DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 8/8/25.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-14 are currently pending.
Claims 1-14 are rejected as set forth below.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Claim Rejections - 35 U.S.C. § 101
Applicant’s arguments with respect to claim(s) 1, 8 have been fully considered but are not persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is maintained.
Applicant contends the claims fail Step 2A Prong One because the steps required a specifically programmed processing computer system. However, the computer system and its computer-specific functionality are addressed in Prong Two, not Prong One.
Applicant contends the claims include a practical application under Step 2A Prong Two because the Specification discloses input-length validation, HTTP-only secure cookies, SQL-injection prevention, and frame-busting headers, and therefore improves computer functionality in the field of remote voting. The Examiner respectfully disagrees. The disclosure of input-length validation, HTTP-only secure cookies, SQL-injection prevention, and frame-busting headers are not present in the claims.
Claim Rejections - 35 U.S.C. § 112(b)
Applicant’s arguments with respect to claim(s) 1, 8 have been fully considered and are persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is withdrawn.
Claim Rejections - 35 U.S.C. § 103
Applicant’s arguments with respect to claim(s) 1, 8 have been fully considered but are not persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is maintained.
See the 35 USC 112(a) rejection below regarding the cryptographic hash limitations.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 9009062. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the ‘062 claims anticipate the scope of the instant claims.
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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
As per claims 1-14, the claimed invention is directed to an abstract idea without significantly more because:
Claims 1, 8 recites: A computer-implemented method, comprising: receiving, by a specifically programed processing computer system, an electronic voting request to conduct at least one voting; based on the electronic voting request, identifying, by the specifically programed processing computer system, a plurality of users who own one or more shares of at least one issuer on a particular record date; generating, by the specifically programed processing computer system, for each user of the plurality of users, a vote invitation to submit a vote in the at least one voting; wherein the vote invitation comprises a vote control number encoded within the vote invitation; in response to the receiving the vote control number, generating, by the specifically programed processing computer system, a plurality of programmed visual computer screens to allow such respective user to submit the vote.
Under Step 1 of the Section 101 analysis, the claim(s) is/are directed to a system and method, which are statutory categories of invention.
Under Step 2A Prong One of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claimed invention as drafted includes language (see underlined language above) that recites an abstract idea of conducting a voting process for shareholders (a certain method of organizing human activity such as a commercial or legal interactions, e.g. including agreements in the form of contracts, business relations) but for the recitation of additional claim elements. That is, other than reciting implementing the voting process on a computer system and generating a plurality of programmed visual computer screens, nothing in the claim precludes the language from being considered as conducting a voting process for shareholders, i.e. an agreement to vote on a proposal in the form of a contract or legal agreement.
A similar analysis can be applied to dependent claims 2-4, 9-11, which further recite the abstract idea of conducting a voting process for shareholders.
Under Step 2A Prong Two of the 2019 Revised Patent Subject Matter Eligibility Guidance, the additional claim element(s), considered individually, do not apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception and in a manner that integrates the exception into a practical application of the exception. The additional claim elements(s) 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. For example, the voting process is merely implemented on a computer system with basic graphical user interface capabilities.
A similar analysis can be applied to dependent claims 4, 11, which include additional claim elements that merely implement the abstract to a computer system with basic graphical user interface capabilities. In addition, a similar analysis can be applied to dependent claims 5-7, 12-14, which include additional claim elements that generally link the use of the judicial exception to a particular technological environment or field of use of Internet networks communications.
Under Step 2A Prong Two, the additional claim element(s), considered in combination, do not apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception and in a manner that integrates the exception into a practical application of the exception. The combination of elements is no more than the sum of their parts. Unlike the eligible claims in Diehr and Bascom, in which the elements limiting the exception taken together improve a technical field, the instant claim lacks an improvement to the functioning of a computer or to any other technology or technical field.
Under Step 2B, the additional claim element(s), considered individually and in combination, do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself for similar reasons outlined under Step 2A Prong Two.
Claim Rejections - 35 USC § 112(a)
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 1-14 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.
