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
Status of Claims
This action is responsive to application filed July 5, 2024.
This application is a Continuation of: application 17624599 (now Patent 12063281).
Status of Claims
Claims 1-15 were presented, and are pending examination.
Drawings
Drawings filed on 7/5/24 are acknowledged.
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 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 §§ 706.02(l)(1) - 706.02(l)(3) 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).
A registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
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Claims 1-15 rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over: claims 1-12 of U.S. Patent No. 12063281. Although the conflicting claims are not identical, they are not patentably distinct from each other because they are obvious variations of each. Both claim sets are drawn to controlling tracking elements of a web page, wherein the electronic device is configured to communicate to a server device and to a web server associated with the web page.
As a representative example, claim 1 of the instant application along with claim 1 of the cited patent above, contain overlapping and equivalent limitations which are obvious variations of each other. Specific overlapping limitations comprise:
obtaining a web page address of the web page to connect to the web server; transmitting a web page request to the web server based on the web page; receiving, from the web server, a web page response, wherein the web page response comprises the tracking elements, configured to monitor one or more activities of a user of the web page, wherein the tracking elements comprise tracking tags; wherein the web page response comprises a control tag configured to control permission of the tracking elements of the web page to protect against tracking; rendering the web page based on the web page response; wherein rendering the web page comprises invoking the control tag; and wherein invoking the control tag comprises obtaining a first set of tracking tags of the web page.
Accordingly the Patent claim 1 contains each of these features of the instant claim 1 and thus the instant claim 1 is seen as an obvious variant.
The limitations of the dependent claims of the instant application are similarly found to have their equivalents in the independent and dependent claims of the above-mentioned Patent, and are deemed to be obvious variations over them as well.
Without a terminal disclaimer, the patent will preclude issuance of the instant application.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 14 rejected under 35 U.S.C. 101 because the claimed invention does not fall within a statutory category. The claim recites “computer readable storage medium…” It is unclear from the specification what the scope of the term “computer-readable storage media” encompasses, as the specification leaves it open-ended and fails to define its parameters. It is entirely possible that the claim may encompass non-statutory subject matter such as, among others, transitory media types like signals and RF/carrier waves etc, which do not fall within any of the statutory categories and is therefore held as non-patentable subject matter. See MPEP Chapter 2106 Section IV.B.¶4 and Chapter 2106.01. Applicant is requested to change “computer-readable storage media” limitation to recite “non-transitory computer readable storage medium”.
Claim Rejections - 35 USC § 103
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.
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, 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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Dudmesh et al (US Publication 20210243262) in view of Galarneau et al (US Publication 20150302052).
In reference to claim 1, Dudamesh teaches a method, performed at an electronic device, for controlling tracking elements of a web page, wherein the electronic device is configured to communicate to a server device and to a web server associated with the web page, the method comprising:
obtaining a web page address of the web page to connect to the web server; transmitting a web page request to the web server based on the web page address (see at least Figure 2 #s 20,24 & ¶ 60 line 5, which teaches a user accessing a website, where accessing a website includes transmitting a request to a web server based on a website URL);
receiving, from the web server, a web page response, wherein the web page response comprises the tracking elements, configured to monitor one or more activities of a user of the web page, wherein the tracking elements comprise tracking tags (see at least ¶ 59 lines 1-10 and ¶ 64 lines 1-5, which teaches tracking tags deployed on a website which are sent in a website, responsive to a user accessing the website, and for collecting user activity data);
wherein the web page response comprises a control tag configured to control permission of the tracking elements of the web page to protect against tracking (see at least ¶ 61 lines 9-20, which teaches a consent prompt tag which controls permissions of the other tags, and ¶ 63 lines 13-16, which teaches that the permissions include a user denying consent of certain tracking tags thus protecting against tracking);
rendering the web page based on the web page response; wherein rendering the web page comprises invoking the control tag (see at least ¶ 61 lines 15-23, which teaches displaying the website to the user including invoking a consent prompt tag which displays a menu for getting the users consent); and
wherein invoking the control tag comprises obtaining a first set of tracking tags of the web page (see at least ¶ 60 lines 5-13 and ¶ 63, which teaches invoking the consent tag for obtaining all of the permitted tracking tags).
