DETAILED ACTION
Status of the Claims
This office action is submitted in response to the application filed on 1/7/2025.
Examiner notes that this application is a continuation of 18/397230, which is now US Patent No. 12229806.
Examiner further notes that 18/397230 is a continuation of several cases, which are now US Patent Nos. 11922465, 11263671, 10528988, and 91773314.
Examiner further notes Applicant’s priority date of 11/3/2011, which stems from the aforementioned parent applications.
Claims 1-20 are currently pending and have been examined.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Double Patenting
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12229806; claims 1-20 of US Patent No. 11922465; claims 1-20 of US Patent No. 11263671; claims 1-17 of US Patent No. 10528988; and 1-14 of US Patent No. 91773314. Although the claims at issue are not identical, they are not patentably distinct from each other because all of these inventions disclose a method for receiving search terms; receiving and displaying relevant content and ads in response to the search terms; identifying user interaction with the ad; expanding the size of the window that the ad is in; and displaying the expanded window with a close button that enables the window to reduce back to its original size.
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.
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.
Claims 1-4, 6-12, and 14-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Independent claims 1, 9, and 17, in part, describe an invention comprising: providing search terms in a browser; receiving relevant ads in response to the search request; displaying the ad content to the user; and displaying “expanded” ad content with a close window button. As such, the invention is directed to the abstract idea of providing ads in response to search requests, which, pursuant to MPEP 2106.04(a), is aptly categorized as a method of organizing human activity (i.e. advertising and marketing activities). Therefore, under Step 2A, Prong One, the claims recite a judicial exception.
Next, the aforementioned claims recite additional elements that are associated with the judicial exception, including: identifying a user interaction with the ad. Examiner understands these limitations to be insignificant extrasolution activity. (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Cf. Diamond v. Diehr, 450 U.S. 175, 191-192 (1981) ("[I]nsignificant post-solution activity will not transform an unpatentable principle in to a patentable process.”).
The aforementioned claims also recite the additional element of expanding the ad from a first size to a second size when the user clicks on it, the second size occupying the first region and an adjoining second region of the browser page. Examiner notes that this limitation is merely a results-based feature (e.g. it doesn’t explain how the ad expands) that is recited at an “apply it” level. As such, the feature is merely being used to display content and implement the abstract idea (displaying ads on the search page). See MPEP 2106.06(f).
The aforementioned claims also recite additional elements including: a “server” for sending data, receiving data, and providing ads; a “network” for transmitting data; one or more “processors” for executing the method; and a “memory” for storing executable instructions. These limitations are recited at a high level of generality, and appear to be nothing more than generic computer components. Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110 USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at 1984.
Furthermore, looking at the elements individually and in combination, under Step 2A, Prong Two, the claims as a whole do not integrate the judicial exception into a practical application because they fail to: improve the functioning of a computer or a technical field, apply the judicial exception in the treatment or prophylaxis of a disease, apply the judicial exception with a particular machine, effect a transformation or reduction of a particular article to a different state or thing, or apply the judicial exception beyond generally linking the use of the judicial exception to a particular technological environment. Rather, the claims merely use a computer as a tool to perform the abstract idea(s), and/or add insignificant extra-solution activity to the judicial exception, and/or generally link the use of the judicial exception to a particular technological environment (e.g. an internet search page on a generic computer).
Next, under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered both individually and as an ordered combination, do not amount to significantly more than the abstract idea. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Simply put, as noted above, there is no indication that the combination of elements improves the functioning of a computer (or any other technology), and their collective functions are merely facilitated by generic computer implementation.
Additionally, pursuant to the requirement under Berkheimer, the following citations are provided to demonstrate that the additional elements, identified as extra-solution activity, amount to activities that are well-understood, routine, and conventional. See MPEP 2106.05(d).
Official Notice is taken that it is old and well-known to detect when a user interacts with online content (e.g. clicks on an ad image). This can be achieved by using an HTML onclick attribute or a JavaScript event listener.
Thus, taken alone and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea), and are ineligible under 35 USC 101.
Claims 2-4, 6-8, 10-12, 13-16, and 18-20 are dependent on the aforementioned independent claims, and include all the limitations contained therein. These claims do not recite any additional technical elements, and simply disclose additional limitations that further limit the abstract idea with details regarding the keyword search, ad slots and regions where the ads are displayed, and the content of the expanded ads. Thus, the dependent claims merely provide additional non-structural (and predominantly non-functional) details that fail to meaningfully limit the claims or the abstract idea(s).
Therefore, claims 1-4, 7-15, and 18-21, and 23 are not drawn to eligible subject matter, as they are directed to an abstract idea without significantly more.
Claims 5 and 13, however, are deemed to be eligible because they describe (in detail) how the ad expansion is taking place and how it determines a direction to expand. As such, these claims are not recited at an “apply it” level, nor do they denote a general link to the underlying technology.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claims 1, 3-4, 9, 11-12, 17, and 19-20 are rejected under 35 USC 102(a) as being anticipated by Brown et al. (20110125594).
