PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Appl. No.:
`
`16/172,685
`
`Confirmation No.:
`
`Applicant:
`
`Hudson, Ryan David
`
`Group Art Unit:
`
`3723
`
`3688
`
`Filed:
`
`Title:
`
`October 26, 2018
`
`Examiner:
`
`Raquel Alvarez
`
`SYSTEMS AND METHODS
`
`Attorney Docket No. HONEY.001.X1C1C1
`
`FOR INTERFACING WITH
`
`Customer No.
`
`95508
`
`A WEB SITE TO MODIFY
`
`CONTENT
`
`Mail Stop: Amendment
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria VA 22313-1450
`
`RESPONSE TO NON-FINAL OFFICE ACTION OF 09/24/2019
`
`Dear Examiner:
`
`In response to the Non-Final Office Action dated September 24, 2019, please consider
`
`the following remarks in support of patentability:
`
`Pending claims and amendments begin on page 2 of this paper.
`
`Remarks/Arguments begin on page 7 of this paper.
`
`Page 1 of 11
`
`Honey Science Corp.
`Exhibit 2020
`
`RetailMeNot v. Honey
`PGR2019-00061
`
`EX. 2020-0001
`
`Ex. 2020-0001
`
`

`

`Appl. No. 16/172,685
`Amdt. dated December 23, 2019
`Reply to Non-Final Office Action of September 24, 2019
`
`Docket No. HONEY.001.X1C1C1
`
`Claims
`
`This listing of claims will replace all prior versions, and listings of claims in the
`
`application:
`
`Amendments to the Claims
`
`1.
`
`(Currently Amended) An online computer system that directly interfaces with a
`
`checkout webpage of a third party retailer website that causes a certain numerical value displayed
`
`on the checkout webpage to change in value comprising:
`
`a sewer system coupled to a public network configured to stene—a—l—rst—eflehgnal—eedes—tnat
`
`cause the numerical value to change when one or more digital codes are transmitted to the checkout
`
`webpage of the third party retailer website, wherein the one or more digital codes enable l-ist—is
`
`
`
`the numerical value to change,
`
`a browser software extension installed on a user’s device with an electronic display that is
`
`operably connected to the-sewer—systeni—ever the public network, said browser software extension
`
`conf1gured to:
`
`receive the list—of one or more digital codes from—thesewensysten} over the public
`
`network,
`
`when the user connects with the third party retailer website and opens the page
`
`checkout webpage, al-ter—the—webpageumsplayed—efnthe—eleetrememsplw—by dynamically
`
`generate generating a single graphical trigger to be presented on the display,
`
`.1
`
`'E
`
`l
`
`.
`
`f
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`g
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`l
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`
`;
`
`upon the user’s
`
`selection of the
`
`single graphical
`
`trigger,
`
`systematieal—l—y
`
`automatically perform the following steps:
`
`
`apply inth each of the one or more digital eede COdCS—l—B—liG—t-he-dfifl-efl-t-fi‘
`
`inter—faee—and t_o invoke a function on the checkout webpage feneaeh—eligi-tal—eede
`
`without selection of each of the one or more digital codes by the user, thereby
`
`triggering that—triggers the checkout webpage of the third party retailer website to
`
`Page 2 of 11
`
`EX. 2020-0002
`
`Ex. 2020-0002
`
`

