DETAILED ACTION
Status of the Claims
This office action is submitted in response to the amendment filed on 1/9/26.
Examiner notes Applicant’s foreign priority date of 3/29/24, which stems from 10-2024-0043465 (KR).
Claims 1 and 6-11 have been amended.
Claim 16 is new.
Claims 1-16 are currently pending and have been examined.
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 .
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, 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 1-3, 5-8, 10-16 are rejected under 35 USC 103 as being unpatentable over Malca (US 2018/0101507) in view of Carasso (US 2017/0278144).
Claims 1 and 6: Malca discloses a method and non-transitory computer readable medium wherein the at least one instruction is executed to:
generate an inline frame including a script which is executed to output advertisement content on a web page of the HTTP response (Paragraphs 8, 43-44; Fig. 2. The anti-ad-blocking system creates a BLOB object containing HTML code, creates an object URL referencing the BLOB content, creates an iframe at a location on a webpage corresponding to where advertising content should be displayed, and sets the source of the iframe to the object URL, after which the HTML code is executed, a request for content is sent, and the ad content is received and rendered via the web browser. Malca further explicitly discloses a client-device embodiment in which the client device performs the anti-ad-blocking process including loading the HTML document with the iframe and executing the HTML code included in the BLOB content (Paragraph 50; Fig. 3));
add the inline frame to the web page (Paragraphs 8, 43-44; Fig. 2, step 203. The anti-ad-blocking system creates an iframe at a location on the webpage where the HTML code is to be retrieved and executed, corresponding to the location where advertising content should be displayed);
output the advertisement content in an area where the advertisement content is to be output using the script of the inline frame (Paragraphs 8, 43-44; Fig. 2, steps 206-207. The ad content is received and rendered within the iframe on the webpage); and
the script of the inline frame is executed to override an API of a browser application executed on the client (Paragraph 49. Object wrappers in the Document Object Model (DOM) including Element.prototype.appendChild and Element.prototype.insertBefore are modified to automatically set a newly created iframe's source to a BLOB URL such that when data is written into the iframe it has the potential to bypass any type of ad-blocking technology. These object wrapper overrides may be pushed down into the created iframe as well).
While Malca describes a method in which ad content is transmitted from an ad server to a client device (Fig. 1), it does not appear to explicitly describe a method for receiving an HTTP request from a client, or transmitting, to the client, an HTTP response with a script added, the script including at least one instruction to be executed on the client.
Carasso, however, discloses a method for bypassing online ad blockers comprising:
receiving an HTTP request from a client (Fig. 3; Paragraph 43. The user device requests and receives the content publisher content from a remote site. The request is issued as an HTTP GET request with a URL identifying an address of the site and the content being requested); and
transmitting, to the client, an HTTP response with a script added, the script including at least one instruction to be executed on the client (Figs. 2-3; Paragraphs 33, 43. In response to the HTTP request, the content publisher serves the requested content with the bypass loader — a client-executed script embedded in the HTTP response — to the user device).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to combine these features of Carasso with those of Malca. One would have been motivated to do this in order to provide a means for remotely providing a user with content that they requested via their web browser.
Claims 2, 7, and 12: The Malca/Carasso combination discloses those limitations cited above. Carasso further discloses a method wherein the API of the browser application is overridden to exchange an HTTP request for calling the script of the inline frame and an HTTP response for calling the script of the inline frame via a proxy server (Abstract; Fig. 3; Paragraph 47. The bypass proxy modifies the content by modifying the advertisement call to specify the proxy URL instead of the original advertisement URL, such that HTTP requests for the script of the inline frame are exchanged via the proxy server).
The rationale for combining Carasso with Malca is articulated above and reincorporated herein.
Claims 3, 8, and 13: The Malca/Carasso combination discloses those limitations cited above. Carasso further discloses a method wherein the API of the browser application is overridden to modify at least one property of the HTTP response for calling the script of the inline frame (Abstract; Fig. 3; Paragraphs 30, 40. The bypass proxy and bypass loaders counteract ad blocker functionality and ensure that ads are embedded in the page. The modification of the HTTP response involves changing the source address or link of the advertisement call within the content to a modified address or link that is not within the adblocker blacklist).
The rationale for combining Carasso with Malca is articulated above and reincorporated herein.
Claims 5, 10, and 15: The Malca/Carasso combination discloses those limitations cited above. Malca further discloses a method in which the client device loads an HTML document that includes an iframe, the execution of which causes the rendering of the content on the page (Paragraph 50; Fig. 3). Carasso further discloses a method wherein the at least one property of the HTTP response for calling the script of the inline frame is modified by the client executing the script of the inline frame (Paragraph 39. The bypass loader reintroduces the advertisement that the adblocker removed back into the presentation or rendering of the content by manipulating the DOM hierarchy, inserting a node for the advertisement into the hierarchy with the attributes specified by the content provider).
