IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicants: Michael J. Griffiths
`James D. McElhiney
`
`Serial No.:
`
`08/858,650
`
`)
`)
`)
`)
`)
`)
`)
`)
`Information Storage and Delivery Over a
`Computer Network Using Centralized Intelligence )
`To Monitor and Control the Information Being
`)
`Delivered
`)
`)
`)
`
`Filing Date: May 19, 1997
`
`Title:
`
`Our File No.: 18022-001
`
`Group Art Unit: 2757
`
`Examiner:
`DungDinh
`
`-4
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`AMENDMENT UNDER 37 C.F.R. § 1.111
`
`To:
`
`Box Fee Amendment
`Honorable Commissioner of
`Patents and Trademarks
`Washington, D.C. 20231
`
`Dear Sir:
`
`In response to the Patent Examiner's Office Action, Paper No. 12, dated 27 December
`
`1999, please amend the above-identified patent application, as follows:
`
`In the C
`
`'ms:
`
`1.
`
`(Twice Amended)
`
`A method for storing information on a primary server and
`
`one or more secondary servers and on computer sites connected to a computer network, wherein
`
`information delivered over the computer network to a terminal or a group of terminals may
`
`contain references to other information to be delivered to the terminal, comprising:
`
`serving a first portion of information to a terminal, wherein said first portion of
`
`information contains a reference to a second portion of information;
`
`AHBLT-2014.001
`
`
`
`Applicants: Michael J. Griffiths
`James D. McElhiney
`
`Serial No.:
`
`08/858,650
`
`)
`)
`)
`)
`)
`)
`)
`)
`Information Storage and Delivery Over a
`Computer Network Using Centralized Intelligence )
`To Monitor and Control the Information Being
`)
`Delivered
`)
`)
`)
`
`Filing Date: May 19, 1997
`
`Title:
`
`Our File No.: 18022-001
`
`Group Art Unit: 2757
`
`Examiner:
`DungDinh
`
`-4
`
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`
`AMENDMENT UNDER 37 C.F.R. § 1.111
`
`To:
`
`Box Fee Amendment
`Honorable Commissioner of
`Patents and Trademarks
`Washington, D.C. 20231
`
`Dear Sir:
`
`In response to the Patent Examiner's Office Action, Paper No. 12, dated 27 December
`
`1999, please amend the above-identified patent application, as follows:
`
`In the C
`
`'ms:
`
`1.
`
`(Twice Amended)
`
`A method for storing information on a primary server and
`
`one or more secondary servers and on computer sites connected to a computer network, wherein
`
`information delivered over the computer network to a terminal or a group of terminals may
`
`contain references to other information to be delivered to the terminal, comprising:
`
`serving a first portion of information to a terminal, wherein said first portion of
`
`information contains a reference to a second portion of information;
`
`AHBLT-2014.001
`
`
`
`causing a first request signal to be transmitted from the terminal to a primary
`
`server requesting a location address for said second portion of information from which
`
`said second portion of information can be served to the terminal, wherein said first
`
`request signal [cannot be blocked] includes information intended to prevent said first
`
`request signal from being blocked from reaching said primary server by either the
`
`terminal or any intermediary device located topologically between the terminal and the
`
`primary server as a result of previous caching of said first portion of information or said
`
`second portion of information in the terminal or said intermediary device;
`
`sending a location signal from the primary server to the terminal providing said
`
`location address of said second portion of information;
`
`causing a second request signal to be transmitted from the terminal containing
`
`said location address of said second portion of information and requesting said second
`
`portion of information be served to the terminal; and
`
`serving said second portion of information to the terminal.
`
`~\
`
`/}.,.0
`y(
`
`(Twice Amended)
`
`A method for distributing a banner over a computer
`
`network to a device when the banner is referenced or linked to in a document served to the
`
`device, wherein the banner is stored in one or more servers, comprising:
`
`receiving a first banner request signal from a device at a first server requesting
`
`that a banner be served to the device, wherein said first banner request signal [cannot be
`
`blocked] includes information intended to prevent said first banner request signal from
`
`being blocked from reaching said first server by the device despite previous caching of
`
`2
`
`7/). '/)
`
`/
`
`AHBLT-2014.002
`
`
`
`said specified banner in the device;
`
`sending a banner location signal from said first server to the device, wherein said
`
`banner location signal includes location information for a specified banner stored on a
`
`second server; and
`
`receiving a second banner request signal from the device at said second server
`
`requesting that the second server serve said specified banner to th~ device.