Claims 1, 9, and 17: Brown discloses a method, device, and non-transitory computer-readable medium comprising:
transmitting, to a server, a request for content (Paragraphs 54 and 88. The ad player requests content from ad servers. In another embodiment, a calling application makes a request to an ad manager to provide an ad on a webpage.);
receiving, over a network, a first content item and a second content item associated with the first content item (Paragraphs 90-91. The system receives ad content and metadata associated with the ad content.) ;
displaying the first content item within a content slot in an information resource, the content slot having a first size occupying a first region of the information resource (Fig. 5. Ads are displayed in various locations on a webpage.);
identifying a user interaction associated with the first content item (Paragraph 69. The user performs a “roll-over” with their mouse and cursor on the ad.); and
responsive to the user interaction associated with the first content item, expanding the content slot from the first size to a second size, the second size occupying the first region and an adjoining second region of the information resource (Fig. 5; Paragraphs 64-65 and 69. When the user performs a roll-over on the ad or clicks the “plus sign” on the ad, the ad expands to occupy a larger space on the page and display additional content.), and
displaying, in the content slot expanded from the first size to the second size, the first content item, the second content item, and an actionable object configured to reduce the content slot from the second size to the first size (Fig. 6; Paragraph 67. The expanded ad has a “minus sign” in the corner that enables the expanded ad to return to its original size).
Claims 3, 11, and 19: Brown further discloses a method wherein expanding the content slot includes expanding an inline frame. (Fig. 5; Paragraph 115. The expanding ad stretches the width and/or height of the HTML frame.).
Claims 4, 12, and 20: Brown further discloses a method wherein expanding the inline frame occurs while the first content item is displayed in the first region. (Fig. 5; Paragraphs 65 and 69. The expanded content happens while the original ad is in its original space on the webpage.).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 2, 10, and 18 are rejected under 35 USC 103(a) as being unpatentable over Brown in view of Flombaum (20100257049).
Brown discloses those limitations cited above, but does not appear to explicitly describe a method wherein the request for content is a request for a plurality of search results comprising one or more keywords.
Flombaum, however, discloses a method wherein the request for content is a request for a plurality of search results comprising one or more keywords. (Paragraphs 13-15. A user submits a keyword search via a search engine; the search engine returns results associated with the keyword; and ads that are relevant to the keyword search are displayed in areas alongside the search results.).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to combine this feature of Flombaum with those of Brown. One would have been motivated to do this in order to provide targeted contextual ads to users in an online setting.
Claims 5 and 13 are rejected under 35 USC 103(a) as being unpatentable over Brown in view of Saito (20070253641).
As noted above, Brown discloses a method for expanding the frame of an ad to display additional content upon detecting user interaction with the ad. Brown, however, does not appear to explicitly describe a method wherein expanding the inline frame includes expanding the inline frame in an expansion direction based on a ratio between a horizontal dimension and a vertical dimension of the inline frame prior to expanding the inline frame.
Saito, however, discloses a method wherein [expanding the inline frame includes expanding the inline frame in an expansion] the ad is displayed in a direction based on a ratio between a horizontal dimension and a vertical dimension of the [inline frame prior to expanding the inline frame] ad. (Figs. 17 and 22. Paragraphs 458, 479, and 483. The ad is displayed in a space on a webpage based on a horizontal to vertical dimensional ratio.).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to combine this feature of Saito with those of Brown. One would have been motivated to do this in order to ensure that the ad will fit on a page without getting cut off.
Claims 6-8 and 14-16 are rejected under 35 USC 103(a) as being unpatentable over Brown in view of Official Notice.
Brown discloses those limitations cited above, but does not appear to explicitly describe a method in which the expanded content of the ad includes location information for the entity, a rating for the entity, and/or a link to a page associated with the entity.
Official Notice is taken that it is old and well-known in the art for an online ad to contain a location (address) of the advertised business, customer ratings and/or reviews associated with the business, and/or a URL link to the advertiser’s webpage.
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing date of the invention to combine these features since the claimed features are merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Examiner further notes that these claims merely disclose non-functional descriptive material (i.e., what the ad displays), and are afforded limited patentable weight.
Additional Relevant References
Though not cited in the above rejections, the following references are likewise deemed to be relevant to Applicant’s disclosures:
Angelica et al. (20040239703), directed to an expanding computer display advertising method and system.
Thiry et a. (20030085916), directed to a method for interactive instruction using an electronic display device.
Kobyakov et al. (20150026584), directed to a method for previewing expandable content items.
Fan et al. (20090327869), directed to a method for online ad serving.
Smith et al. (20110161990), directed to a method for secure expandable ads using an API and cross-domain communications.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BUSCH whose telephone number is (571)270-7953. The examiner can normally be reached M-F 10-7.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraf can be reached at 571-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER C BUSCH/Examiner, Art Unit 3621
/WASEEM ASHRAF/Supervisory Patent Examiner, Art Unit 3621