The rationale for combining Carasso with Malca is articulated above and reincorporated herein.
Claim 11: Malca discloses a method comprising:
generating an inline frame including a script which is executed to output advertisement content on a web page of the HTTP response (Paragraphs 8, 43-44; Fig. 2. The anti-ad-blocking system creates an iframe at a location on a webpage where advertising content is to be displayed, sets the iframe source to a BLOB URL, executes the HTML code, and renders the ad content within the iframe);
adding the inline frame to the web page (Paragraphs 8, 43-44; Fig. 2, step 203. The anti-ad-blocking system creates an iframe at a location on a webpage where the HTML code is to be retrieved and executed, corresponding to the location where advertising content should be displayed);
outputting the advertisement content in an area where the advertisement content is to be output using the script of the inline frame (Paragraphs 8, 43-44; Fig. 2, steps 206-207. The ad content is received and rendered within the iframe on the webpage); and
wherein the script of the inline frame is executed to override an API of a browser application executed on the client (Paragraph 49. Object wrappers in the DOM including Element.prototype.appendChild and Element.prototype.insertBefore are modified to automatically set a newly created iframe's source to a BLOB URL, bypassing ad-blocking technology, and these overrides may be pushed down into the created iframe).
While Malca describes a method in which ad content is transmitted from an ad server to a client device (Fig. 1), it does not appear to explicitly describe a method for transmitting an HTTP request to a server, or receiving an HTTP response with a script added, the script including at least one instruction.
Carasso, however, discloses a method for bypassing online ad blockers comprising:
transmitting an HTTP request to a server (Fig. 3; Paragraph 43. The user device requests and receives the content publisher content from a remote site. The request is issued as an HTTP GET request with a URL identifying an address of the site and the content being requested); and
receiving an HTTP response with a script added, the script including at least one instruction (Figs. 2-3; Paragraphs 33, 43. In response to the HTTP request, the user device receives the requested content with the bypass loader — a client-executed script embedded in the HTTP response — to be executed on the client device).
The rationale for combining Carasso with Malca is articulated above and reincorporated herein.
Claim 16: The Malca/Carasso combination discloses those limitations cited above with respect to parent claim 1. Malca further discloses a method wherein the API override is limited to an execution context of the inline frame and is performed prior to rendering of the advertisement content, without reinserting advertisement content removed by an ad-blocking function (Paragraphs 43, 49; Fig. 2. The object wrapper overrides of Element.prototype.appendChild and Element.prototype.insertBefore are pushed down into the created iframe, scoping the API override to the execution context of the inline frame (Paragraph 49). The iframe is created and the BLOB URL mechanism is established at steps 201-204 of Fig. 2 prior to the request for content at step 205 and rendering at steps 206-207, confirming the API override is performed prior to rendering of the advertisement content. Further, Malca explicitly discloses that advertising content is retrieved and rendered within the iframe "without being blocked or hidden by an ad-blocker's stylesheet restrictions" via the BLOB URL protocol, which bypasses ad-blocker network request filters without requiring the detection, removal, or reinsertion of advertisement content (Paragraph 43)).
The rationale for combining Carasso with Malca is articulated above and reincorporated herein.
Claims 4, 9, and 14 are rejected under 35 USC 103 as being unpatentable over Malca/Carasso in view of Tsolis (US 9,075,877).
The Malca/Carasso combination discloses those limitations cited above. Neither Malca nor Carasso appear to explicitly describe a method wherein the at least one property of the HTTP response for calling the script of the inline frame is modified by the proxy server.
Tsolis, however, discloses a method wherein the at least one property of the HTTP response for calling the script of the inline frame is modified by the proxy server (Fig. 2; Fig. 4, step 406; Col. 5, Lines 15-20. An HTTP proxy server intercepts HTTP protocol exchanges and manipulates the exchanges by modifying the HTTP response. Specifically, the method comprises the step of "modify[ing] the HTTP response by inserting a reference to an [RIA discovery] script into the HTTP response" (Fig. 4, step 406)).
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 Tsolis with those of Malca/Carasso. One would have been motivated to do this in order to modify an ad before it is potentially intercepted by an ad blocker on the client device.
Other Relevant Prior Art
Though not cited in the above rejections, the following references are nevertheless deemed to be relevant to Applicant’s disclosures:
Abdulhayoglu et al. (20200104885), directed to a system for displaying media content filed in an unblockable manner.
Lind et al. (20160301735), directed to a system to circumvent advertisement blocking on the internet.
Hod et al. (20180150877), directed to a 3rd party request-blocking bypass layer.
Begen et al. (10339280), directed to a method for protecting content when using a general-purpose user interface application.