`
`· (Twice Amended)
`
`A method for enabling a web page and an associated banner
`
`to be served to a computer, wherein the web page contains a link or other reference to the banner,
`
`compnsmg:
`
`serving a web page to a computer;
`
`causing a banner request signal to be sent from the computer to a primary server
`
`requesting a banner be served to the computer, wherein said banner request signal
`
`includes a Uniform Resource Locator address for said primary server and wherein said
`
`banner request signal [cannot be blocked] includes information intended to prevent said
`
`banner request signal from being blocked from being received by the primary server as a
`
`result of previous caching of the banner on the computer;
`
`determining which specified banner will be served to the computer; and
`
`sending a banner location signal from said primary server to the computer,
`
`wherein said banner location signal includes the Uniform Resource Locator address for a
`
`device on which the specific banner to be served to the computer is stored.
`
`3
`
`AHBLT-2014.003
`
`
`
`(Twice Amended)
`
`A method for distributing a banner over a computer
`
`network to a device when the banner is referenced or linked to in a hypertext document served to
`
`the device, wherein the banner is stored in one or more servers, comprising:
`
`receiving a first banner request signal from the device at a first server requesting
`
`that a banner be served to the device, wherein said first banner request signal [cannot be
`
`blocked] includes information intended to prevent said first banner request signal from
`
`being blocked by the device or an intermediary server located between the device and said
`
`first server as a result of a previous storage in the device or said intermediary server of a
`
`response to said first banner request signal sent from said first server to the device;
`
`~\
`
`determining if said first server is best suited to serve said banner to the device and
`
`serving said banner to the device if said first server is best suited to serve said banner and,
`
`if said first server is not best suited to server said banner to the device, sending a banner
`
`location signal from said first server to the device, wherein said banner location signal
`
`includes location information for a specified banner stored on a second server;
`
`receiving a second banner location request signal from the device at said second
`
`server requesting that said second server serve said specified banner to said device if said
`
`first server is not best suited to server said banner to the device; and
`
`serving said specified banner to said device from said second server if said first
`
`server is not best suited to server said banner to the device.
`
`Vt."" Y. (Twice Amended)
`
`A method for enabling distribution of a banner over a
`
`computer network to a device when the banner is referenced in a document served to the device,
`
`4
`
`/
`
`11;
`
`·./
`
`AHBLT-2014.004
`
`
`
`wherein the banner is stored in one or more servers connected to the computer network, and the
`
`device is connected to the computer network via an intermediary server, comprising:
`
`causing a first banner request signal to be transmitted from the device to a first
`
`server requesting that a banner be served to the device, wherein said first banner request
`
`signal [is not] includes information intended to make said first banner request signal not
`
`blockable by the device or the intermediary server as a result of a storage in the device or
`
`the intermediary server of said requested banner prior to the generation of said first
`
`banner signal by the device;
`
`~\
`
`sending a banner location signal from said first server to the device, wherein said
`
`banner location signal includes location information for said requested banner stored on a
`
`second server; and
`
`determining if said requested banner is stored on the device and, if said requested
`
`banner is not stored on the device, then causing a second banner request signal to be
`
`transmitted from the device to the intermediary server and determining if said requested
`
`banner is stored on the intermediary server, wherein if said requested banner is not stored
`
`on the intermediary server, causing at least a portion of said second banner request signal
`
`to be sent to said second server requesting that said second server serve said requested
`
`banner to said device.