`

`Appl. No. 16/172,685
`Amdt. dated December 23, 2019
`Reply to Non-Final Office Action of September 24, 2019
`
`Docket No. HONEY.001.X1C1C1
`
`
`receive the one or more digital codes eede and to return a response to each of the
`
`received one or more digital codes the—cede,
`
`monitor the returned websiteis response from the checkout webpage to
`
`determine and identify which of the one or more digital codes cause a change and
`
`determine the amount of change whetheHhe—nwnerieal—wl—ue—has—ehanged—and—by
`hew—mueh'7
`
`store in a memory one or more digital codes along with data that shows the
`
`amount the one or more digital codes causes the numerical value to change, wherein
`
`the system is further configured to determine the digital code causing the greatest
`
`amount of change; and
`
`apply the digital code that causes the greatest change in the numerical value
`
`to obtain and display a resulting numerical value on the checkout webpage.
`
`
`
`2.
`
`3.
`
`4.
`
`(Cancelled)
`
`(Cancelled)
`
`(Currently Amended) The online computer system of claim 1, wherein the browser
`
`extension software is further configured to generate a visual indicator over the checkout webpage
`
`while the one or more digital codes are automatically applied systematicallyLinputted—inte—the—d-ata
`
`entry—interfiaee, wherein the visual indicator illustrates how much progress is being made.
`
`5.
`
`(Currently Amended) The online computer system of claim 1, wherein the system
`
`sewer is configured to remove digital codes that do not cause the numerical value to change.
`
`Page 3 ofll
`
`EX. 2020-0003
`
`Ex. 2020-0003
`
`

`

`Appl. No. 16/172,685
`Amdt. dated December 23, 2019
`Reply to Non-Final Office Action of September 24, 2019
`
`Docket No. HONEY.001.X1C1C1
`
`6.
`
`(Currently Amended) The online computer system of claim 1, wherein the browser
`
`extension software is implemented for installation on a mobile device.
`
`7.
`
`(Currently Amended) The online computer system of claim 1, wherein the system
`
`sewer further includes configuration instructions that specify how the digital codes are applied to
`
`invoke a function on the checkout webpage.
`
`8.
`
`9.
`
`(Cancelled)
`
`(Currently Amended) The online computer system of claim 1, wherein the single
`
`graphical trigger is a digital graphical button.
`
`10.
`
`(Currently Amended) The online computer system of claim 1, wherein the browser
`
`extension software is further configured to enable the user to complete a transaction on the
`
`checkout webpage using the changed numerical value.
`
`11.
`
`(Currently Amended) An electronic method for interfacing with a checkout
`
`webpage of a third party retailer website that causes a certain numerical value displayed on the
`
`checkout webpage to change in value comprising:
`
`
`
`receiving one or more the—list—ef digital codes that cause the numerical value to change
`
`when transmitted to a third party retailer website from—the—sewer over the public network by a
`
`user’s computing device, having an electronic display, via browser software,
`
`when the user connects with the third party retailer website and opens the checkout
`
`webp_age page, the—webpagedispl—ayed—en—theeleetreniedisplay—by dynamically generating a single
`
`graphical trigger to be presented on the display,
`
`.
`
`11
`
`'ll'
`
`lfll"!
`
`eedes—frena—t—he—l-isF7
`
`Page 4 of 11
`
`EX. 2020-0004
`
`Ex. 2020-0004
`
`

`

`Appl. No. 16/172,685
`Amdt. dated December 23, 2019
`Reply to Non-Final Office Action of September 24, 2019
`
`Docket No. HONEY.001.X1C1C1
`
`upon the user’s selection of the si_ngl_e graphical trigger,
`
`syswt.ern-atieal—PyL automatically
`
`performing the following steps:
`
`
`applying input-ting each of the one or more digital codes eeele—i-n-te—t—he—d-ata—en-try
`
`interface to invoke and—invoking a function on the checkout webpage feFeaelkdigital—eede
`
`without selection of each of the one or more digital codes by the user, thereby triggering
`
`that—triggers the checkout webp_age of the third party retailer website to receive the one or
`
`more digital codes eede and to return a response to each of the received one or more digital
`
`codes the-cede,
`
`
`monitoring the websitels—returned response from the checkout webpage to
`
`determine and identify which of the one or more digital codes cause a change and determine
`
`the amount of change ahether—the—ntmerieal—valbmaas—ehanged—and—byhhexmeh,
`
`
`
`storing in memom the one or more digital codes along with data that shows the
`
`amount the one or more digital codes causes the numerical value to change;
`
`determining the digital code that causes the greatest amount of change; and
`
`applying the digital code that causes the greatest change in the numerical value to
`
`obtain and display a resulting numerical value on the checkout webp_age of the third party
`
`retailer website.
`
`
`
`12.
`
`(Cancelled)
`
`l3.
`
`(Cancelled)
`
`14.
`
`(Currently Amended) The electronic method of claim 11, further comprising
`
`generating a visual indicator over the checkout webpage while the one or more digital codes are
`
`Page 5 ofll
`
`EX. 2020-0005
`
`Ex. 2020-0005
`
`