As per claims 1, 8, the limitation “generating a cryptographic hash of the vote control number for each user of the plurality of users, wherein the cryptographic hash is stored within a permission-specific database validating the vote control number based on a determination associated with the cryptographic hash and at least one data point associated with the permission-specific database" fails to comply with the written description requirement. Specifically, the Specification does not disclose the claimed function of generating a cryptographic hash of the voter control number and validating the vote control number based on the cryptographic hash. In fact, the Specification does not mention a cryptographic hash at all. It is noted that encoding is not equivalent to hashing: encoding data is a reversible process whereas hashing data is a one-way process that is irreversible. See MPEP 2163. Applicant is reminded that the written description requirement applies to both original and amended claims. See Ariad Pharmaceuticals Inc. v. Eli Lilly & Co., 94 USPQ2d 1161 (Fed. Cir. 2010): (“Requirement, in 35 U.S.C. §112, to provide separate written description of invention applies to original claims.).
By virtue of their dependence, the dependent claims are similarly rejected.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-3, 5-6, 8-10, 12-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over United States Patent Application Publication No. 20010037234 to Parmasad in view of United States Patent Application Publication No. 20050218224 to Boldin.
As per claims 1, 8, Parmasad teaches:
A computer-implemented method, comprising: receiving, by a specifically programed processing computer system, an electronic voting request to conduct at least one voting; (Fig 1, [0017], “The method of FIG. 1 begins at step 10 where a consent email message is sent to each potential voter as determined by the voting database. Thus, each employee that has electronic access and at least one vote is sent a consent email message.”)
based on the electronic voting request, identifying, by the specifically programed processing computer system, a plurality of users who own one or more shares of at least one issuer on a particular record date; ([0016], “In a particular embodiment, the potential electronic voters may be determined based on a corporate directory that stores the email addresses for the employees based on their names and/or some other unique identifier, such as employee identification (ID) numbers. On a record date associated with the voting operation, the stock options database can be referenced to determine the number of votes (based on number of shares or number of options) that each employee has. This information can be combined with that stored in the corporate directory to generate a voting database that includes the employee name, their email address, and a number of votes associated with each employee.”)
generating, by the specifically programed processing computer system, for each user of the plurality of users, a vote invitation to submit a vote in the at least one voting; ([0017], “The method of FIG. 1 begins at step 10 where a consent email message is sent to each potential voter as determined by the voting database. Thus, each employee that has electronic access and at least one vote is sent a consent email message. The consent email message includes a hyperlink, or URL, to a consent website. Upon receiving the email message, each voter may utilize the hyperlink to access the consent website. Validation as to the identity of the user can take place on the consent website such that the security, confidentiality and integrity of the voting process is preserved.”)
in response to receiving a request from the user to vote, generating, by the specifically programed processing computer system, a plurality of programmed visual computer screens to allow such respective user to submit the vote. ([0028], “Once a voter has been validated at step 18, the voter is provided with a plurality of hyperlinks on the voting website at step 20. The plurality of hyperlinks included on the voting website may include a hyperlink to a voting page, where the voting page is used to collect the votes from each of the validated voters.”)
Parmasad does not explicitly teach, but Boldin teaches:
wherein the vote invitation comprises a vote control number encoded within the vote invitation; ([0015], “The PIN printer and PIN generation device are used by election officials to create and print voter security cards for registered voters wanting to vote in an election. A registered voter must obtain a voter security card prior to using the voting system of the present invention.”; [0020], “The voter security cards include a unique voter number and PIN for each registered voter to log onto the system and vote. In the embodiment of the ballot server offered over the Internet, registered voters would receive a unique URL and PIN to connect to a ballot from the ballot server.”)
in response to the receiving the vote control number, generating, by the specifically programed processing computer system, a plurality of programmed visual computer screens to allow such respective user to submit the vote. ([0020], “In the embodiment of the ballot server offered over the Internet, registered voters would receive a unique URL and PIN to connect to a ballot from the ballot server. The voter would then go through the same interface as in the previous embodiments and casts the ballot with the voting selections stored electronically and sent to the elections office to be recorded and validated electronically.”)
One of ordinary skill in the art would have recognized that applying the known technique of Boldin to the known invention of Parmasad would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such voting features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the vote invitation to include a vote control number, wherein the vote control number allows a voter to submit a vote online, results in an improved invention because applying said technique ensures that a voter is validated via the vote control number, thus improving the overall security of the invention.
