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 .
Response to Amendment
Applicant's submission filed on 12/30/2025 has been entered. Claim(s) 1,4,6-8,11,13-15,18 and 20-33 is/are pending in the application.
Claim Rejections - 35 USC § 101
1. 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 1,4,6-8,11,13-15,18 and 20-33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim(s) 1 is/are drawn to method (i.e., a process), claim(s) 15 is/are drawn to a system (i.e., a machine/manufacture), and claim(s) 8 is/are drawn to non-transitory computer readable medium (i.e., a machine/manufacture). As such, claims 1, 8, and 15 is/are drawn to one of the statutory categories of invention.
Claims 1,4,6-8,11,13-15,18 and 20-33 are directed to email verification including analyzing the first email to determine whether it matches a prescribed pattern or model;responsive to determining that the first email matches the prescribed pattern or model,preventing the first email from being transmitted to the one or more first recipient email addresses unless the first email is verified as legitimate including placing the first email into a queue or hold for verification; where the first request is not sent to the first sender email address;analyzing the second email to determine whether it matches the prescribed pattern or model;responsive to determining that the second email matches the prescribed pattern or model, preventing the second email from being transmitted to the second one or more recipient email addresses unless the second email is verified as legitimate including placing the second email into a queue or hold for verification; transmitting a second request to verify the second email as being legitimate via a second configured verification method of the one or more configured verification methods, where the second request is not sent to the second sender email address.
Specifically, the claims recite determining, determining, which is grouped within the OR Methods Of Organizing Human Activity and is similar to the concept of (fundamental economic principles or practices including hedging insurance, mitigating risk) OR (commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors business relations) OR (managing personal behavior or relationships or interactions between people including social activities teaching, and following rules or instructions) OR Mental Processes and is similar to the concept of (concepts performed in the human mind (including an observation, evaluation, judgement, opinion) grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)). Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54-55 (January 7, 2019)), the additional element(s) of the claim(s) such as apparatus, non-transitory computer readable storage medium, and a processor merely use(s) a computer as a tool to perform an abstract idea and/or generally link(s) the use of a judicial exception to a particular technological environment. Specifically, the apparatus, non-transitory computer readable storage medium, and a processor perform(s) the steps or functions of storing, receiving, transmitting. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the additional element(s) of using a apparatus, non-transitory computer readable storage medium, and a processor to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of email verification. As discussed above, taking the claim elements separately, the apparatus, non-transitory computer readable storage medium, and a processor perform(s) the steps or functions of storing, receiving, transmitting. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of email verification. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 4,6-7,11,13-14,18 and 20-33 further describe the abstract idea of email verification. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
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 1,4,6-8,11,13-15,18 and 20-33 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-15 of United States Patent 11949641. Although the conflicting claims are not identical, they are not patentably distinct from each other because the patent claims contain every element of the instant application and as such is encompassed by the claims of this instant application. Claims 1,4,6-8,11,13-15,18 and 20-33 of the instant application therefore is/are not patently distinct from the earlier patent claim(s) and as such is/are unpatentable over obvious-type double patenting. A later patent/application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim. “A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. (In re Longi, 759 F.2d at 896,225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus); ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001) (Cf., Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)); In re Van Ornum, 686 F.2d 937, 944, 214 USPQ 761, 767 (CCPA 1982); In re Goodman (CA FC) 29 USPQ2d 2010 (12/3/1993)).
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive.
A. Applicant argues that the claims are not directed to a judicial exception under Step 2A Prong One. As for Step 2A Prong One, of the Abstract idea is directed towards the abstract idea of email verification which is grouped within the Methods Of Organizing Human Activity and is similar to the concept of (fundamental economic principles or practices including hedging insurance, mitigating risk) OR (commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors business relations) OR (managing personal behavior or relationships or interactions between people including social activities teaching, and following rules or instructions) OR Mental Processes and is similar to the concept of (concepts performed in the human mind (including an observation, evaluation, judgement, opinion) grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)). Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
B. Applicant argues that the claims are not directed to a judicial exception under Step 2A Prong Two. As for Step 2A Prong Two, the claim limitations do not include additional elements in the claim that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, and the claim is not more than a drafting effort designed to monopolize the judicial exception and the claim limitation simply describe the abstract idea. The limitation directed to email verification does not add technical improvement to the abstract idea. The recitations to “processor” and “non-transitory computer readable storage medium” perform(s) the steps or functions of receiving, at the email verification system, a first email having a first sender name,a first sender email address, one or more first recipient names, and one or more first recipient email addresses; receiving a second response to the second request that indicates that the second email is not legitimate; and transmitting a second request to verify the second email as being legitimate via a second configured verification method of the one or more configured verification methods, wherein the second configured verification method requests a second receipt of the second request to verify whether the second email is legitimate, wherein the second request is not sent to the second sender email address. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
C. Applicant argues that the claims are not directed to a judicial exception under Step 2B.
As for Step 2B, The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the limitation directed to email verification does not add significantly more to the abstract idea. Furthermore, using well-known computer functions to execute an abstract idea does not constitute significantly more. The recitations to “processor” and “non-transitory computer readable storage medium” are generically recited computer structure. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of email verification. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
The claims in Ex Parte Desjardins were found to improve the functioning of machine learning models. In contrast, the claims are applying existing verifications techniques on a computer. There is no evidence in the specification or claims of the technological advancement such as optimizing computational resource or reducing latency or enhancing security in a non-conventional manner.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and located in the PTO-892 form.
1.Schur, U.S. Patent App 20190205148, teaches systems and methods are provided for providing an intelligent personal assistant as a service. The method includes opening a digital application on an electronic device, connecting one or more third party applications with the digital application within or outside of given trusting levels or authorities, determining one or more tasks to be performed using the one or more third party applications, creating one or more operants/bubbles, wherein each operant/bubble corresponds to at least one of the one or more tasks in specific supply chain sequence, selecting one or more operants/bubbles using the graphical riser interface or smart projections, and running the selected one or more operants/bubbles in a specific supply chain sequence, using the graphical user interface or smart projections, enabling control of the one or more third party applications using the digital application on users best situational channel.
2.Gagnon, U.S. Patent 9177293, teaches a spam filter system and method, for maintaining at least one database of permitted email addresses; automatically communicating with an email server, and selectively downloading and storing email not corresponding to entries in the database; automatically sending a challenge message in response to messages from non-permitted email addresses; if an appropriate response is received to the challenge message, adding the non-permitted email address to the database of permitted email addresses; and automatically restoring downloaded email messages from email addresses which become permitted.
3 .Chasin, U.S. Patent App 20190205148, teaches systems and methods are provided for providing an intelligent personal assistant as a service. The method includes opening a digital application on an electronic device, connecting one or more third party applications with the digital application within or outside of given trusting levels or authorities, determining one or more tasks to be performed using the one or more third party applications, creating one or more operants/bubbles, wherein each operant/bubble corresponds to at least one of the one or more tasks in specific supply chain sequence, selecting one or more operants/bubbles using the graphical riser interface or smart projections, and running the selected one or more operants/bubbles in a specific supply chain sequence, using the graphical user interface or smart projections, enabling control of the one or more third party applications using the digital application on users best situational channel.
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/NINOS DONABED/Primary Patent Examiner, Art Unit 2444