DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 2, 2026 has been entered.
Response to Amendment
The amendment filed on May 12, 2026 cancelled no claims. Claims 1, 7, and 13 were amended and no new claims were added. Thus, the currently pending claims addressed below are claims 1-20.
The Affidavit-traversing rejection or objections rule 1.312 under 37 CFR 1.132 filed May 12, 2026 is insufficient to overcome the rejection of claims 1-20 based upon 35 USC 101 rejections as set forth in the last Office action because: the facts presented are not germane to the rejection at issue.
The only outstanding rejections are the 35 USC 101 rejections. The affiant’s definition of a person of ordinary skill in the art (POSITA) encompasses a person familiar with the types of problems encountered in the art, the prior art solutions to those problems, the sophistication of the technology, and the educational background and practical experiences of persons working in the field. While this POSITA would certainly have the requisite knowledge to understand, implement, make, of use the applicant’s invention, they would not possess the requisite knowledge or experience to perform a 35 USC 101 analysis of the applicant’s claims in the manner required by MPEP 2106, because a true POSITA would also possess additional education, experience, knowledge, and understanding of the precise way in which MPEP 2016 requires a 35 USC 101 analysis of claims to be performed.
The examiner acknowledges that the affiant has the requisite knowledge and experience to meet the affiant’s definition of a POSITA. The examiner also has the requisite knowledge and experience to meet the affiant’s definition of a POSITA because the examiner has a bachelor’s degree in marketing, a bachelor’s degree in finance, and a master’s degree in computer science and engineering with a focus on network security, as well as over 20 years of experience examining patent application that fall within the same classification as the instant invention.
Being a POSITA, as defined by the affiant, the examiner realizes that it is common for such an individual to: characterize a process for performing a task as a technology or a technological architecture; characterize a different, new, or unique step which is part of such a process as an improvement to a technology; and characterize a problem which one of more steps of the process overcome as a technical solution to a technical problem. However, such broad characterizations of a technology, improvements to technology, and a technical solution to a technical problem do not fit the narrow manner in which MPEP 2106 requires claims to be analyzed.
The examiner has been performing 35 USC 101 analysis of claims using the currently required process outlined in MPEP 2106 since at least 2019. The requirements used in MPEP 2106, do not allow for such a broad characterization of a technology, improvements to technology, or a technical solution to a technical problem. When performing a 35 USC 101 analysis of a claim using the required method described in MPEP 2106, a true POSITA must be able to:
Perform a Step 2a, Prong 1 analysis in the required manner which includes at least:
Determining whether one or more limitations of a claim recites an abstract idea that falls within one of the enumerated categories and subcategories in MPEP 2106. If there is no limitation within the claim, the claim satisfies the requirements of 35 USC 101 and no 101 rejection is raised. If there are one of more limitations within the claim which recite an abstract idea which falls within one of the enumerated categories and subcategories further analysis is performed.
Identify each limitation, or part thereof, in the claim which falls within said enumerated categories and subcategories which results in an identification of the abstract idea itself.
Identify each limitation, or part thereof, that is not part of the abstract idea itself. These are considered “additional elements” for the remainder of the analysis.
Perform a Step 2a, Prong 1 analysis in the required manner and
Perform a Step 2b analysis in the required manner.
In order to perform a Step 2a, Prong 1 and Step 2b analysis of the claim in the manner required by MPEP 2106, a POSITA would first need have knowledge of the specific terminology used in MPEP 2106 and what it encompasses, which at a bare minimum would include an understanding of the concepts of “additional element” and “an improvement in technology” in the context in which they are used in MPEP 2106. As made clear upon completing the first required step of the analysis, when MPEP 2106 mentions an “additional element” it is referring only to the identified elements of the claim which are not part of the abstract idea itself. According to MPEP 2106.04(d)(1) when evaluating improvements in the functioning of a computer, or an improvement to any other technology or technical field in Step 2A Prong Two, a “claim reciting a judicial exception is not directed to the judicial exception if it also recites additional elements demonstrating that the claim as a whole integrates the exception into a practical application”. As used in MPEP 2106, “additional elements” are those elements of a claim which are not part of the abstract idea itself. MPEP 2106.04(d)(1) further states “The courts have not provided an explicit test for this consideration, but have instead illustrated how it is evaluated in numerous decisions. These decisions, and a detailed explanation of how examiners should evaluate this consideration are provided in MPEP § 2106.05(a).”. According to MPEP 2106.05(a), “It is important to note, the judicial exception alone cannot provide the improvement.”, and according to MPEP 2106.05(a)(II), “However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology”. The above quoted sections of MPEP 2106.05, are also used when evaluating claims for “significantly more” under Step 2b. The key difference between evaluating claims under Step 2a, Prong 2 and Step 2b is found in MPEP 2106.04(d)(I) and 2106.05 which explains that most of these considerations overlap (i.e., they are evaluated in both Step 2A Prong Two and Step 2B), Step 2A specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity, and Step 2b requires consideration of whether the additional elements represent well-understood, routine, conventional activity. Under Step 2b, if an “additional element” or a “combination of additional elements” is other than what is well-understood, routine, and conventional in the field then this consideration favors eligibility, whereas if the “additional element” or the “combination of additional elements” is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.
Thus, a true POSITA would realize, for the purpose of performing a 35 USC 101 analysis under Step 2a, Prong 2 and/or Step 2b, that:
limitations which are part of the abstract idea itself may not be considered a technology or architecture;
improvements that are rooted solely in an abstract which is merely applied using the additional elements as a tool may not be considered a technical improvement, a technological improvement, or an improvement in technology;
solutions to problems which are rooted solely in an abstract which is merely applied using the additional elements as a tool may not be considered technical solution to technical problems.
Instead, for the purpose of performing a 35 USC 101 analysis under Step 2a, Prong 2 and/or Step 2b, an “improvement in technology”, can only overcome 35 USC 101 rejection if said improvement is rooted in the “additional elements” of a claim in a manner other than using the “additional elements” of the claim as a tool to merely apply the abstract idea, merely add insignificant extra-solution activity to the abstract idea, and/or generally link the use of the abstract idea to a particular technical environment of field of use (See MPEP 2106.04(d)(I) which references MPEP § 2106.05(f); MPEP § 2106.05(g); and MPEP § 2106.05(h)). Based on at least the cited sections of MPEP 2106 above, improvements obtained by merely applying the abstract idea using the additional elements of the claims as a tool are incapable of transforming an abstract idea into a practical application under Step 2a, Prong 2. Likewise, based on at least the cited sections of MPEP 2106 above, a claim which recites well-understood, routine, and conventional “additional elements” being used as a tool to merely apply an abstract idea is incapable of being considered “significantly more” under Step 2b.