`

`Appl. No. 16/172,685
`Amdt. dated December 23, 2019
`Reply to Non-Final Office Action of September 24, 2019
`
`Docket No. HONEY.001.X1C1C1
`
`automatically applied systematiealliybinputted—ime—the—d-ata—entfihinterfaee, wherein the Visual
`
`indicator illustrates how much progress is being made.
`
`15.
`
`(Currently Amended) The electronic method of claim 11, further comprising
`
`removing digital codes from storage the—list that do not cause the numerical value to change.
`
`16.
`
`(Currently Amended) The electronic method of claim 11, wherein the automatic
`
`applying step sewenfiupthenineludes utilizes configuration instructions that specify how the %
`
`or more digital codes are applied to the checkout webpage.
`
`l7.
`
`(Cancelled)
`
`18.
`
`(Currently Amended) The electronic method of claim 11, wherein the single
`
`graphical trigger is a digital graphical button.
`
`19.
`
`(Currently Amended) The electronic method of claim 11, wherein the one or more
`
`digital codes list—is fl generated based on historical interactions of multiple other users with the
`
`third party retailer website.
`
`Page 6 ofll
`
`EX. 2020-0006
`
`Ex. 2020-0006
`
`

`

`Appl. No. 16/172,685
`Amdt. dated December 23, 2019
`Reply to Non-Final Office Action of September 24, 2019
`
`Docket No. HONEY.001.X1C1C1
`
`REMARKS
`
`Claims 1-19 are pending, ofwhich, claims 1 and 11 are independent. Claims 1, 4-7, 9-11,
`
`14-16, and 18-19 have been amended. Claims 2-3, 8, 12-13, and 17 have been cancelled without
`
`prejudice. No new subject matter has been added.
`
`12/19/2019 Telephonic Interview Summary
`
`The Applicant and the Examiner had a telephonic interview on December 19, 2019. At the
`
`outset of the call, the Applicant noted that the Examiner’s prior art rejections in the pending Non-
`
`Final Office Action are substantially similar to the Final Office action in Related Application No.
`
`16/403,036, dated September 23, 2019.1 In that related application, the Applicant submitted a
`
`Response After Final, arguing that the primary prior art reference, Mashadi, did not invalidate the
`
`pending claims because Mashadi failed to disclose a system that, among other things, directly
`
`interfaces with a “checkout” webpage of a retailer’s website and generates a “single” graphical
`
`trigger that, when selected by the user, “automatically” tests one or more digital codes to determine
`
`which digital code provides the greatest discount and apply that code directly on the checkout
`
`webpage to give the user that discount. The Examiner, in response, maintained her rejection in an
`77
`(4
`
`Advisory Action, dated December 9, 2019, noting that terms such as “checkout,
`
`single,” and
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`“automatically” testing and applying, are not recited in those claims.
`
`During the interview, the Applicant noted that while it believed that these terms are not
`
`necessary to distinguish the present invention over Mashadi, nevertheless, in an effort to move the
`
`application forward as expeditiously as possible, the Applicant amended the present claims to add
`
`these terms to further clarify the scope of these claims as suggested by the Examiner. In response,
`
`it was agreed that the current claims, as amended, would be allowable over the current prior art of
`
`record, thereby overcoming the current prior art rejections, but no agreement as to allowance was
`
`made because the Examiner believed that a further search would be needed.
`
`1 This is to be expected since the claims of the two applications are also substantially similar.
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`Page 7 ofll
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`EX. 2020-0007
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`Ex. 2020-0007
`
`

