DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
The amendment filed on January 23, 2026 cancelled no claims. Claims 1, 7, 12-13, and 17-18 were amended and new claim 19-20 were added. Thus, the currently pending claims addressed below are claims 1-20.
Claim Rejections - 35 USC § 112
The amendment filed on January 23 has overcome the 35 U.S.C. 112(b) rejections of claims 1-18 raised in the Office Action dated October 30, 2026. Thus, the rejections are hereby withdrawn.
The amendment filed on January 23 has overcome the 35 U.S.C. 112(b) rejections of claims 1-18 raised in the Office Action dated October 30, 2026. Thus, the rejections are hereby withdrawn.
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 at least the UUID, 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 at least one of 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 associated in storage with an 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 advertising email message to the email address of the customer via SMTP, wherein the advertising 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;
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 at least the UUID, 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 at least the UUID, 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 1-18 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 none of the mailto uniform resource identifier schemes in effect prior to July 18, 2012 requires that the body of the email encoded in the mailto hyperlink was 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 1-18 contain subject matter that would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 112 second paragraph rejections, the 35 USC 112 first paragraph rejections, and the 35 USC 101 rejections identified above/
Response to Arguments
Applicant's arguments filed January 23, 2026 have been fully considered but they are not persuasive.
The applicant argues that the claims overcome the 35 USC 101 rejection fails because it defines the alleged “abstract idea” at an impermissible concrete level that subsumes the operative security limitation associated with a specific, protocol-layer authentication mechanism for email-originated transactions, thereby collapsing the Step 2A/Step 2b analysis because it does not adequately evaluate the claims “as a whole” under USPTO’s eligibility guidance. The examiner strongly disagrees. The applicant appears to be misconstruing the Step 2a, Prong 2/Step 2b requirement in MPEP 2106, as well as, the USPTO’s eligibility guidance. According to MPEP 2106, as well as, the USPTO’s eligibility guidance, it is the “additional elements” that must be considered both individually and “as a whole”.
First, there is no requirement in MPEP 2106, the USPTO’s eligibility guidance or precedential court decisions that requires the limitations of the abstract idea be considered under the Step 2a, Prong 2 and/or Step 2b analysis. The closest requirement to a such an analysis if found in the BASCOM decision, where analyzing a claim which positively comprises two different computing devices, requires one to consider the arrangement of the two devices and the significant steps of an abstract idea that each device is performing to determine whether the specific arrangement of devices and the specific steps they perform results in an improvement over the abstract idea being performed on a single device and whether said arrangement of devices and the significant steps each performs is an improvement over any currently known arrangement of devices performing the significant steps. However, the BASCOM decision is irrelevant to the claims of the instant invention because the instant invention does not recite an invention that comprises two different computing devices. As such, there is no arrangement of devices being claimed. “Additional elements”, as used in MPEP 2106 and the USPTO subject eligibility guidance, are defined as those elements of a claim that are not part of the abstract idea itself. Once an examiner identifies which parts of the claim are part of the abstract idea itself, any remaining elements are “additional elements” that must be considered both individually and as whole, under Step 2a, Prong 2 and Step 2b. In order to overcome a 35 USC 101 rejection under Step 2a, Prong 2, the “additional elements” of the claim, when considered individually and “as a whole”, must recite an improvement that transforms the abstract idea into a practical application in a manner other than merely using a general-purpose computer with generic computer components and a standardized protocol as a tool to merely apply an abstract idea. In order to overcome a 35 USC 101 rejection under Step 2b, it is the “additional elements” of a claim, when considered both individually and “as a whole”, that are considered “significantly more”. In the instant case, 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). Considering the “additional elements” individually amounts to no more than a general-purpose computer (i.e., an e-commerce system) with general purpose computing components which merely apply the abstract idea and a standardized protocol which is merely used a tool to apply the abstract idea. The “additional elements” of the claim, when considered “as a whole”, amount to no more than a general-purpose computer with general purpose computing components and a standardized protocol which are merely used as a tool to apply the abstract idea. As such, the “additional elements”, when considered individually and “as a whole”, are 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 argument is not convincing.