The additional knowledge and experience with regards to at least MPEP 2106, requires in a paradigm shift associated with the breadth of the terms technology and improvement in technology, which is necessary to properly analyze claims in the manner required by MPEP 2106. Given that the a POSITA, as defined the affiant, would not possess the requisite knowledge and experience to analyze the claims in the manner required by MPEP 2106, the affiant’s definition does not properly characterize the knowledge and experience necessary to be a POSITA. The affiant’s affidavit makes it clear that the sections of the affidavit encompassing: POSITA definition; State of the art at filing; The Claimed Architecture and How It Changes Information Flow; Claimed Improvement to Technology; Why the Improvement Is Not Merely the Business Result of Selling Goods; Response to Examiner’s “Generic Computer” Characterization; Nexus Between Testimony, Specification, and Claims; and Conclusion and Declaration, that the affiant is using a broader interpretation of terms such as “technology”, “technological architecture”, “improvement to a technology, and “technical solution to a technical problem” that allowed under the strictures of MPEP 2106 when performing a 35 USC 101 analysis.
The examiner notes that the affiant has admitted, in at least paragraphs 20, 51, 90, 121, and 152 of the affidavit, that each and every one of the “additional elements” of the claims would have been known components of a general-purpose computer with standard functions to a person of ordinary skill in the field of the invention. Additionally, there is no indication in the affiant’s affidavit which indicate the applicant(s) invented: a new type of computer which operates in a manner different from a traditional general-purpose computer; a new type of processor that operates in a manner different from a traditional processor; a new type of memory that operates in a manner different from a traditional memory; a new type of network interface which operates in a manner different from a traditional network interface; a new type of SMTP protocol which operates in a manner different from the traditional standardized SMTP protocol; a new type of mailto URI scheme that operates in a manner different from the traditional standardized mailto URI scheme; or a new type of database which operates in a manner different from a traditional database. Furthermore, there is nothing in the applicant’s disclosure which indicates these “additional elements” are anything other than a traditional general-purpose computer and traditional generic computer components that were well-understood, routine and conventional to one of ordinary skill in the art.
As such, it is clear that the claims merely require applying the abstract idea using these “additional elements” as a tool and that any purported improvement obtained by practicing the claimed invention is rooted solely in the abstract idea itself which is merely applied using the “additional elements” as a tool. As noted earlier, MPEP 2106.05(a) specifically states that, in order for an improvement to transform an abstract idea into a practical application under Step 2a, Prong 2, the judicial exception alone cannot provide the improvement.”. Therefore, any purported improvement obtained by practicing the claim is incapable of overcoming the 101 rejections under Step 2a, Prong 2 because such improvement are not improvements in technology, as per MPEP 2106.05(a)(II). Likewise, any purported improvement obtained by practicing the claimed invention is incapable of being considered “significantly more” under Step 2b, because the improvement is rooted solely in the abstract idea itself which merely applied using the well-understood, routine, and conventional “additional elements” as a tool.
The examiner acknowledges that each of the affiant’s statements are factually accurate with respect to the definition of a POSITA put forth by the affiant. The issue is that what the affiant characterizes as improvements in technologies do not satisfy the requirement for being consider an improvement in technology based on MPEP 2106. This is because the affiant’s definition of a POSITA does not include the additional requisite knowledge of MPEP 2106 and 35 USC 101.
The affiant puts forth statements indicating that the claims do not recite an abstract idea that falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising, marketing and sales activities or behaviors. For example, paragraphs 48, 50-51, and 120 of the affidavit indicates the claim limitations address how the receiving computer technically determines whether an email-originated transaction is authentic, current, and bound to the intended transaction context before allowing order execution. However, these statements indicates that the affiant is using an arbitrarily narrow interpretation of what an advertising, marketing and sales activities or behaviors is. It would appear that the affiant believes that a sales activity is limited to executing an order. However, the courts have not interpreted abstract idea which fall within the “Certain Method of Organizing Human Activity” grouping of abstract ideas in such a narrow fashion. The courts have determined that gathering data, analyzing data, parsing and comparing data, verifying data, determining result, generating tailor content, and transmitting tailored content are all part of the abstract idea itself (see at least the Electric Power Group decision, the SAP America decision, the Berkheimer decision, the Digitech decision, the Voter Verified decision, Int. Ventures v. Cap One Financial decision, and the Int. Ventures v. Cap One Bank decisions). Since each of the limitations identified by the examiner as being part of the abstract idea itself are performing step to execute and order for a product, and each of said steps is a step which the courts have found to be part of such an abstract idea, the affiant’s statement characterizing such steps as technical belies a fundamental different interpretation of technical than is allowed within the strictures of MPEP 2106.
The affiant puts forth a number of statements using a number of terms involving technology and/or technological improvements. However, in every case, the technology and/or technological improvement is not rooted in the additional elements (i.e., the e-commerce system with a processor, a memory, a database, and a network interface (e.g., general-purpose computer and generic computer components) and the standardized mailto uniform resource identifier scheme (e.g., generic computer component)). Instead, each statement asserts that the steps of the abstract idea itself, which are being perform by said single general-purpose computer, are the technology/architecture, provide the improvement in technology, and/or provide the technical solution to a technical problem. Such statements do not mesh with the strictures of 35 USC 101 analysis imposed by MPEP 2106. According to MPEP 2106(I), the only way in which a claim which recites an abstract idea can be patent eligible is if “the claim as a whole includes additional limitations amounting to significantly more than the exception. As previously state, for the purpose of performing a 35 USC 101 analysis under Step 2a, Prong 2 and/or Step 2b, an “improvement in technology”, can only overcome 35 USC 101 rejection if said improvement is rooted in the “additional elements” of a claim in a manner other than using the “additional elements” of the claim as a tool to merely apply the abstract idea, merely add insignificant extra-solution activity to the abstract idea, and/or generally link the use of the abstract idea to a particular technical environment of field of use (See MPEP 2106.04(d)(I) which references MPEP § 2106.05(f); MPEP § 2106.05(g); and MPEP § 2106.05(h)). Based on at least the cited sections of MPEP 2106 above, improvements obtained by merely applying the abstract idea using the additional elements of the claims as a tool are incapable of transforming an abstract idea into a practical application under Step 2a, Prong 2. Likewise, based on at least the cited sections of MPEP 2106 above, a claim which recites well-understood, routine, and conventional “additional elements” being used as a tool to merely apply an abstract idea is incapable of being considered “significantly more” under Step 2b. Below is a breakdown of the technologies and technical improvements the affiant asserts are obtained by practicing the claimed invention:
An improved technical architecture that changes information flow (paragraphs 51-88), by: using a server-side authentication control packet (paragraphs 55-58), using a UUID as prepopulated text in an order email generated when a user clicks on a mailto hyperlink within an initial email, (paragraphs 59-63); parsing the returned order email (paragraphs 64-68); performing field verification (pages 69-76); performing expiration enforcement (paragraphs 77), performing conditional order execution based on authentication (paragraphs 82-88).
