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 .
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 21, 26, 28, 33, 35, and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 10 of U.S. Patent No. 12045808. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim term "code" is broader than the narrower term "token" in the patented claims and it would be obvious for code to also mean token, which is further claimed in the dependent claims. Additionally, the ‘808 fails to recite the steps are performed via a browser extension application, but Anderson 2015/0052061 teaches a plug-in software application that operates in the context of a browser ([0069], [0074]) and would have been obvious to one having ordinary skill in the part to improve the system of ‘808 to operate with a web browser.
Claims 21, 26, 28, 33, 35, and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 9 of U.S. Patent No. 11687918. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim term "code" is broader than the narrower term "secure token" in the patented claims and it would be obvious for code to also mean secure token, which is further claimed in the dependent claims. Additionally, the ‘918 fails to recite the steps are performed via a browser extension application, but Anderson 2015/0052061 teaches a plug-in software application that operates in the context of a browser ([0069], [0074]) and would have been obvious to one having ordinary skill in the part to improve the system of ‘918 to operate with a web browser.
Claims 21, 26, 28, 33, 35, and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 9 of U.S. Patent No. 10956902. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim term "code" is broader than the narrower term "secure token" in the patented claims and it would be obvious for code to also mean secure token, which is further claimed in the dependent claims. Additionally, the patented claims are narrower than the current claims, but contain all the limitations of the patented claims. Additionally, the ‘902 fails to recite the steps are performed via a browser extension application, but Anderson 2015/0052061 teaches a plug-in software application that operates in the context of a browser ([0069], [0074]) and would have been obvious to one having ordinary skill in the part to improve the system of ‘902 to operate with a web browser.
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 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. Claims 21, 28, and 35 recite “a code” and “the code” in the claim limitations. The specification does not contain a disclosure for the term "a code" but does disclose the narrower term "token". The Examiner has interpreted “code” to mean a token for the purposes of compact prosecution.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21-25, 28-32, and 35-39 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 21, 28, and 35 recite “a code” and “the code” in the claim limitations. It is unclear if “code” refers to a code similar to a one-time code or limited use code or if “code” refers to the broader definition of “computer code” which would be any type of digital data. The specification does not contain a disclosure for the term "a code" but does disclose the narrower term "token". Accordingly, the claims are vague and indefinite. The Examiner has interpreted “code” to mean a token for the purposes of compact prosecution.
Dependent claims 22-25, 29-32, and 36-39 are rejected under 35 USC 112(b) due to their dependencies from claims 21, 28, and 35, respectively.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 21-40 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Anderson US 2015/0052061.
As per claim 21:
Anderson discloses a system comprising: a processor; and a non-transitory computer-readable medium having instructions recorded thereon that, when executed by the processor, causes operations comprising: detecting a web page displayed in a browser with a browser extension application, the web page being associated with a merchant system and including a field requiring population (¶¶ [0074]-[0078]);
detecting, via the browser extension application, the field requiring population (¶¶ [0074]-[0078], browser widget reads on browser extension under BRI);
providing, to a server system via the browser extension application, an indication of the field requiring population (Fig 3B, ¶¶ [0076]-[0078], see also Figs 5F&G);
receiving, from the server system via the browser extension application, a code related to the field requiring population (Fig 3B, ¶¶ [0076]-[0078], see also Figs 5F&G); and
automatically submitting, via the browser extension application, the code in the field (Fig 3B, ¶¶ [0076]-[0078], see also Figs 5F&G, Fig 5E).
As per claim 22:
Anderson further discloses the system of claim 21, wherein the operations further comprise: overlaying, via the browser extension application, a prompt over the web page, the prompt requesting a user to confirm the field requiring population should be populated (¶¶ [0117], [0118], [0120], Figs 5C-E); and
receiving user confirmation via the prompt, wherein automatically submitting the code in the field is in response to receiving the user confirmation (Fig 5E ¶ [0118]).
As per claim 23:
Anderson further discloses the system of claim 22, wherein the prompt comprises one or more buttons for selection (Fig 5E ¶ [0118]).
As per claim 24:
Anderson further discloses the system of claim 23, wherein a first button of the one or more buttons is associated with confirming the field requiring population should be populated (Fig 5E ¶ [0118]).
As per claim 25:
Anderson further discloses the system of claim 24, wherein a second button of the one or more buttons is associated with declining populating the field (Fig 5E ¶ [0118]).
As per claim 26:
Anderson further discloses the system of claim 21, wherein the code is a token (¶¶ [0076]-[0077]).
As per claim 27:
Anderson further discloses the system of claim 21, wherein the code is an unsecured token (¶¶ [0076]-[0077]).
As per claims 28-34 and 35-40:
Claims 28-34 and 35-40 are rejected under the rationales of claims 21-27, respectively.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Boodman US 8,650,481 Goodman US 2005/0257148 Light US 6192380 Hammad US 8893967 Grigsby, Jason; “Autofill: What web devs should know, but don’t”19 May 2016, Cloudfour, https://clourfour.com/thinks/autofill-what-web-devs-should-know-but-dont/, accessed 10 January 2023
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P SHARVIN whose telephone number is (571)272-9863. The examiner can normally be reached M-F 9 am - 5 pm EST.
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/DAVID P. SHARVIN/
Primary Examiner
Art Unit 3692
/DAVID P SHARVIN/Primary Examiner, Art Unit 3692