`

`Appl. No. 16/172,685
`Amdt. dated December 23, 2019
`Reply to Non-Final Office Action of September 24, 2019
`
`Docket No. HONEY.001.X1C1C1
`
`Information Disclosures Statement
`
`Filed on November 22, 2019 is a supplemental IDS disclosing additional prior art recently
`
`brought to Applicant’s attention. On August 23, 2019, two petitions for post grant review were
`
`filed regarding US. Patent No. 10,140,625, which is a parent of the present application. Those
`
`matters are PGR2019-OOO6O and PGR2019-OO61.
`
`Double Patenting Rejection
`
`Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as
`
`being unpatentable over claims 1-19 of Patent No. 10,140,625 and claims 1-22 of copending
`
`Application No. 16/403,036.
`
`In response, a terminal disclaimer has been filed with this
`
`application, thereby overcoming this rejection.
`
`Claim Rejections under 35 USC § 102.
`
`Claims 1-2, 5-7, 9-12, 15-16, and 18 have been rejected under 35 USC § 102 as being
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`anticipated by Mashadi et al. (2017/0148046) (“Mashadi”). Based on the telephonic interview of
`
`December 19th, 2019, the Applicant respectfully requests that these rejections be withdrawn in
`
`light of the current amendments.
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`Obviousness
`
`With respect to any obviousness issues, the Applicant incorporates by reference the
`
`Applicant’s Response to Final Action, dated November 25, 2019, for Related Application No.
`
`16/403,036. For the reasons set forth in that Response, the Applicant further asserts that neither
`
`Mashadi nor any of the other prior art references, by themselves, or in combination, render the
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`present claims obvious.
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`Moreover, in Related Application No. 16/403,036, in the Examiner’s Advisory Action,
`
`dated December 9, 2019, with respect to secondary considerations, the Examiner states that there
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`must be evidence showing a nexus between the claimed invention and commercial success, citing
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`Exparle Standish, 10 USPQ2d 1454, 1458 (Ed. Pat. App. & Inter. 1988).
`
`Page 8 of11
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`EX. 2020-0008
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`Ex. 2020-0008
`
`

`

`Appl. No. 16/172,685
`Amdt. dated December 23, 2019
`Reply to Non-Final Office Action of September 24, 2019
`
`Docket No. HONEY.001.X1C1C1
`
`In response, as an initial matter, Applicant notes that “there is a presumption of nexus for
`
`objective considerations when the patentee shows that the asserted objective evidence is tied to a
`
`specific product and that product ‘is the invention disclosed and claimed in the patent.’” WBIP,
`
`LLC v. Kohler C0., 829 F.3d 1317, 1329 (Fed. Cir. 2016) (quotingJT. Eaton & Co. v. All. Paste
`
`& Glue Ca, 106 F.3d 1563 1571 (Fed. Cir. 1997). The presumption of nexus is rebuttable, but
`
`“a patent challenger cannot successfully rebut the presumption with argument alone—it must
`
`present evidence.” WBIP, 829 F.3d at 1329 (internal citation omitted).
`
`Here, Applicant is entitled to a presumption of nexus because Applicant’s browser
`
`extension is an embodiment of one or more claims of the present application. As an example,
`
`claim 1 recites “An online computer system” comprising “a browser software .
`
`.
`
`. connected to
`
`the public networ ” which, among other claimed limitations, “receive[s] the one or more digital
`77 (4
`
`codes,” “dynamically generate[s] a single graphical trigger,
`
`automatically
`
`appl[ies] each of
`
`the one or more digital codes” upon selection of the single graphical trigger by the user, and
`
`“appl[ies] the digital code that causes the greatest change.” This describes the entire functionality
`
`of Applicant’ s browser extension: “[I]f you install Honey, Honey does that extra coupon-hunting
`
`work for you without ever leaving the store’s site. .
`
`. It surfs the web for discount codes and tries
`
`multiple ones in just a few seconds.” (Business Insider article entitled, “New Coupon Startup
`7
`‘Honey Has Had 9 Successful Investor Meetings in a Row,” which can be found at:
`
`htt s://www,businessinsider.com/con on—startu 3—honev~finds—discount~codesmon—checkoutm
`
`
`
`Moreover, the Applicant respectfully submits that it has provided ample evidence of
`
`compelling secondary considerations supporting a finding of non-obviousness for the present
`
`claims. For instance, for related Patent No. 10,140,625, Applicant submitted a Response to Final,
`
`dated August 23, 2018, which provided evidence that there are over 10 million users of
`
`Applicant’s software and scores of online independent reviews specifically touting the claimed
`
`features, e.g., “The Honey app automatically finds the valid coupons that will work for your
`
`purchase and does all of the work of applying them as well.
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`It’s that easy.” See pg. 13 of 16,
`
`Response to Final Office Action for the ‘625 patent, dated August 23, 2018.
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`Page 9 of11
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`EX. 2020-0009
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`Ex. 2020-0009
`
`