The affiant is using architecture to refer to the entire claimed process which is merely performed on a single general-purpose computer and the manner in information flows. While the statements are factually accurate for a POSITA, as defined by the affiant, the issue once again become the difference between the interpretation of these terms for such a POSITA, and the interpretation of these terms as required by a POSITA that is knowledgeable the stricture in which MPEP 2106 requires a 35 USC 101 analysis of the claims to be performed. The flow of information is rooted solely in the abstract idea which is being applied by the general-purpose computer. As such, any purported improvement from this flow of information is an improvement to an abstract idea which is an improvement in ineligible subject matter.
The authentication control packet is part of the abstract idea itself, as is the receiving of the order email, the parsing of the email and the use of the authentication control packet to verify and authenticate the email. The performing of the expiration enforcement, and performing of conditional order execution are both also part of the abstract idea itself. As such, any purported improvement from this flow of information is an improvement to an abstract idea which is an improvement in ineligible subject matter.
The UUID and the generating of the mailto hyperlink such that the text of the UUI is included in a generated order email is also part of the abstract idea. The affiant admits that the underlying technology used for the generation of the mailto hyperlink was a standardize mailto URI scheme which described how to structure a hyperlink which when clicked would generate an email and populate fields of the generated email with desired text. Thus, the decision on the type of text which will be populated is a business decision that is part of the abstract idea, as is the decision to generate the mailto hyperlink, include it in an email and then send to the email. Thus, the claim merely requires that the standardized mailto URI scheme be used a tool to apply the abstract idea. According to MPEP 2106, in the cited sections above, an improvement that is rooted in the abstract idea is an improvement in ineligible subject matter. Thus, when considered individually, the claim merely requires applying the abstract idea using the one or more additional elements of the claim as a tool which is insufficient to overcome a 35 USC 101 rejection under Step 2a, Prong 2 and/or Step 2b. When considered in combination the claim merely recites applying an abstract idea using the additional elements as a tool which is also requires merely applying an abstract idea using the one or more additional elements of the claim as a tool which is insufficient to overcome a 35 USC 101 rejection under Step 2a, Prong 2 and/or Step 2b.
Improving SMTP/Mailto transaction security (paragraph 89-105). The affiant acknowledges that the invention does not change the way in which SMTP or mailto hyperlinks traditionally worked. Based on the affiants statements the security of the SMPT packet itself is not changed, nor is the security of the mailto hyperlink or the email in which it generates. The examiner agrees, nothing the in claim changes the underlying security of these features. The transaction security the affiant is references is that once the order email is generated it is possible for a user to modify the email before it is sent, or intercept the email after it has been send but before it is received at the server, and modify the email or send a different email in its place to the server. Either of these risks is present in the instant invention and the in any system which communicates via email. Thus, the applicant’s invention is not using some type of underlying technology which should be considered an additional element of the claim to improve transaction security. Instead, this argued improvement to security is rooted solely in the steps which are part of the abstract idea itself which is merely applied using the additional elements as tool which is insufficient to overcome a 35 USC 101 rejection under Step 2a, Prong 2 and/or Step 2b.
Provides a freshness or timeliness control that reduces the risk of replayed or stale email-originated transaction request (Paragraph 112). Once again the freshness and timeliness control do prevents the performing of an order execution procedure when a replayed or stale order email is received. However, the way in which this is perform is by the steps of the abstract idea itself which parse data, analyzing data and determining result. Hence, the reduction in risk is rooted in the abstract idea itself which is merely applied using the additional elements of the claim as a tool which is insufficient to overcome a 35 USC 101 rejection under Step 2a, Prong 2 and/or Step 2b.
Provides a security gate between receiving the email-generated order message and the execution of the transaction (Paragraph 113). As indicated above, the security gate describe by the affiant is realized by performing the steps of the abstract idea itself and not by some type of technology which should be considered an additional element of the clamed invention. As such, any improvement associated with such as security gate is rooted solely in the abstract idea itself which is merely applied using the additional elements of the claims which is insufficient to overcome a 35 USC 101 rejection under Step 2a, Prong 2 and/or Step 2b.
Reflects a technical verification architecture (paragraph 114). As indicated above, the technical verification architecture described by the affiant is not some type of underlying technology that should be considered an additional element of the clamed invention. Instead, said technical verification architecture is achieved by merely performing the steps of the abstract idea which is merely applied using the additional elements of the claims which is insufficient to overcome a 35 USC 101 rejection under Step 2a, Prong 2 and/or Step 2b.
Improves the security and reliability of the email-originated transaction pathway (paragraph 118) and provides a technological improvement to SMTP/mailto-based transaction processing (paragraph 119). The affiant has admitted that the security of the SMTP transportation pathway itself is not chance, nor is the security of the transmitted initial email itself, nor the security of the received order email. They are standard email transmitted via the standard SMTP. When describing the security and reliability of this pathway, the affiant indicates that by making the decision (business decision) to use a UUID as the text which is included in the order email, and making the decision (business decision) to store information related to this UUID (i.e. the authentication control packet), the steps of parsing the received order email, comparing the fields of the email to the expected information in the control packet, an improvement to the security and reliability of email-based transaction processing is achieved. However, this improvement is rooted solely in the abstract idea itself which is merely applied using the additional elements as a tool which his insufficient to overcome a 35 USC 101 rejection under Step 2a, Prong 2 and/or Step 2b.
