DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s response/application filed on 01/16/2025.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the pre-AIA first to invent provisions.
Status of Claims
Claims 1-14 are currently pending and have been examined.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1-10, 11, 12, 13, 14 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1-10, 12, 13, 11, 14 of prior U.S. Patent No. 12248931, respectively. This is a statutory double patenting rejection.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claim(s) 1-4, 6-9, and 11 is/are rejected under pre-AIA 35 U.S.C. 102(a) as being anticipated by Custer (US 20140222624).
Regarding claim 1, 6 and 11, Custer discloses:
transmitting a request to perform a transaction to a server, wherein the request identifies a user e-mail address of a registered user (By disclosing, “The system may receive a request for a purchase from the third party vendor including a customer email address and an item to be purchased.” ([0008] of Custer));
receiving a mailto link from the server, wherein the mailto link is generated based on a determination of whether the registered user has authorized the server to perform the transaction; displaying the mailto link wherein the mailto link when activated generates an e- mail message that is sent to the server and contains a token for the transaction; (By disclosing, “With the email based payment system, a customer has the option of completing a transaction and making a payment using one or more emails. The customer receives an email message that contains a mailto: hyperlink and predefined body. The body of the email message may include a button graphic embedded with code that the customer may click when selecting their payment amount or item to purchase. By selecting the button, a reply email message may be generated confirming or cancelling the purchase. The reply email message may include a token. A payment server may receive the reply email message, including the token that has been submitted by the user's email client.” ([0010]-[0011] of Custer));
receiving a confirmation message from server, wherein the confirmation message is generated in response to the server successfully completing the transaction based on the token contained in the e-mail message received by the server; and displaying an indication that the transaction was successfully completed by the server in response to the confirmation message.
(By disclosing, “The customer, through the email client 1182, may send a response email that confirms, cancels or modifies the order to the e-commerce system 1186 (step 1108). This email is embedded with a token. The e-commerce system 1186 receives the email, decodes the token, authenticates the sender, and processes the order (step 1110). The e-commerce system 1186 may then send a notification of the transaction to the vendor website 1184 (step 1112). The e-commerce system 1186 may also notify the customer of the transaction, based on the customer's notification settings. For example, the notification may be via an email to the customer's email address, or for security reasons it may be to another email address, or by SMS, MMS, or any other electronic medium.” ([0083] of Custer)).
Additionally, regarding claim 6, Custer discloses:
a memory that stores customer information; a communication interface that is communicatively coupled to a server via the e- commerce network; a processor that is communicatively coupled to the memory and the communication interface ([0037]-[0041] of Custer).
Additionally, regarding claim 11, Custer discloses:
a non-transitory computer-readable storage medium storing instructions for improving security of an e-commerce network using Simple Mail Transfer Protocol (SMTP). ([0088] of Custer).
Regarding claim 2 and 7, Custer discloses:
wherein the token is an encrypted string and is embedded in the e-mail message (By disclosing, “Tokens may be encrypted strings which contain information to perform a transaction when sent to the payment server(s) 140.” ([0041] of Custer)).
Regarding claim 3 and 8, Custer discloses:
wherein the method is performed by a vendor server that hosts an online retail website ([0005]-[0006] of Custer).
Regarding claim 4 and 9, Custer discloses:
wherein the method is performed by a vendor server that hosts a non-profit organization and the transaction includes at least one item to be purchased or a donation to the non-profit organization (By disclosing, “ This vendor may present a web page, such as a retail store, a site that sells services, or a charity or non-profit soliciting donations.” ([0066] of Custer)).
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 negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 5 and 10 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Custer (US 20140222624) as applied to claim 1-4, 6-9, and 11 above, and further in view of Bushold (US 20040230481).
Regarding claim 5 and 10, Custer does not disclose, but Bushold teaches:
wherein the confirmation message is received using an application programming interface (API). (By disclosing, “The API 206 is adapted to receive the vendor purchase confirmation 218 based on the shadow credit card and provide the received confirmation 218 to the GUI 204.” ([0034] of Bushold)).
Therefore, it would have been obvious to one of ordinary skill in the art at the invention was made to modify the Custer in view of Bushold to use an application programming interface to receive confirmation message. Doing so would result in an improved invention because this would leverage the advantages of using API (e.g. streamlining workflows via automation, improving customer experiences, allowing scalability, etc.).
Claims 12, 13, 14 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Custer (US 20140222624) as applied to claim 1-4, 6-9, and 11 above, and further in view of Risher (US 20090210501).
Regarding claim 12, 13, and 14, Custer does not disclose, but Risher teaches:
wherein the server completes the transaction by: performing a validation of a sender address by using at least one of DomainKeys Identified Mail (DKIM) and Sender Policy Framework (SPF) wherein the sender address is an address from which the e-mail message is received. (By disclosing, “"DK/DKIM message authentication," refer to any of a variety of message sender authentication systems, such as DomainKeys, Domain Keys Identified Mail, and those derived therefrom, that are configured to authenticate a message sender based, in part, on a sender domain. In one embodiment, such terms further include use of similar message sender authentication systems such as Sender Policy
Framework, or the like, and those derived therefrom. ([0018], Abstract, [0081] of Risher)).
Therefore, it would have been obvious to one of ordinary skill in the art at the invention was made to modify the Custer in view of RIsher to use performing a validation of a sender address by using at least one of DomainKeys Identified Mail (DKIM) and Sender Policy Framework (SPF) wherein the sender address is an address from which the e-mail message is received. Doing so would result in an improved invention because this would improve the security by detecting fake email addresses.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
GB 2474661 to Evans for disclosing including an authorization code in a mailto mail.
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/DUAN ZHANG/Primary Examiner, Art Unit 3699