Second, the applicant appears to argue the claims recite some type of specific, protocol-layer authentication mechanism which should be considered an “additional element” of the claims. However, the claims recite no “protocol-layer authentication mechanism” nor anything that could be considered a protocol-layer authentication mechanism. The claims do recite using standardized protocols such as SMTP Assuming the applicant is referring to the protocol layer. The only recitation of a protocol in the claims is “SMTP”. However, SMTP is not a layer of either the TCP/IP model or the UDP model. Instead, SMTP is a standardized protocol that operates on the Application Layer in both the TCP/IP model or the UDP model. Furthermore, SMTP is a transportation protocol not an authentication mechanism. Other such standardized protocols in the Application Layer include of the TCP/IP model include HTTP, SNMP, DNS, RDP, and Telnet. As such, it is clear that the claims do not recite any new type of protocol or computer networking layer, much less a specific protocol-layer authentication mechanism. The only other limitation in the claim, that one might misconstrue as a protocol, but would be properly referred to as the “mailto” URI Scheme, is a “mailto” hyperlink. The “mailto” URI Scheme was first standardize in the Internet Engineering Task Force (IETF), Request for Comment (RFC) 2368 which was published in July 1998. This initial mailto URI Scheme became obsolete in October 2010 when the IETF publish a new standardized “mailto” URI Scheme in RFC 6068. However, despite the fact that the earliest effective filing date of the instant invention is 14 months after the new standard was published and the standard in RFC 2368 became obsolete, it appears that the “mailto” hyperlinks claimed may be created using the obsolete “mailto” URI Scheme in RFC 2368, according to paragraph 99 of the applicant’s specification. Irrespective of whether the applicant’s invention uses the obsolete “mailto” URI Scheme in RFC 2368 or the “mailto” URI Scheme in RFC 6068, to create the “mailto” hyperlinks, the invention has not created a new type of “mailto” URI scheme that operates in a different manner than the standardized “mailto” URI Scheme. Additionally, a “mailto” URI Scheme is not a protocol-layer authentication mechanism. As such, the claims do not introduce any “additional elements”, whether considered individually or “as a whole”, which would result in an improvement to rooted in the “additional elements” that could overcome a 35 USC 101 rejection under Step 2a, Prong 1 or Step 2b.
Instead, the “additional elements” of the claim are merely used as a tool to apply the abstract idea. As such, assuming in arguendo that claims do recite some type of technical improvement regarding an operative security limitation associated with a specific, protocol-layer authentication mechanism as argued by the applicant, this technical improvement is rooted solely in the abstract idea which is merely applied using the “additional elements” as a tool. Improvements of this nature, even those one might considered technical improvement, are improvements to an abstract idea which are improvements in ineligible subject matter (see 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.). Hence, it is clear that the examiner analysis followed proper USPTO procedure in identifying the limitations of the claim that are part of abstract idea, identifying the additional elements of the claims, analyzing the additional elements of the claim, both individually and “as a whole”, and determining that the claims, as currently written, do not satisfy the requirements under 35 USC 101 As such, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant argues, with respect to the 101 rejection, that the Office Action itself recognizes the technical distinction between mailto “subject=” and “body=”. The examiner disagrees. The distinction between mailto “subject=” and “body=”, identified by the examiner in the office action, is not a technical distinction, but rather directions a standardized “mailto” URI Scheme requirement. When one uses a IETF standard, or any other standard, then they must follow the requirements of said standard, unless they are claiming some new type of standard which they have invented, such as a new “mailto” URI Scheme that operates in a different manner the IETF standards. There is nothing technical about following the directions in a standard. Instead, the claim is merely using the standard in the manner required as a tool to merely implement the abstract idea. The types of data one elects to include in the communication in the standardized way is part of the abstract idea itself which is merely applied using the standard. As such, any improvement obtained by using such data, such as verifying the data, is 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, with regards to the 101 rejections, that the fact that the office action indicate that the claims are allowable of the prior art is proof that the claims are materially constrained to a technical security requirement. The examiner disagrees. Just because an abstract idea cannot be found in the prior art does not make the abstract idea anything other than an improved abstract idea. Improvements of this nature are improvements in ineligible subject matter. Thus, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant argues, with regards to the 101 rejections, that the analysis of “additional elements” are not limited to counting hardware nouns. The examiner agrees. One does not identify “additional