As per claims 2, 9, Parmasad teaches:
wherein the vote invitation is based on at least one of the following criteria: i) a security name, ii) a job number, iii) an election date, iv) an election time, v) a CUSIP, vi) at least one class, vii) an account number, viii) a number of shares, ix) a percentage tendered, or x) any combination thereof. ([0016]-[0017], “Note that not all employees may possess stock in the corporation or stock options in the corporation, and as such an additional stock options database may be referenced to further sort the list of employees to which the consent and voting email messages are distributed. On a record date associated with the voting operation, the stock options database can be referenced to determine the number of votes (based on number of shares or number of options) that each employee has. This information can be combined with that stored in the corporate directory to generate a voting database that includes the employee name, their email address, and a number of votes associated with each employee. )
As per claims 3, 10, Boldin teaches:
wherein the vote invitation is based on at least one of the following: i) historical information regarding all instructions for every vote control number, or ii) cumulative information regarding a final instruction for every vote control number. ([0020], The Examiner notes validating a PIN along with the unique voter number/URL is equivalent to cumulative information regarding a final instruction for every vote control number.)
As per claims 5, 12, Boldin teaches:
wherein the vote invitation comprises at least one URL encoded with the vote control number. ([0015], [0020])
As per claims 6, 13, Boldin teaches:
receiving the vote control number in response to an activation, by such respective user, the at least one URL encoded with the vote control number. ([0015], [0020])
Claims 4, 11 are rejected under 35 U.S.C. 103(a) as being unpatentable over United States Patent Application Publication No. 20010037234 to Parmasad in view of United States Patent Application Publication No. 20050218224 to Boldin, and further in view of United States Patent Application Publication No. 20030062408 to Barmettler.
As per claims 4, 11, Parmasad as modified does not explicitly teach, but Barmettler teaches:
wherein the plurality of programmed visual computer screens are further configured to at least: generate at least one error message when at least one submission of such respective user violates at least one pre-determined vote rule, at least one pre-determined vote calculation, or both. ([0040], “Associated with each of the contests 103 is a selection 233. Note that a selection 233 may include an invalidity indicator 236 in cases where the voter selections on the ballot 100 (FIG. 1) violate the rules for that contest 103. Also, "error" tags may be employed that indicate an error was made. Such may be the case, for example, when a voter votes for more than the allowed number of selections 233 in a given contest 103.”)
One of ordinary skill in the art would have recognized that applying the known technique of Barmettler to the known invention of Parmasad as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such voting features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to generate at least one error message when at least one submission of such respective user violates at least one pre-determined vote rule, at least one pre-determined vote calculation, or both, results in an improved invention because applying said technique ensures that the pending vote is validated before submission, thus improving the overall reliability of the invention.
Claims 7, 14 are rejected under 35 U.S.C. 103(a) as being unpatentable over United States Patent Application Publication No. 20010037234 to Parmasad in view of United States Patent Application Publication No. 20050218224 to Boldin, and further in view of United States Patent Application Publication No. 20080296375 to Haas.
As per claims 7, 14, Parmasad as modified does not explicitly teach, but Haas teaches:
wherein the vote invitation comprises at least one visual presentation code encoded with the vote control number. ([0023], “The DPM 50 includes a two-dimensional barcode 55, which may be, for example, a Data Matrix Symbol. As described elsewhere herein, the two dimensional barcode 55 has encoded therein, in binary form (a bit string), certain information items which may include, without limitation, the paid postage amount, the date and time the indicium was generated, the identification number and the ascending register value of the postage meter used to generate the indicium.”; [0027], “Referring to FIG. 9, the method begins at step 100, wherein a plurality of outgoing envelopes 60 with return envelopes 5 and ballots 30 provided therein are prepared by the voting authority. This step will include the generation and printing of the DPM 50 (including the barcode 55) for each return envelope 5 using a suitable postage metering device.”)
One of ordinary skill in the art would have recognized that applying the known technique of Haas to the known invention of Parmasad as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such voting features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the vote invitation so it is comprised of at least one visual presentation code encoded with the vote control number results in an improved invention because applying said technique ensures that sensitive information such as the vote control number is protected, thus improving the overall security of the invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication No. 20100049647 to De Chabris discloses a tradable security comprising a voting right associated with an underlying financial security and an instrument for permitting at least said voting right to be separated from at least some residual rights in the underlying financial security to create a voting right security wherein the ownership and control of the voting right security is tradable separate from the residual rights in the underlying security to permit a value of said voting right security to be established in an open market. In another aspect the invention is directed to a method of creating such a voting right security. In another aspect the invention is directed to a method of clearing and setting trades of the voting right security. In another aspect the invention is directed to a method of creating an index from the voting right security.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY HUANG whose telephone number is (408)918-9799. The examiner can normally be reached 9:00a - 5:30p PT.
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/JAY HUANG/Primary Examiner, Art Unit 3619