`
`-··-··-··-··-------------------------------------------
`f:J~
`Y.(Amended)
`
`A method for serving a banner to a client device, comprising:
`
`receiving at a primary server a first request for a banner, said first request
`
`containing at least a portion of an initial URL, wherein said first request [cannot be
`
`5
`
`AHBLT-2014.005
`
`
`
`prevented from being received by] includes information intended to prevent said first
`
`request from being blocked from the primary server despite previous storage of the
`
`banner on the client device;
`
`sending a signal from the primary server to the client device that includes at least
`
`a portion of a second URL associated with the banner's location;
`
`receiving at the primary server a second TCP/IP compliant request requesting that
`
`the banner be served to the client device if the banner is not stored on the client device;
`
`serving the banner to the client device; and
`
`counting at least one display of the banner on the client device.
`
`\pl.\ fi· (Amended)
`
`a client device, comprising:
`
`A method for enabling accurate counting of displays of a banner on
`
`receiving a first banner request signal at a first server requesting that a banner be
`
`served to a client device, wherein said first banner request [cannot be prevented from
`
`being received by] includes information intended to prevent said first banner request
`
`signal from being blocked from said first server, even though there has been previous
`
`caching or storing of said banner by the client device or an intermediary device;
`
`sending a banner location signal to the client device, wherein said banner location
`
`signal includes location information for a specified banner stored on a second server; and
`
`causing a determination of whether said specified banner is stored on the client
`
`device and, if said specified banner is not stored on the client device, receiving a second
`
`banner request signal from the client device at said intermediary device and causing a
`
`6
`
`......,../!
`I
`-~ I
`I
`I
`i
`(
`
`AHBLT-2014.006
`
`
`
`determination of whether said specified banner is stored on said intermediary device,
`
`wherein if said specified banner is not stored on said intermediary device, receiving a
`
`third banner request signal at said second server requesting that said second server serve
`
`said specified banner to the client device.
`
`/11/
`j(. (Amended)
`
`A method for serving a banner to a client device, comprising:
`
`receiving at a primary server a first request signal for a banner, said first request
`
`signal containing at least a portion of an initial URL, wherein said first request signal
`
`[cannot be prevented from being received by] includes information intended to prevent
`
`said first request signal from being blocked from the primary server as a result of
`
`previous caching ofthe banner in the client device;
`
`sending a signal from the primary server to the client device that includes a second
`
`URL associated with the banner's location;
`
`receiving a second request signal requesting that the banner be served to the client
`
`device if the banner is not stored on the client device; and
`
`serving the banner to the client device.
`· · - - · - - · - - - - - - - - - - - - - - - - - - - - - - - -
`...,,
`jL (Amended)
`
`A method for enabling a banner to be received at a client device,
`
`comprising:
`
`generating at the client device a first request signal for a banner;
`
`transmitting said first request signal to a server, wherein said first request signal
`
`[cannot be prevented from being received by] includes information intended to prevent
`
`7
`
`AHBLT-2014.007
`
`
`
`said first request signal from being blocked from the server as a result of previous caching
`
`of the banner on the client device;
`
`receiving at the client device a response signal from the server that includes a
`
`URL associated with the banner's location; and
`
`transmitting a second request signal from the client device requesting that the
`
`banner be served to the client device.
`
`8
`
`q 1;
`
`AHBLT-2014.008
`
`
`
`REMARKS
`
`In the Office Action, Paper No. 12, dated 27 December 1999, the Patent Examiner
`
`rejected all pending claims under 35 U.S.C. § 112, first paragraph as not enabling. The Patent
`
`Examiner also suggested to the Applicants under 35 U.S.C. § 135(a) that claim 1 from United
`
`States Patent Number 5,948,061 be copied for purposes of an interference.
`
`Applicants traverse the rejection of all claims as not enabled. Applicants further traverse
`
`the Examiner's suggestion to copy claim 1 of the identified patent for purposes of an
`
`interference.
`
`Applicants have amended independent claims 1, 16, 27, 36-37, 43, 48, 56 and 76 in
`
`response to the Examiner's § 112 rejection in hopes of advancing the prosecution of this patent
`
`application.
`
`§112 Rejection
`
`The Examiner rejected all remaining claims 1, 3-12, 14-25, 27-41 and 43-82 under 35
`
`U.S.C. § 112, first paragraph as not enabling. The Examiner suggests that although the
`
`specification enables the general concept of not caching the first request it does not enable the
`
`claimed feature wherein the signal cannot be block~d. The Examiner suggests that although the
`
`specification teaches that it is preferred that the signal not be blocked there is no teaching to
`
`implement a system such that the signal is not blockable or cannot be blocked as claimed. The
`
`Examiner notes that there are many legitimate and illegitimate means to block a request from
`
`reaching an intended server and that no system can guarantee that a signal cannot be blocked in
`
`view of all such means.