elements” by merely counting hardwar nouns. Instead, one identifies whether the claims recite an abstract idea that falls within one of the enumerated bucked, then further identifies the subcategory the claim falls within. Both of which, the examiner has done. In the instant case, the enumerated category was “Certain Methods of Organizing Human Activity”, and the subcategory was “commercial and legal interactions”. The examiner even took the identification further than necessary and identified the sub-subcategory as “advertising, marketing, or sales activities or behaviors”. Once, those steps are performed, an examiner identifies all of the limitations of the claim that are part of performing the, in this case, “advertising, marketing, or sales activities or behaviors”. After which any limitation that is not a part of the abstract idea or is a physical device within the scope of the claim are determined to be “additional elements”. In the instant case, each and every step of the claim is reciting either gathering data, analyzing data, determining results, generating tailored content, and transmitting or displaying the tailored content which are performed so that the “advertising, marketing, or sales activities or behaviors” is realized. The courts have determined that gathering data, analyzing data, determining results, generating tailored content, and transmitting or displaying the tailored content are all parts of an abstract idea that falls within the Certain Methods of Organizing Human Activity bucket. As such, the only additional elements in the instant claim ended up being a general-purpose computer with generic computer components (what the applicant’s argues are hardware) and the standardized “mailto” URI Scheme (which is not hardware). As such, no mere counting of hardware was performed. Instead, the claims were analyzed according to proper USPTO procedure and rejected under 35 USC 101 because they recite an abstract idea which is merely applied using the “additional elements” as tool. Therefore, the applicant’s arguments a moot and the rejections have been maintained.
The applicant’s arguments with regards to the examiner response to the CosmoKey decision is not convincing. The argument appears to be based on a misinterpretation of the meaning of the term “additional elements” with regards to MPEP 2106. In the CosmoKey decision the claims recited a specific arrangement of three different devices each performing significant steps of the abstract idea. It was the arrangement of devices and which parts of the abstract idea each device performed that was considered an improvement that overcame the 35 USC 101 rejection. As such, the improvement was rooted in the “additional elements” of the claim. In contrast, the instant claims recite only a single device upon which the abstract idea is merely being applied. Thus, the instant claims do not recite an arrangement of devices and are incapable of overcoming the 101 rejection in the same manner in which the claims of the CosmoKey decision overcame a 101 rejection. Hence, the applicant’s argument are not convincing and the rejections have been maintained.
The applicant’s argues that the claims should overcome the 35 USC 101 rejection for the same reasons the claims in Ex parte Desjardins overcame the 101 rejection. The examiner strongly disagrees. In the Desjardins decision, the claims recited a new type of machine learning model that did not function in the same manner as traditional machine learning models. According to the decision, the newly invented machine learning model when initially trained is able to be executed based on an initial input to output a specific result. Internally, said new machine learning model always maintains the same state, such that any time the original type of input is run through the model, the manner in which results are output remains the same. This is true even when the new machine learning model is retrained. The retraining does not affect the original algorithm used to provide the original output. Instead, when this new machine model is retrained it determines a new algorithm for providing a different type of output, and the original state from the first training is unchanged. Previously, known machine learning model when trained generate an algorithm for providing the desired output. Then, when these models are retrained using additional data, or tuned using hyperparameters, the machine learning model uses the original data and the new data to change the original algorithm. According the decision, the fact that this was a new type of machine learning model that did not, internally, work in the same manner as traditional machine learning models was supported by the applicant’s disclosure. Thus, the machine learning model was an “additional element” that not a generic machine learning model merely being used as a tool to apply the abstract idea. Instead, if was a newly invented machine learning model that operated in a manner different from traditional machine learning models. In contrast, the claims in the Recentive Analytics decision merely recited using a known machine learning model, training it with specific data, iteratively retraining the known machine learning and/or tuning the hyperparameters of the known machine learning models. The claims in this decision recited an additional element of a generic machine learning model which was merely being used as a tool to apply the abstract idea. According the Recentive Analytics decision a generic machine learning model irrespective of the type of data used to train the