DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/19/2025 has been entered.
Response to Arguments
Applicant’s arguments, see pages 7-12, filed 12/19/2025, with respect to the previously presented claims and corresponding rejection of claims 1-5, 9-13, 16-20 under 35 U.S.C. § 102(a)(1) and claims 6-8 and 14-15 under 35 U.S.C. § 103 have been fully considered and are persuasive. The rejections of the claims under 35 U.S.C. § 102(a)(1) and 103 have been withdrawn in response to the amended independent claims reciting “wherein the authenticator receives a verification token and a verification session ID from the widget in response to the broadcasting of the authentication token, and wherein the authenticator is further executable to provide the widget with access to confidential user account information in response to verifying a first match between the verification token and the authentication token and a second match between the verification session ID and the first session ID” in independent claim 1, “receiving, at the authenticator, a verification token and a verification session ID from the widget in response to the broadcasting of the authentication token; and in response to verifying a match between the verification token and the authentication token and a match between the verification session ID and the first session ID, granting the widget access to confidential account information of the user” in independent claims 9 and 16.
However, the amendments filed 12/19/2025, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. § 112(a) and will be presented below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claims 1, 9, and 16:
Independent claim 1 recites an authenticator configured to operations including “storing an authentication token in association with a first session ID associated with a set of inputs received through the user interface”, “launching a second webpage, the second webpage including: a second iframe populated with the authentication token”, and “broadcasting the authentication token over a broadcast channel associated with the same domain shared by the second URL and the first URL”. Upon further consideration, the limitations in question do not satisfy the written description requirement under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph. The specification does not describe the limitation in sufficient detail so that one of ordinary skill in the art would recognize that the applicant had possession of the claimed invention. The originally filed disclosure is not commensurate with the claim scope including a single authenticator configured to store an authentication token in association with a first session ID “associated with a set of inputs received through the user interface”, and to launch a second webpage. The claim requires an authenticator storing an authentication token, which is broad enough to cover the genus of “storing an authentication token”, but the specification only describes generically the authenticator “generates” the token without disclosure of any algorithm, and then the generated token is stored. The originally filed disclosure does not demonstrate possession of the claim scope of token generation nor storage of the said generated token.
With regard to the limitation, “launching a second webpage, the second webpage including: a second iframe populated with the authentication token”, the specification states that traditional web communications do not permit automatic transmission between different domains and describes a specific cross-frame/Broadcast Channel API workaround (see paragraph [0035]). The claim, however, appears to recite the desired result of populating a second iframe with the token without adequately limiting the only species of cross-domain communication architecture to the disclosed mechanism. As such, the claim is broader than the disclosure adequately supports, “The issue is whether a person skilled in the art would understand the inventor to have invented, and been in possession of, the invention as broadly claimed. In LizardTech, claims to a generic method of making a seamless discrete wavelet transformation (DWT) were held invalid under 35 U.S.C. 112, first paragraph, because the specification taught only one particular method for making a seamless DWT and there was no evidence that the specification contemplated a more generic method. "[T]he description of one method for creating a seamless DWT does not entitle the inventor . . . to claim any and all means for achieving that objective." LizardTech, 424 F.3d at 1346, 76 USPQ2d at 1733” (see MPEP 2161.01 I). The specific cross-domain workaround is not clearly supported because the specification does not technically describe how the authenticator, second webpage, and second iframe communicate across domain boundaries in this manner, even if the claims were amended to recite the cross-domain workaround. The disclosure identifies that the relevant pages reside in different domains and that traditional web communications do not permit automatic transmission across such domains, but it does not provide a sufficient technical explanation of how the token is first rendered in the second webpage (third domain) and then passed (from third domain) into the second iframe (second domain). Accordingly, the specification appears to describe a result without adequately describing the mechanism by which the result is achieved.
Furthermore, the broadcast channel in the claims is drawn to the domain “shared by the second URL and the first URL”, whereas the original specification at paragraphs [0035-0038] and original Figure 2 shows a first webpage in a first domain, a widget and chat window in a second domain, and a second webpage in a third domain, and the broadcast channel API used is in a second domain. The originally filed disclosure is not commensurate with the claimed broadcast channel being associated with the same domain shared by the first and second URL, as the originally filed disclosure shows the broadcast channel API communicating between chat widget and the second iframe.
In MPEP 2161.01, "computer-implemented functional claim language must still be evaluated for sufficient disclosure under the written description". And MPEP 2161.01(I) "generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed." For computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software due to the interrelationship and interdependence of computer hardware and software. The critical inquiry is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.
As in MPEP 2161.01 (I), "The description requirement of the patent statute requires a description of an invention, not an indication of a result that one might achieve if one made that invention." It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015).
AS in MPEP 2161.01 “For instance, generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1349-50, 94 USPQ2d at 1171 ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention' s boundaries.") (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1405-06); Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993) (rejecting the argument that "only similar language in the specification or original claims is necessary to satisfy the written description requirement").”
“The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 "merely by clearly describing one embodiment of the thing claimed." LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346, 76 USPQ2d 1731, 1733 (Fed. Cir. 2005). The issue is whether a person skilled in the art would understand applicant to have invented, and been in possession of, the invention as broadly claimed. In LizardTech, claims to a generic method of making a seamless discrete wavelet transformation (DWT) were held invalid under 35 U.S.C. 112, first paragraph, because the specification taught only one particular method for making a seamless DWT and there was no evidence that the specification contemplated a more generic method. "[T]he description of one method for creating a seamless DWT does not entitle the inventor . . . to claim any and all means for achieving that objective." LizardTech, 424 F.3d at 1346, 76 USPQ2d at 1733.”
Independent claims 9 and 16 recite substantially the same content at issue above, and are therefore rejected under the same rationales.
Respective dependent claims fall together accordingly.
Conclusion
The prior art made of record in the submitted PTO-892 Notice of References Cited and not relied upon is considered pertinent to applicant’s disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MIGUEL A LOPEZ whose telephone number is (703)756-1241. The examiner can normally be reached 8:00AM-5:00PM.
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/M.A.L./ Examiner, Art Unit 2496
/JORGE L ORTIZ CRIADO/Supervisory Patent Examiner, Art Unit 2496
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