`
`9
`
`AHBLT-2014.009
`
`
`
`Applicants heartily disagree with the Examiner's suggestion that the specification fails to
`
`enable the claimed feature wherein the signal cannot be blocked. The specification starting at
`
`page 34, line 1 through page 37, line 4 teaches a multitude of techniques for assuring that the
`
`request signal will not be blocked from the intended server. The specified techniques include:
`
`Use of HTTP standard temporary redirect
`
`Use of HTTP standard response tags in the server responses including:
`
`Expiry tag to specify a latest valid date of the response
`
`Last-modified tag to specify the valid date of the response
`
`Cache-control tags to indicate that the response is not cachable
`
`pragma:no-cache tags to indicate that the response is not cachable
`
`Use of variable components in the links used by the terminal to request a response
`
`such as:
`
`a random number
`
`a time/date stamp
`
`a cgi-bin string
`
`a random page identifier
`
`Use of a URL link that, though constant, appears to the terminal and intermediate
`
`servers to be constantly changing
`
`This extensive (though not exhaustive) list enables one of ordinary skill in the art to practice the
`
`invention as claimed such that such request is not blocked by normal HTTP standard compliant
`
`terminals or proxy servers (or other intermediate nodes).
`
`The Examiner appears to suggest that since not every unknown, non-standardized·
`
`10
`
`AHBLT-2014.010
`
`
`
`technique for blocking a signal from reaching its intended server is addressed by such a list, the
`
`Applicants have not enabled the claimed feature of preventing blocking of the signal. Such
`
`theoretical extensions are inappropriate to suggest that the Applicants have not enabled one of
`
`ordinary skill in the art to practice the invention. The Applicants extensive list presents a number
`
`of equivalent methods to prevent blocking of the request signal by presently known HTTP
`
`compatible systems, terminals and browsers. The Examiner merely speculates that other
`
`unspecified techniques, including illegitimate techniques, may still be capable of blocking such a
`
`message.
`
`In view of the above discussion, Applicants suggest that the rejected claims are in fact
`
`enabling for one of ordinary skill in the art to practice the invention as claimed.
`
`However, in hopes of advancing the prosecution of this patent application, Applicants
`
`have amended the independent claims to remove the phrasing of concern to the Examiner. In
`
`particular, the term "cannot" has been removed from all independent claims. Rejected claim 1
`
`for example has been amended to recite that the "first request signal includes information
`
`intended to prevent said first request signal (rom being blocked from reaching said primary
`
`server." The absolute term "cannot", found not to be enabled by the Examiner, is in essence
`
`replaced by language indicating that the signal is structured in a manner intended not to be
`
`blocked by caching operations of the terminal or intermediate servers. Similar amendments have
`
`been made to other independent claims of the subject application.
`
`Applicants strongly disagree with the Examiner's rejection of the claims as not enabled
`
`but have made these amendments to advance the prosecution of the subject application.
`
`In view ofthese amendments and the above discussion, Applicants respectfully request
`
`11
`
`AHBLT-2014.011
`
`
`
`reconsideration and withdrawal of the rejection of all claims under 35 U.S. C. § 112 as not
`
`enabled.
`
`Suggested Interference
`
`The Examiner suggested copying of claim 1 of patent 5,948,061 (hereinafter the '061
`
`patent) for purposes of provoking an interference therewith. Applicants declined the Examiner's
`
`invitation in view of notable distinctions between the claimed inventions and the lack of support
`
`for the claim to be copied by the specification of the subject application. Admittedly the claimed
`
`invention of the subject application and that of suggested claim 1 of the '061 patent both relate to
`
`Internet advertising but that is the extent of the similarity in the claimed invention. The claimed
`
`invention of the subject application and that of suggested claim 2 of the '061 patent are directed
`
`to very different subject matter and the specification of the subject application cannot support the
`
`suggested claim 1 of the '061 patent.