Provides a solution to the technical risk relating to alteration, forwarding, spoofing, replay, stale links, and loss of server-control transaction context (paragraph 121). As the affiant describes it is possible for a user to modify the contents of an email generated using a mailto hyperlink, thereby changing the context of a sent transaction, to forward such an email to someone other than the email of the server, to send the email more than a single time, to generate the email after an offer has already expired, or for such an email to be intercepted and changed in one of the above fashion after it is sent by the user and before it reaches its intended recipient. This is true for the claims in the applicant invention as well as any email generated using a mailto hyperlink based on the mailto URI scheme. The solution which that affiant describes is that when an email is received certain steps are performed which result in this solution. However, the steps which the affiant describe as providing said solution are steps that are part of the abstract idea which is merely applied using the additional elements of the claim as a tool. As such, the improvement is rooted solely in the abstract idea itself which is an improvement in ineligible subject matter. Improvements of this nature are insufficient to overcome a 35 USC 101 rejection under Step 2a, Prong 2 and/or Step 2b
Provides a solution to a technical trust problem that arises before any commercial result is performed (paragraph 125). Once again, the trust problem described is resolved by the validating of the returned email which is part of the abstract idea itself which is merely applied using the additional elements of the claim as a tool. As such, the improvement is rooted solely in the abstract idea itself which is an improvement in ineligible subject matter. Improvements of this nature are insufficient to overcome a 35 USC 101 rejection under Step 2a, Prong 2 and/or Step 2b
Recites a technical authentication architecture, not simply a commercial instruction to complete an order (paragraph 128). Again, the technical authentication architecture described involves the matching of the UUID information in the order email with the authentication information store in associated with the UUID before the initial email was sent. Since the generating of the mailto hyperlink, the inclusion of the hyperlink in the initial email, the receipt of the order email, the parsing of the order email, and the verification and authentication of the received order email are all part of the abstract idea itself. As such, the technical architecture is the abstract idea itself which is merely applied using the additional elements as a tool which his insufficient to overcome a 35 USC 101 rejection under Step 2a, Prong 2 and/or Step 2b.
Provides a technical security workflow which is independent of the particular commercial item, donation amount, or transaction object (Paragraphs 132-139). The examiner concurs that if one a POSITA, as defined by the affiant, were to step back from the claim and take a broad overlying looks at what such an invention might result in, they would conclude that workflow described is present regardless of the particular commercial item, donation amount, or transaction object. However, the claims require the unique identifier and authentication control packet which is used for verification to be for a specific e-commerce transaction. Thus, the comparing, verifying, authenticating, and performing of the order execution procedure for a specific transaction. While this single specific transaction might be for a specific item, a specific donation amount it is still dependent on the specific transaction. Nonetheless, it is clear that the purported technical security workflow is rooted solely in the step of the abstract idea itself which is merely applied using the additional elements of the claim as a tool which insufficient to overcome a 35 USC 101 rejection under Step 2a, Prong 2 and/or Step 2b.
Provides an architecture which changes the execution condition (paragraphs 140-151) and the claimed ordered combination of the steps provide a technological contribution which changes the system operation by changing it from simple email receipt and order to fulfillment to a system which also perform packet-based authentication and expiration control (paragraph 176). The affiant’s statements with regards to these issues are based on how the steps of the claim are different from the steps in which a typical email-order system operates in that a typical email-order system might not perform the verification and authentication steps prior to performing an order execution procedure. Thus, the affiant asserts that the use of additional step the results of which results in a conditional performance of the order execution procedure is an improvement in technology. Again, the verification and authentication steps, as well as the step of conditionally performing an order execution procedure are all part of the abstract idea itself which is merely applied using the additional elements as a tool. As such, the improvement is rooted solely in the abstract idea itself which is an improvement in ineligible subject matter. Improvements of this nature are improvements to an abstract idea which is insufficient to overcome a 35 USC 101 rejection under Step 2a, Prong 2 and/or Step 2b.
In summation, the examiner does not dispute any of the affiant’s statements in the affidavit. Each statement reflects a true an accurate representation of what a POSITA, as defined by the affiant, might conclude from reading and understanding the applicant’s claims, specification and drawings.
The issue is that the affiant’s definition of a POSITA is insufficient for describing a POSITA that must make conclusion based on the requirement imposed by MPEP 2106 for conducting a 35 USC 101 analysis of the claimed invention. MPEP 2106 strictly defines what an “additional element” is and what is an is not an improvement in technology. If a claim recites an abstract idea under Step 2a, Prong1, only improvements which are rooted in the “additional elements”, in a manner other than applying the abstract idea using the additional elements, are capable of being considered an improvement in technology. Therefore, only improvements which are rooted in the “additional elements”, in a manner other than applying the abstract idea using the additional elements are capable of overcoming the 35 USC 101 rejection under Step 2a, Prong 2, and/or Step 2b. As such, it is clear that a true POSITA would need to have, in addition to the requirements defined by the affiant, the requisite education, knowledge, and or experience in at least MPEP 2106, because they would need to identify the additional elements of the claim and explain how an improvement in the claim is rooted in the additional elements of the claim in a manner other than merely applying the abstract idea as a tool, and thereby recite an “improvement in technology” as defined by MPEP 2106.
None of the affiant’s statements create a clear nexus between an improvement and the additional elements of the claim in a manner other than merely applying the abstract idea using the additional elements as a tool which is the only way, according to MPEP 2106, for a claim that recites an abstract idea to overcome a 35 USC 101 rejection. As such, the facts presented are not germane to the rejection at issue.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence fails to outweigh the evidence that the claims are ineligible under 35 USC 101.