model and irrespective of how it is retrained of tuned is still merely a generic machine learning model which is merely applied as a tool to implement an abstract idea. An “additional element” of this type, according to the decision, is incapable of overcoming a 101 rejection under Step 2a, Prong 2, and incapable of being considered “significantly more” under Step 2b. Likewise, the claims of the instant invention do not recite any type of new machine learning model, computer, or “mailto” URI Scheme. As such, the “additional elements” of the instant claims are similar to the “additional elements of the Recentive Analytics decision in that none of the “additional elements” of the claim are used for any purpose other than merely applying the abstract idea. Furthermore, the “additional elements” of the instant claims bear no resemblance to the “additional elements” in the Desjardins decision because the additional elements are either a general-purpose computer or a standard “mailto” URI Scheme, none of which the applicant invented. As such, there is no concern of misconstruing the “additional elements” of instant invention. The applicant’s disclosure specifically states that the “mailto” URI Scheme in RFC 2368 can be used to create the hyperlinks. As such, it is clear that the applicant has not invented a new “mailto” URI scheme. Furthermore, it is clear from the applicant’s disclosure that the applicant has not invented a new type of computer, a new type of processor, a new type of memory, a new type of database, or a new type of network interface. As such, the “additional element” are in fact properly considered a general-purpose computer with generic computer component and a standard “mailto” URI Scheme which are merely used as tools to apply the abstract idea. Hence, the arguments are not convincing and the rejection has been maintained.
Likewise, the applicant’s argument with regard to Ex parte Fautz are not convincing. As properly indicated by the applicant. In Ex parte Fautz, it was the “additional elements” of the claim that provided the improvement that overcame the 101 rejections. In the instant case, there is no improvement rooted in the “additional elements” of the claims. In the Ex parte Fautz decision, the board identified the abstract idea as “a mathematical concept”. As an abstract idea that recites “a mathematical concept” can only include those limitation that recite specific mathematical relationships, specific mathematical formulas or equations, or actual perform mathematical calculations, the board properly included each and every element that is not “a mathematical concept” as an “additional element” of the claims and determined that these “additional elements” resulting in an improvement that overcame the 101 rejections. The requirement that an abstract idea may only include math is specific only to the “Mathematical Concepts” category of abstract idea. Likewise, the requirement that only those steps of an abstract idea which can be performed in the human mind or by paper and pencil is a specific limitation of only abstract ideas that recite “a Mental Process”. However, the instant claims have not been identified as falling within the “Mathematical Concept” bucket or the “Mental Process” bucket. As such, the instant claims are not constrained by such requirements. Claims that recite “Certain Methods of Organizing Human Activity” properly include the actual steps of gathering data, analyzing data, determining results, generating tailored content, and transmitting and/or displaying the tailored content are all properly considered part of the abstract idea itself. As such, the instant claim bear no similarity to the claims in the Ex parte Fautz decision. Thus, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant argues that the claim recite an inventive concept under Step 2b because the authentication-control-packet fields (stored in the database) allow for the gatekeeping logic such as verification and expiration enforcement. The examiner strongly disagrees. Once again, the receiving of the data used in the argued gatekeeping, the stored data in the packets, the verification, and the expiration enforcement as all part of the abstract idea itself. These are not “additional elements” of the claim. As such, they are incapable of being considered “significantly more” under Step 2b. Only “additional elemenents of a claim which recite an inventive concept are capable of being considered “significantly more” under Step 2b. Instead, any inventive concept recited in these limitations is an improvement to an abstract idea which is an improvement in ineligible subject matter. This is made clear on at least page 2, line 22 through page 3, line 13 of the SAP v. Investpic decision where it states that even when the algorithms claimed are groundbreaking, innovative or even brilliant (e.g., have an inventive concept), 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. Hence, the applicant’s argument is not convincing and the rejections have been maintained.
Contrary to the applicant’s assertion otherwise, the examiner has clearly met the USPTO’s burden of establishing ineligibility. The rejection properly analyzes the claims under Step 1, Step 2a, Prong 1, Step 2a, Prong 2 and Step 2b according to proper USPTO and clearly articulated each and every reason why the claims are clearly ineligible. As such, the rejection is proper and the rejection has 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.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/John Van Bramer/Primary Examiner, Art Unit 3622