Although Dudamesh teaches sending webpage responses with the trackings and control tags, Dudmesh fails to explicitly teach wherein the same web page response comprises both the tracking elements and the control permissions. However, Galarneau teaches controlling audience data and tracking (see Galarneau, at least Abstract). Galarneau discloses sending to a user, a master tag for controlling which user identified (ie. permitted) tags are to be injected/rendered on the page (see Galarneau, at least ¶ 12). It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Dudmesh based on the teachings of Galarneau for the purpose of managing user data collection in a single client-server transaction and ensuring that user permission is obtained prior to any user data collection is performed.
In reference to claim 2, this is taught by Dudmesh, see at least ¶ 59 lines 4-10 and ¶ 60 lines 5-8, where Dudmesh teaches identifying and loading different types of tags as sets of user consented tags.
In reference to claim 3, this is taught by Dudmesh, see at least ¶ 63 lines 8-18, where Dudmesh teaches deactivating tracking tags by denying consent.
In reference to claim 4, this is taught by Dudmesh, see at least ¶ 61 lines 18-23, where Dudmesh teaches obtaining control/consent parameters from users.
In reference to claim 5, this is taught by Dudmesh, see at least ¶ 59 lines 4-10 and ¶ 143 lines 1-12, where Dudmesh teaches multiple tracking categories to be accepted by the user.
In reference to claim 6, this is taught by Dudmesh, see at least ¶ 60 lines 5-13, where Dudmesh teaches activating all of the tracking tags as a third set.
In reference to claim 7, this is taught by Dudmesh, see at least ¶ 69 lines 1-10, where Dudmesh teaches requesting and deploying a set of tags to the web page.
In reference to claim 8, this is taught by Dudmesh, see at least ¶ 60 lines 5-13, where Dudmesh teaches obtaining consent for the sets of tracking tags.
In reference to claim 9, this is taught by Dudmesh, see at least ¶s 59 & 143, where Dudmesh teaches activating all of the tracking tags as a third set, where all the tags includes different tags such as a first and second tag which collect different information.
In reference to claim 10, this is taught by Dudmesh, see at least ¶ 62 and ¶ 83 lines 10-22, where Dudmesh teaches deactivating by denying consent, and modifying tracking tag attributes.
In reference to claim 11, this is taught by Dudmesh, see at least ¶ 83 lines 10-22 and ¶ 89 lines 1-10, where Dudmesh teaches overwriting tag data structures with modified tag information, thus excluding the original source.
In reference to claim 12, this is taught by Dudmesh, see at least ¶ 63 lines 1-20, where Dudmesh teaches modifying the tags to an original database.
In reference to claim 13, this is taught by Dudmesh, see at least ¶ 59 lines 6-16 and Figure 10, where Dudmesh teaches different tracking tag attributes.
Claims 14,15 correspond to claim 1 and are claimed as a different statutory category. Therefore claims 14,15 are rejected based upon the same rationale as given above.
Conclusion
For any subsequent response that contains new/amended claims, Applicant is required to cite its corresponding support in the specification. (See MPEP chapter 2163.03 section (I.) and chapter 2163.04 section (I.) and chapter 2163.06) Applicant may not introduce any new matter to the claims or to the specification.
In formulating a response/amendment, Applicant is encouraged to take into consideration the prior art made of record but not relied upon, as it is considered pertinent to applicant's disclosure. See attached Form 892.
Contact & Status
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMY M OSMAN whose telephone number is (571)272-4008. The examiner can normally be reached Mon-Fri, 9AM-5PM.
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/Ramy M Osman/
Primary Examiner, Art Unit 2457
December 12, 2025