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 1-20 are directed to a method, a system, and a computer program product which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claim(s) 1, 7, and 13 recite(s) the following abstract idea: (Examiner Note: The Simple Mail Transport Protocol (SMTP) standardized protocol through which the message is transmitted have been included in the abstract idea because it is outside the scope of the invention and, as such, cannot be considered an “additional element” of the claimed invention)
storing information including a unique identifier for the e-commerce transaction and an email address of a customer;
storing an authentication control packet associated with a universally unique identifier (UUID), the authentication control packet comprising a client identifier, an email campaign identifier, an item or donation amount, a subject line, an email address of a customer, a member identifier, and a timestamp including an expiration date;
configuring a mailto hyperlink that conforms to a standard that, when activated, generates an order email message addressed to an email address of an e-commerce company, the mailto hyperlink including: in a body field, a universally unique identifier (UUID) and one or more additional parameters comprising a client identifier, an email campaign identifier, an item or donation amount, and a member identifier, and in a subject field, a subject line; wherein the UUID is an opaque identifier that does not encode the one or more additional parameters and does not encode authentication information of the authentication control packet; wherein the UUID is stored in association with the authentication control packet that comprises at least the client identifier, the email campaign identifier, the item or donation amount, the subject line, the email address of the customer , the member identifier, and a timestamp including an expiration date;
transmitting an initial email message (e.g., advertising email message) to the email address of the customer via SMTP, wherein the initial email message includes the mailto hyperlink;
receiving, via SMTP using the email address of the e-commerce company, the order email message that was generated by activation of the mailto hyperlink;
parsing the body field of the order email message to extract the universally unique identifier (UUID) and the one or more additional parameters;
parsing a subject field of the order email message to extract the subject line;
using the UUID extracted from the body field as a key to retrieve the authentication control packet
performing a comparison in which the UUID, the one or more additional parameters, the subject line, and a sender email address from which the order email message is received are verified against corresponding field of the stored authentication control packet, and wherein the timestamp associated with the stored authentication packet associated with the UUID is verified as unexpired based on the expiration date;
authenticating the e-commerce transaction based on the comparison; and
performing, on a condition that the e-commerce transaction is authenticated, an order execution procedure based on the order email message, wherein the order execution procedure completes the e-commerce transaction for the customer.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising, marketing and sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e., “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of:
an e-commerce system with a processor, a memory, a database, and a network interface (general-purpose computer and generic computer components); and
a standard mailto uniform resource identifier scheme.
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, storing, communicating (e.g., transmitting and receiving), and displaying data and, as such, are insignificant extra-solution activities (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
storing information including a unique identifier for the e-commerce transaction and an email address of a customer (storing data);
storing an authentication control packet associated with a universally unique identifier (UUID), the authentication control packet comprising the client identifier, the email campaign identifier, the item or donation amount, the subject line, the email address of a customer, the member identifier, and a timestamp including an expiration date (storing data);
transmitting an advertising email message to the email address of the customer via SMTP, wherein the advertising email message includes the mailto hyperlink (transmitting data); and
receiving, via SMTP using the email address of the e-commerce company, the order email message that was generated by activation of the mailto hyperlink, (receiving data).
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of processing, communicating (e.g., transmitting and receiving), and displaying) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e., “PEG” Revised Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using an e-commerce system with a processor, a memory, a database, and a network interface (general-purpose computer and generic computer components) and a standardized mailto uniform resource identifier scheme (generic computer component) to perform the claimed functions amounts to no more than mere instructions to apply the exception using a general-purpose computer and generic computer components.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires a general-purpose computer and general-purpose computer components (as evidenced from paragraphs 54, 163 and 172-173 which discloses that the e-commerce system with a processor, memory, database, and network interface are just a well-known general-purpose computer with generic computer components; the Affinity v. Direct TV decision which discloses that databases are well-known generic computer components; and Web Design, A Complete Guide to Web Design, November 27, 2010, https://web.archive.org/web/20101127112938/ http://www.ntslibrary.com/PDF%20Books/A%20Complete%20Guide%20to%20Web%20Design.pdf, pgs. 1-594 which discloses on pages 143-144 that mailto hyperlinks that conforms to a standardized mailto uniform resource identifier scheme were well-known by at least 2010; as well as, the applicant’s specification in at paragraph 102 that discloses that the mailto hyperlinks may be defined according to the format described in Internet Engineering Task Force (IETF) RFC2368, wherein RFC2368 was published in July of 1998); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility. Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, displaying, storing, and/or transmitting data (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
storing information including a unique identifier for the e-commerce transaction and an email address of a customer (storing data);
storing an authentication control packet associated with a universally unique identifier (UUID), the authentication control packet comprising the client identifier, the email campaign identifier, the item or donation amount, the subject line, the email address of a customer, the member identifier, and a timestamp including an expiration date (storing data);
transmitting an advertising email message to the email address of the customer via SMTP, wherein the advertising email message includes the mailto hyperlink (transmitting data); and
receiving, via SMTP using the email address of the e-commerce company, the order email message that was generated by activation of the mailto hyperlink, (receiving data).
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e., “PEG” Step 2B=No).
The dependent claims 2-6; 8-12; and 14-20 appear to merely further limit the abstract idea by further limiting the order execution procedure to include a step of transmitting which is considered part of the abstract idea (Claims 2, 4, 8, 10, 14, and 16); adding an additional step of storing credit card information, further limiting the one or more messages, and further limiting the payment processing system which are all considered part of the abstract idea (Claims 3, 9, and 15); adding additional step of an order confirmation procedure and/or further limiting the order confirmation procedure which are all considered part of the abstract idea (Claims 5-6, 11-12, and 17-18); further limiting the one or more additional parameters, the authentication control packet; and the comparison which are all considered part of the abstract idea (Claim 19), and adding the steps of refraining to perform the order execution procedure and storing an audit record which are both considered part of the abstract idea (Claim 20) , and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claims 1-20 are not patent eligible.
Possible Allowable Subject Matter
Claims 1-20 contain subject matter that would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 rejections identified above.