Response to Arguments
The previous objection has been withdrawn in response to Applicant’s amendments.
Applicant's arguments have been carefully considered but are not found to be persuasive.
First, Applicant quotes MPEP §2143.01 for the proposition that obviousness requires a teaching, suggestion, or motivation found in the references or in the knowledge generally available to one of ordinary skill in the art. That argument is not persuasive. Applicant's framing reflects a rigid application of the TSM standard that was expressly rejected by the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Under KSR, a motivation to combine need not be found as an explicit teaching in the prior art. Rather, the proper inquiry is whether the combination represents “the predictable use of prior art elements according to their established functions.”
Applying the Graham factors here: (1) the scope and content of the prior art is established by Malca and Carasso, both of which are directed to bypassing browser-based ad-blockers; (2) the difference between the prior art and the claims is narrow, namely combining Carasso's HTTP request/response delivery framework with Malca's BLOB URL/iframe API override mechanism; (3) one of ordinary skill in the art would have had knowledge of web development, browser-based scripting, and online advertisement delivery systems, and would have recognized Malca and Carasso as complementary solutions to the same problem; and (4) Applicant has presented no objective evidence of secondary considerations. Furthermore, the motivation to combine is apparent from the references themselves, as both references address the same field and the same technical problem. Combining the delivery architecture of one with the bypass mechanism of the other is merely the combination of familiar elements according to known methods to yield predictable results. See KSR, 550 U.S. at 416.
Applicant further asserts that none of the cited references specifically recognized the advantages discussed in the present application. This argument is not persuasive. Applicant has not provided objective evidence of secondary considerations such as unexpected results, commercial success, or long-felt need supported by the record. Attorney argument alone, unsupported by objective evidence, is insufficient to overcome a prima facie case of obviousness. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) ("[A]ttorney argument [is] not the kind of factual evidence required to rebut a prima facie case of obviousness."); In re Lindner, 457 F.2d 506, 508 (CCPA 1972). Furthermore, the fact that the prior art may not have explicitly recognized the precise advantages articulated by Applicant does not demonstrate patentability where, as here, the combination of references renders the claimed invention prima facie obvious. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). The advantages Applicant identifies flow naturally from the combination of Malca and Carasso and would have been recognized by one of ordinary skill in the art.
Applicant argues that Malca discloses a server-side anti-ad-blocking system that centrally controls iframe generation, and therefore the amended limitation that "the at least one instruction included in the script of the HTTP response is executed by the client" is not taught by the Malca/Carasso combination. This argument is not persuasive because it attacks the references individually rather than in combination. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The rejection does not rely on Malca alone for the client-side execution limitation. Carasso is explicitly relied upon to teach receiving an HTTP request from a client and transmitting an HTTP response with a script including at least one instruction to be executed on the client (Carasso, Paragraphs 33, 43). Furthermore, Malca itself discloses that its anti-ad-blocking system "may reside in and be implemented with client-side code on the computing device" (Malca, Paragraph 16), and explicitly discloses a client-device embodiment in which the client device performs the entire anti-ad-blocking process, including loading an HTML document with an iframe, executing the HTML code included in the BLOB content, and rendering the requested content (Malca, Paragraph 50; Fig. 3). Applicant's characterization of Malca as exclusively server-side misrepresents the full breadth of Malca's disclosure.
Applicant further argues that Carasso employs a reactive bypass loader that reinserts blocked advertisement content after removal via DOM manipulation, whereas the claimed invention employs a preemptive API override during normal page rendering. This argument is not commensurate with the scope of independent claims 1, 6, and 11 as amended. Those claims do not recite that the API override is preemptive, that it occurs without detecting ad-blocking, or that it avoids reinserting previously removed content. The claims merely require that "the script of the inline frame is executed to override an API of a browser application executed on the client." Furthermore, the Examiner relies on Malca Paragraph 49 — not Carasso — for the API override limitation. Malca discloses modifying DOM object wrappers, specifically Element.prototype.appendChild and Element.prototype.insertBefore, to automatically set a newly created iframe's source to a BLOB URL, such that content written into the iframe bypasses any type of ad-blocking technology, and further discloses that these object wrapper overrides may be pushed down into the created iframe (Malca, Paragraph 49). Applicant's arguments regarding Carasso's reactive nature are therefore directed to a limitation not relied upon in the rejection and do not distinguish the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Therefore, for at least these reasons, the rejection under 35 USC 103 is sustained.
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 BUSCH whose telephone number is (571)270-7953. The examiner can normally be reached M-F 10-7.
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/CHRISTOPHER C BUSCH/Examiner, Art Unit 3621
/WASEEM ASHRAF/Supervisory Patent Examiner, Art Unit 3621
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