`
`First and foremost Applicants note that all claims of the subject application are directed to
`
`specific methods of delivering network content to a requesting terminal. By contrast, suggested
`
`claim 1 of the '061 patent is directed to an apparatus-- a particular structure of systems that
`
`cooperate to deliver requested network content and advertising. In this sense the subject
`
`application and the '061 are directed to fundamentally different inventions.
`
`Further, claim 1 of the '061 patent, though seemingly broad, none the less recites specific
`
`structure not found in a reasonable reading of the specification of the subject application. For
`
`example, Applicants do not find support in the subject application for the combination of several
`
`nodes recited in the suggested claim 1 of' 061. Specifically the subject application does not
`
`12
`
`AHBLT-2014.012
`
`
`
`support a combination of servers/nodes as recited in claim 1 of '061 including at least a user
`
`node, a content provider having an affiliate web site, an advertising node having an advertiser
`
`web site and an advertisement server node. In this sense as well the subject application and the
`
`'061 are directed to different inventions. The specification of the subject patent application
`
`cannot therefore support the suggested claim 1 of the '061 patent.
`
`Still further, the claimed invention of the subject application is directed to methods
`
`simply not taught or reasonably suggested by the '061 patent. For example, one glaring
`
`distinction is the very recitation that is the subject of the Examiner's § 112 rejection discussed
`
`above. Namely, the '061 patent does not teach or reasonably suggest that the request cannot be
`
`blocked from transmission to the intended server by the requesting terminal or by intermediate
`
`nodes. In this sense also, the invention of the subject application is very different than that of
`
`suggested claim 1 of the '061 patent.
`
`In view of the above discussion, Applicants strongly assert that the subject application
`
`and the '061 patent are not directed to the same invention. Applicants respectfully request
`
`reconsideration and withdrawal of the Examiner's suggestion that claim 1 of the '061 is
`
`supportable by the specification of the present invention and therefore be copied in accordance
`
`with 35 U.S.C. § 135 to provoke an interference.
`
`Despite Applicants refusal to copy the suggested claim for purposes of an interference
`
`and in view of the above discussion, Applicants explicitly deny that the '061 patent is relevant
`
`priorart with respect to consideration under 35 U.S.C. §§ 102 and 103. Further, the Examiner
`
`has not indicated any reading of the teachings of the '061 patent that suggest it is relevant art
`
`with respect to the claims ofthe subject application. Applicants reserve the right to more
`
`13
`
`AHBLT-2014.013
`
`
`
`.,.,.,........,..,,,,.,."' "f ~
`;
`~
`
`thoroughly discuss the relevance of the '061 patent should the Examiner attempt to apply the
`
`'061 patent as a reference under 35 U.S.C. §§ 102 or 103.
`
`:::::0
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`14
`
`AHBLT-2014.014
`
`
`
`Conclusion
`
`The Patent Examiner is requested to reconsider and withdraw his rejection in light of the
`
`explanations above. The Examiner is further requested to withdraw his request for copying of a
`
`claim pursuant to 35 U.S.C. § 135 in view of Applicants position that the specification of the
`
`subject application lacks support for such a claim. If any questions remain to be resolved, the
`
`Patent Examiner is requested to contact applicants' attorney at the telephone number listed
`
`below.
`
`Respectfully submitted,
`
`~M Daniel N. Fishman, R~No.: 35,512
`
`CHRISMAN, BYNUM & JOHNSON, P.C.
`1900 Fifteenth Street
`Boulder, Colorado 80302
`Tel: (303) 546-1300
`
`Dated: 27fJAfi~
`
`CERTIFICATE OF MAILING UNDER 37 C.F.R. § 1.8
`
`I hereby certify that the attached AMENDMENT UNDER 37 C.P.R.§ 1.111 is being
`deposited with the United States Postal Service, first class postage prepaid, in an envelope
`addressed to Assistant Commissioner for Patents, Washington, DC 20231, on this 271
`h day of
`June 2000.
`
`12U~d\i22
`
`Daniel N. Fishman
`
`15
`
`~;
`'f
`
`AHBLT-2014.015
`
`
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