The following is a statement of reasons for the indication of allowable subject matter: The examiner has found prior art (see Estes - 2004/0024655; Eisner et al. - 8,156,012, and Vadhri - 2010/0070419) that discloses a method, an e-commerce system, and a non-transitory computer-readable storage medium that improves security of an e-commerce transaction using Simple Mail Transfer Protocol comprising:
a memory that stores a database of information; a network interface; and one or more processors communicatively coupled to the memory and the network interface wherein the one or more processors are collectively configured to:
store, in the database, information including a unique identifier for the e-commerce transaction and an email address of a customer;
configure a mailto hyperlink that, when activated generates an order email message addressed to an email address of the e-commerce system, the mailto hyperlink including, in a body field, a universally unique identifier (UUID) associated in the database with an authentication control packet comprising at least a client identifier, an email campaign identifier, an item or donation amount, a subject line, the email address of the customer, and a member identifier;
transmit, using the network interface, an advertising email message to the email address of the customer via SMTP, wherein the advertising email message includes the mailto hyperlink,
receive, via SMTP using the network interface, the order email message of the e-commerce system that was generated by activation of the mailto hyperlink, the order email message including the body field;
parsing the body field of the order email message to extract the UUID and one or more additional parameters comprising at least one of the the item or donation amount, the client identifier, the email campaign identifier, and the member identifier;
parsing the subject line of the order email massage to extract the subject line;
performing, using the memory, a comparison in which the UUID and the one or more additional parameters and the sender email address from which the order email message is received are verified against corresponding fields of the authentication control packet stored in the database;
authenticating the e-commerce transaction based on the comparison; and
performing, on a condition that the e-commerce transaction is authenticated, an order execution procedure based on the order email message, wherein the order execution procedure completes the e-commerce transaction for the customer.
However, the prior art of Estes; Eisner, and Vadhri do not disclose a that the mailto hyperlink conforms to a mailto uniform resource identifier scheme. This is because the mailto uniform resource identifier schemes in effect prior to July 18, 2012 required that the body of the email encoded in the mailto hyperlink be limited to text-based representations of information and the mailto hyperlink in Eisner includes the template.
While it might have been obvious to one of ordinary skill in the art to modify the invention of Estes, Eisner, and Vadhri to include a mailto hyperlink that conforms to a mailto uniform resource identifier scheme by using either RFC 2368, which has been incorporated by reference into the applicant’s specification or another prior art such as de Valk, The Full mailto Link Syntax, October 27, 2008, https://yoast.com/developer-blog/guide-mailto-links/, pages 1-6 the combination of Estes, Eisner, Vadhri, and de Valk would still not teach the limitations of:
the authentication control packet including a timestamp that includes an expiration data and
the UUID being verified as unexpired based on the expiration date.
Even if there were prior art that teaches these additional limitations, it would not have been obvious to one of ordinary skill in the art to modify the invention of Estes, Eisner, Vadhri, and de Valk with such a reference without the use of impermissible hindsight by using the applicant’s claims as a roadmap.
As such, claims 1-20 contain subject matter that would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 rejections identified above.
Response to Arguments
Applicant's arguments filed May 12, 2026 have been fully considered but they are not persuasive.
The applicant traverses the 35 USC 101 rejections because they are directed to a specific technological improvement in SMTP/mailto-based transaction processing: an expiration bound, server-side authentication architecture that changes how an e-commerce system treats a returned SMTP order email generated from a mailto hyperlink before the system permits order execution and references the Alice Corp decision and MPEP 2106.05(a) as support for this traversal. The examiner finds the traversal unconvincing. Both MPEP 2106.05(a) and the Alice Corp decision require that a specific technological improvement be rooted in the additional elements (or additional features in the Alice decision) of the claim in a manner other than merely applying the abstract idea using the additional elements of the claim as a tool. In the instant case, the argued improvement is rooted solely in the abstract idea itself which is merely applied using the additional elements of the claim as a tool. As such, the purported improvement is not an improvement in technology (see MPEP 2106.05(a) - “It is important to note, the judicial exception alone cannot provide the improvement”; and MPEP 2106.05(a)(II) - “However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology”). Instead, the purported improvement is rooted in the abstract idea itself which is merely applied using the additional elements as a tool. Improvements of this nature are improvements to an abstract idea which is an improvement in in eligible subject matter (see MPEP 2106.05(a) - “It is important to note, the judicial exception alone cannot provide the improvement”; and MPEP 2106.05(a)(II) - “However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology”; and the SAP v Investpic decision - Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.). As such, the traversal is not convincing and the rejections have been maintained.
The applicant argues that the operative authentication control packet limitations are not part of the identified abstract idea. The examiner strongly disagrees. The courts have found that gathering data, storing data, analyzing data, parsing and comparing data, verifying data, determining result, generating tailor content, and transmitting tailored content are all part of the abstract idea itself when the claim recite an abstract idea that “Certain Method of Organizing Human Activity” grouping (see at least the Electric Power Group decision, Smart Systems Innovations, the SAP America decision, the Berkheimer decision, the Digitech decision, the Voter Verified decision, Int. Ventures v. Cap One Financial decision, and the Int. Ventures v. Cap One Bank decisions). The claims unquestionably recite an advertising, marketing, or sales activity or behavior and, as such, “Certain Method of Organizing Human Activity” grouping, as well as the commercial and legal interactions subgrouping because the recite a specific process for making a user aware of an item and performing a transaction associate with the item. As such, each claim limitation describing this advertising marketing or sales activity or behavior may be part of a said abstract idea. The claim requires storing a unique identifier for the transaction, an authentication control packet associated with the offer, and a UUID associated with the authentication control packet which are all storing data for the purpose of the advertising marketing or sales activity. Furthermore, the configuring of the mailto hyperlink, the data it uses, and the initial email including the generated mailto hyperlink are clearly generating tailored content for the purpose of performing the advertising marketing or sales activity or behavior and, as such part of the abstract idea itself. The transmitting of the initial email message is clearly transmitting the tailored content for purpose of performing the advertising marketing or sales activity or behavior and, as such part of the abstract idea itself. The receiving of the order email generated from the mailto hyperlink is clearly gathering data purpose of performing the advertising marketing or sales activity or behavior and, as such part of the abstract idea itself. The parsing of the order email, using the UUID to retrieve the stored authentication control packet, performing of the comparison and verifying of the UUID as unexpired, and authentication of the transaction are all clearly analyzing data and determining results for the purpose of performing the advertising marketing or sales activity or behavior and, as such part of the abstract idea itself. Finally, the performing of an order execution is merely transmitting data based on the comparison for the purpose of performing the advertising marketing or sales activity or behavior and, as such part of the abstract idea itself. Since each of the limitations identified by the examiner as being part of the abstract idea itself are performing step to execute and order for a product, and each of said steps is a step which the courts have found to be part of such an abstract idea. Therefore, it is clear that the authentication control packet limitations are, indeed, properly treated as part of the abstract idea itself. Thus, the applicant’s arguments are not convincing.