`

`Appl. No. 16/172,685
`Amdt. dated December 23, 2019
`Reply to Non-Final Office Action of September 24, 2019
`
`Docket No. HONEY.001.X1C1C1
`
`Further, in the Response to Final for 16/403,026, dated November 25, 2019, Applicant
`
`submitted updated statistics showing commercial success (with more than 17 million users),
`
`copies of additional accolades from the industry, and clear evidence of copying by a number of
`
`competitors, including RetailMeNot, CapitalOne, and Piggy. Finally, also noted in that Response
`
`to Final, Paypal recently announced it had entered into an agreement pursuant to which Applicant
`
`company, Honey, will be acquired for $4B. A Tech Crunch article, discussing the acquisition,
`
`noted that “[w]hat makes the [Applicant’s] extension so useful is that it automatically tries all the
`
`eligible promo codes for you during checkout then selects the one that provided the most savings
`
`and applies it on your behalf”). See Tech Crunch article, entitled, “PayPal to acquire shopping
`
`and
`
`rewards
`
`platform
`
`Honey
`
`for
`
`$4B”,
`
`which
`
`can
`
`be
`
`found
`
`at:
`
`hum.:£Z;é§:§b§11ap_gb_._a_zgzry'_2_€2.E_9:51.315253512@3112alrigzaszg5.1..i.I:_£_:_—_§bgrzping:andzifiiygrd..a:123.a1i§:m:hgnszsiz
`
`for~4~billionfl
`
`Collectively, the evidence presented supporting secondary considerations compels a
`
`finding of non-obviousness.
`
`Further, since claims 1 and 11 are not anticipated and are not obvious, none of the
`
`dependent claims are obvious either, including the claims 4-7, 9-10, 14-16, and 18-19.
`
`m
`
`In view of the foregoing, Applicant submits that the pending claims are in condition for
`
`allowance, and respectfully requests reconsideration and timely allowance thereof. Should the
`
`Examiner feel that there are any issues outstanding after consideration of this response, the
`
`Examiner is invited to contact Applicant’s undersigned representative to expedite prosecution. A
`
`favorable action is awaited.
`
`It should be noted that no acquiescence or estoppel should be implied by the amendments
`
`and/or arguments made herein, and any arguments in support of patentability and based on a
`
`portion of a claim should not be taken as founding patentability solely on the portion in question.
`
`Applicant explicitly reserves the right to pursue at a later date any previously pending or other
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`broader or narrower claims that capture any subject matter supported by the present disclosure,
`
`including subject matter found to be specifically disclaimed herein or by any prior prosecution.
`
`Page 10 ofll
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`EX. 2020-0010
`
`Ex. 2020-0010
`
`

`

`Appl. No. 16/172,685
`Amdt. dated December 23, 2019
`Reply to Non-Final Office Action of September 24, 2019
`
`Docket No. HONEY.001.X1C1C1
`
`Accordingly, reviewers of this or any parent, child, or related prosecution history should not infer
`
`that Applicant has made any disclaimers or disavowals of any subject matter supported by this
`
`application.
`
`Date: December 23, 2019
`
`Respectfully submitted,
`
`By: /Josep_h K. Liu/
`
`Joseph K. Liu, Reg. No. 51,957
`Attorney for Applicant
`One, LLP
`4000 MacArthur BlVd
`
`East Tower, Suite 500
`Newport Beach, CA 92660
`
`Page 11 ofll
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`EX. 2020-0011
`
`Ex. 2020-0011
`
`