclose generating and editing hierarchal menus and webpages.
Response to Arguments
Applicant indicated they would file a terminal disclaimer to overcome the double patenting rejection, however, has not provided said terminal disclaimer. Applicant indicates this is because the website for filing terminal disclaimers electronically is not working. The examiner called the applicant on 2/10/2026 to get a status update, however applicant was not responsive. The examiner left a message but no call back was received. According to the USPTO website, as of January 29th the issue has been resolved or at least a workaround has been provided. As a result, the examiner is proceeding with a final office action at which point the claims will be allowable once the applicant files the terminal disclaimer. As a result, such rejections have been maintained.
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 CHRISTOPHER STROUD whose telephone number is (571)272-7930. The examiner can normally be reached Mon. - Fri. 9AM-5PM.
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CHRISTOPHER STROUD
Primary Examiner
Art Unit 3621B
/CHRISTOPHER STROUD/Primary Examiner, Art Unit 3621