The applicant argues that the claims recite an ordered technological architecture and use the Enfish decision, McRO decision as support for this position. The examiner disagrees. What the applicant asserts is an architecture is an abstract idea for a specific manner in which an advertising, marketing, or sales activity or behavior is performed. The claims merely require applying this abstract idea using the identified additional elements as tool. Neither the Enfish, nor McRO decision support the contention that merely applying the abstract idea using a general-purpose computer with generic computer components is sufficient to transform an abstract idea into a practical application under Step 2a, Prong 2 or sufficient to be considered significantly more under Step 2b. In the Enfish decision the court found that the inventor had invented a new type of database, called a self-referential database, that operated in a manner different from the way in which traditional databases worked and this distinction was supported by the applicant's specification. Thus, the court concluded that the “additional element” of the self-referential database was not a generic computer component but instead a newly invented component that was significantly more than the abstract idea under Step 2b. Likewise, in the McRO decision, the court found that the specific process for animations which was not part of an abstract idea directed to the fundamental economic practice of performing manual 3D animation techniques. As such, the specific process was an additional element of the claim which was considered an inventive concept that transform the abstract idea into a practical application under Step 2a of the Alice test (i.e., under Step 2a, Prong 2 of the process outlined in MPEP 2106). In contrast, the only additional elements of the instant claims are the only additional elements of the claim are a general-purpose computer (i.e., an e-commerce system) with general purpose computing components (i.e., a processor, a memory, a database, and a network interface) and a standardized protocol (i.e., a mailto uniform resource identifier scheme) which are merely used as tools to apply the abstract idea. Every other limitation is part of the abstract idea itself. As such, the instant claims bear no similarities to the claims of the Enfish or McRO decision. The ordered architecture is the abstract idea itself which is merely applied using the additional elements as a tool. Improvements of this nature are improvements in ineligible subject matter which are improvements to an abstract idea and, as such, are incapable of overcoming a 35 USC 101 rejection under Step 2a, Prong 2 and/or Step 2b. Thus, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant asserts that the claims do not merely recite the commercial result of advertising or selling a product. This is argument is immaterial, as the examiner has not stated that the abstract idea is merely a commercial result of advertising or selling a product. The examiner has identified the claim as reciting an advertising, marketing, or sales activity or behaviour which encompass the entire advertising, marketing or sales process and not just the commercial result of advertising or selling a product. As such, the argued workflow is part of the abstract idea itself and any improvement obtained by performing the workflow in an improvement rooted solely in the abstract idea itself which is an improvement in ineligible subject matter. Thus, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant argues that the claims are directed to a practical application and as such should overcome the 35 USC 101 rejection under Step 2a, Prong 2 and rely on the affidavit of John P. Killoran, Jr. (“SMED”) as support for this contention. As indicated in the response to the affidavit above, none of statements in the affidavit provide a nexus between a purported improvement and the additional elements of the claimed invention. Instead, statements in the affidavit indicate that the claimed improvements are part of the abstract idea itself which is merely applied using the additional elements as a tool. Improvements of this nature are improvements to an abstract idea which are improvements in ineligible subject matter. Thus, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant argues that the office action improperly treats the operative security architecture as part of the abstract idea. The examiner strongly disagrees. As indicated in one of the responses to arguments above, what the applicant refers to as a security architecture is merely the steps of abstract idea itself because they are all steps performed in the process of performing the advertising, marketing, or sales activity or behavior and merely require gathering data, storing data, analyzing data, parsing and comparing data, verifying data, determining result, generating tailor content, and transmitting tailored content which the courts have found to be part of an abstract idea which falls within the “Certain Method of Organizing Human Activity. As such the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant argues that the claims improve SMTP/Mailto transaction security and as such should overcome the 101 rejections. The examiner disagrees. As admitted in the affidavit, the claims do not change the function of SMTP or the function of a mailto hyperlink. As such, not SMTP/Mailto security is improved. Instead, the claim performs a specific abstract idea which result in an improvement to the transaction security of the abstract idea by performing verification and authentication prior to performing an order execution process. Since the verification and authentication steps are part of the abstract idea itself, the improvement is rooted solely in the abstract idea itself and as such is an improvement in ineligible subject matter. Thus, the applicant’s arguments are not convincing.
The applicant argues that the claims are not merely a generic computer implementation because the claims require the computer to perform a specific process. The examiner disagrees. As admitted in the affidavit the additional elements of the claim are merely a general-purpose computer with generic computer components. Given this, it is clear, that the entire process the claims require to be performed is merely a process of performing the abstract idea which is merely applied using the additional elements as a tool. This is the definition of a generic computer implementation of an abstract idea using the additional elements as a tool. Unlike, the claims in the Bascom decision which the scope of the claim comprised two different devices (i.e., a client computer and a remote ISP server) within the scope of the claimed invention, the instant claims include on a single computer within the scope of the invention. In Bascom, the improvement was rooted in the additional elements of the claim because it was based on the specific steps of the abstract idea being performed by each additional element. In contrast, the instant claims require a single device with generic computer components to perform every step of the abstract idea. As such, the instant claims do not recite an arrangement of devices each performing at least one significant step of the abstract idea. Thus, the purported improvements of the instant invention are rooted solely in the abstract idea itself which is merely applied using the additional elements as a tool which is insufficient to overcome a 101 rejection under Step 2a, Prong 2 and/or Step 2b. As such, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant argues that the office action’s restrictive view of the ordered combination is incorrect. The examiner strongly disagrees. The applicant seems to confuse an order combination of abstract idea steps with the ordered combination analysis under Steps 2a, Prong 2 and Step 2b. When the scope of a claim encompasses just a single general-purpose computer with generic computer components, the analysis under Step 2a, Prong 2 both individually and as an order combination is the same. Individually the additional elements amount to no more than one or more component of a general-purpose computer being used a tool to merely apply an abstract idea. When considered in combination the claim amounts to no more than a general-purpose computer with generic computer components being used as a tool to merely apply the abstract idea. In order to overcome a 101 rejection under Step 2a, Prong 2 or Step 2b MPEP 2106 requires that an improvement be rooted in the additional elements of the claim in a manner other than merely using the additional elements as a tool to apply the abstract idea. Thus, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant argues that the SMED has provided factual evidence supporting eligibility. The examiner disagrees. As thoroughly explained in the response to the affidavit, the SMED has provided factual evidence of improvements that the claimed invention provides. The issue is that these improvements are not improvements in technology as defined in MPEP 2106. Instead, they are improvements rooted solely in the abstract idea itself which are improvements in ineligible subject matter (see MPEP 2106.05(a) - “It is important to note, the judicial exception alone cannot provide the improvement”; and MPEP 2106.05(a)(II) - “However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology”; and the SAP v Investpic decision - Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.). The SMED memorandum the applicant references is directed to improvements in technology as defined by MPEP 2106 which requires that the improvement be rooted in the additional elements of a claim in a manner other than merely applying the abstract idea using the additional elements as a tool. The SMED memorandum does not change the requirements of MPEP 2106 to include any improvement which the SMED asserts is an improvement in technology. For the affidavit to be convincing to overcome the 101 rejections, the asserted improvement in technology must be an improvement in technology that is rooted in the additional elements of the claims. As such, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant argues that the examiner prior art findings confirm the technical specificity of the claimed architecture. The examiner strongly disagrees. The analysis required to be performed for determining prior art is completely different than the one required for a 35 USC 101 analysis. There is no relationship between the two. When analyzing a claim for prior art purposes, the question is: Does the claim scope include one or more positively recited limitations which are not disclosed by one or more prior art references, and if more than one reference would need to be used would it have been obvious to combine said references without the use of impermissible hindsight? Thus, any claim limitation within the scope of a claim is capable of resulting in an invention which claims subject matter not disclosed in the prior art. Whereas, when performing a 35 USC 101 analysis this is not the case. When a claim recites an abstract idea under Step 2a, Prong 1, only improvements rooted in the additional elements of the claim, in a manner other than merely applying the abstract idea using the additional elements as a tool, are capable of being considered improvements in technology. Therefore, only improvements rooted in the additional elements of the claim are capable of overcoming the 101 rejections under Step 2a, Prong 2 and/or Step 2b. Hence, if one or more limitations of a claim are rooted solely the abstract idea itself, said one or more limitations are not capable of overcoming the 101 rejections. In contrast, said one or more limitations when not disclosed in the prior art are capable of resulting in subject matter allowable over the prior art. Likewise, whether one or more additional elements are well-understood, routine, and conventional is only a consideration under Step 2b. While this step might include a prior art search, it is a different kind of search than the one performed under 35 USC 102/103. Under the prior art search for the purpose of performing 35 USC 102/103 analysis, the examiner is searching for one or more reference which when combined disclose the claimed invention. When searching the prior art for a 35 USC 101 analysis, the examiner is looking for one or more references that prove the one or more additional elements of the claim were well-understood, routine, and conventional before the effective filing date. Just because a single reference mention said one or more additional elements is not proof that said one or more additional references were well-understood, routine, and conventional. Such a reference would need to refer to said one or more additional references as being common, well-known, traditional, ubiquitous or some of adjective that is synonymous with the phrase well-understood, routine, and conventional. Should such an adjective not be present in a single reference an examiner may use multiple references which each reference said one or more additional elements to prove it was well-understood, routine, and conventional. This means a single reference may be usable to reject a claim under 35 USC 102/103, but not be sufficient to prove said one or more references were well-understood, routine, and conventional. Hence, it is clear that the search for prior art under 35 USC 102/103 is completely different and distinct than a search of the prior art under 35 USC 101. As such, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant asserts that the depend claims further confirm the technical gatekeeping architecture. The examiner disagrees. The examiner has considered each and every dependent claimed to identify whether they further limit the abstract idea itself or introduce a new additional element. The dependent claims introduce no new additional elements to the claims which where not already considered in the initial analysis and, as such, merely further limit the abstract idea itself. Based on the analysis, it appears that what the applicant refers to as a technical gatekeeping architecture, is the abstract idea which is merely applied using the additional elements as a tool which is insufficient to overcome a 101 rejection under Step 2a, Prong 2 and/or Step 2b. Only improvement which are rooted in the additional elements of the claim are capable of being considered an improvement in technology and only such improvements in technology are capable of overcome a 101 rejection under Step 2a, Prong 2 and/or Step 2b (see MPEP 2106.05(a) - “It is important to note, the judicial exception alone cannot provide the improvement”; and MPEP 2106.05(a)(II) - “However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology.”). In regards to claim 19, the additional parameters extracted from the body further limit: the text the applicant decided to be populated in the body of the order email, the data parsed from the email; the analyzing of the data; and determined validation and/or authentication results. Each of these steps are part of the abstract idea itself. As such, claim 19 further limits the abstract idea itself, but introduces no new additional elements for consideration under Steps 2a, Prong 2 and/or Step 2b. As such, claim 19 is incapable of transforming the abstract idea into a practical application under Step 2a, Prong 2 and incapable of being considered significantly more under Step 2b. In regards to claim 20, it merely further limits the abstract idea by indicating an action the invention does not performed based on the determined results. Claim 20 does not introduce any new additional elements for consideration under Steps 2a, Prong 2 and/or Step 2b. As such, claim 20 is incapable of transforming the abstract idea into a practical application under Step 2a, Prong 2 and incapable of being considered significantly more under Step 2b. Thus, the applicant’s arguments are not convincing and the rejections have been maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fortenberry et al. (6,101,485) discloses generating and transmitting, via SMTP, a first electronic mail (e-mail) message to send to a consumer that includes a description of at least one product available for sale by an electronic commerce (e-commerce) site, a link for indicating that the shopper has chosen to purchase the at least one product, and at least one activatable link for transmitting purchase data back to the e-commerce site. In response to receiving the second e-mail message transmitted back to the e-commerce site by activation of the link by the at least one potential shopper, consummating the purchase of the at least one product by the at least one potential shopper. The e-commerce site returns an e-mail confirmation, perhaps with a product pickup or delivery schedule.
Lawe (2007/0022007) discloses marketing emails containing a plurality of hyperlinks, where in the hyperlinks refer to a specific product and a predetermined quantity of that product.
Hughes (2009/0276345) discloses a system for conducting transactions via email, wherein the email message includes a plurality of mailto hyperlinks associated with specific transactions.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 JOHN W VAN BRAMER whose telephone number is (571)272-8198. The examiner can normally be reached Monday-Thursday 5:30 am - 4 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Spar Ilana can be reached on 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/John Van Bramer/Primary Examiner, Art Unit 3622
Prosecution Insights