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 .
Status of Claims
This is the first office action on the merits in response to the application filed on
01/16/2025.
Claims 1-18 are currently pending and have been examined.
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 1-18 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.
Subject Matter Eligibility Criteria – Step 1:
Claims 1-6 are directed to a method, claims 7-12 are directed to a system, and claims 13-18 is directed an article of manufacture. Therefore, these claims fall within the four statutory categories of invention.
Subject Matter Eligibility Criteria – Step 2A – Prong One:
Regarding Prong One of Step 2A of the Alice/Mayo test, the claim limitations are to be analyzed to determine whether, under their broadest reasonable interpretation, they “recite” a judicial exception or in other words whether a judicial exception is “set forth” or “described” in the claims. MPEP 2106.04(II)(A)(1). An “abstract idea” judicial exception is subject matter that falls within at least one of the following groups: a) certain methods of organizing human activity, b) mental processes, and/or c) mathematical concepts. MPEP 2106.04(a).
Representative independents claims 1, 7, and 13 include limitations that recite at least one abstract idea.
Claims 1, 7, and 13 are directed to the abstract idea of “receiving an email that contains a token for the e-commerce transaction from a sender, wherein the email is generated in response to the sender activating a mailto link that generates the email containing the token; decoding the token to form a decoded token, wherein the decoded token identifies the third party vendor and customer email address; authenticating the sender as the customer based on an email address from which the email is received and the decoded token; performing the e-commerce transaction when the authenticating is successful and the third party vendor is authorized to generate the token for the e-commerce transaction; and transmitting a notification to the third party vendor that indicates that e-commerce transaction was successfully processed.” Under its broadest reasonable interpretation, this claim is performing an e-commerce transaction by using emails containing tokens to verify customers, vendors, and complete purchases, and hence falls under organizing human activity (i.e., as fundamental economic practices).
Dependent Claims:
Claims 2, 8, and 14 recites: wherein the mailto link is included in an offer message that comprises multiple tokens; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claims 3, 9, and 15 recites: wherein each of the multiple tokens is associated with a different offered product; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claims 4, 10, and 16 recites: wherein each of the multiple tokens are associated with a different price; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claims 5, 11, and 17 recites: wherein the mailto link is included on a social media website; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claims 6, 12, and 18 recites: monitoring which of a plurality of tokens are in use; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Subject Matter Eligibility Criteria – Step 2A – Prong Two:
Claim 1, 7, and 13 recites to a generic computer as additional elements to the judicial exception in the preamble. Viewed individually and in combination, this additional element to the identified judicial exception of Step 2A.1, amounts to no more than mere instructions for performing an e-commerce transaction by using emails containing tokens to verify customers, vendors, and complete purchases on a generic computer. Therefore, at Step 2A.2, these additional elements do not act in combination to integrate the abstract idea into a practical application. The additional elements of claims 1, 7, and 13 considered both individually and as an ordered combination, do not amount to significantly more than the judicial exception because the additional element of a generic computer does no more than “[s]imply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.” See MPEP 2106.05 (citing to Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225 (2014)).
Therefore claims 1, 7, and 13 is found ineligible under 35 U.S.C. 101.
Step 2B:
Viewed as a whole, instructions/method claims recite the concept of “organizing human activity” (i.e., as fundamental economic practices) in performing an e-commerce transaction by using emails containing tokens to verify customers, vendors, and complete purchases are performed by a generic computer. The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. See Alice Corp. Pty. Ltd., 573 U.S. 208. Mere instructions to apply the exception using a generic computer component and limitations to a particular field of use or technological environment cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The use of a computer server is 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.
Claim Rejections - 35 USC § 103
5. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Custer et al. (US 9704190 B2), in view of Killoran et al. (US 8775263 B2), and further in view of Dickinson et al. (US 8332922 B2).
7. Regarding claims 1, 7, and 13, Custer discloses a method (a system, and a non-transitory computer readable storage medium storing instructions for improving security in an e-commerce transaction between a third party vendor and a customer using Simple Mail Transfer Protocol (SMTP), (Column 4/line 12)),
comprising: receiving an email that contains a token for the e-commerce transaction from a sender, (Column 2/line 36, 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. The payment server may parse the sender of the message, attempt to find the sender in its database, and, assuming success, it parses the token in a novel decoding process. The first stage in the decoding process may determine the merchant for which this token is valid. In a second stage, after discovery of the merchant, a public key for the merchant is used to decrypt an encrypted portion of the token and then validate the authenticity of the token and provide further instructions for how to process the payment.)
decoding the token to form a decoded token, wherein the decoded token identifies the third party vendor and customer email address, (Column 2/line 46, A payment server may receive the reply email message, including the token that has been submitted by the user's email client. The payment server may parse the sender of the message, attempt to find the sender in its database, and, assuming success, it parses the token in a novel decoding process. The first stage in the decoding process may determine the merchant for which this token is valid. In a second stage, after discovery of the merchant, a public key for the merchant is used to decrypt an encrypted portion of the token and then validate the authenticity of the token and provide further instructions for how to process the payment.
In one embodiment, the methods allow for this feature to “plug in” on any website checkout page such that the user is able to complete the transaction by email. This is a much more desirable method of completing the transaction for mobile users.
authenticating the sender as the customer based on an email address from which the email is received and the decoded token, (Column 2/line 15, A system for leveraging email to complete an online checkout from a customer accessing a third party vendor website is disclosed. The system may store customer information including a name, email address, shipping address, and billing information. 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. The system may authenticate the customer email address. The system may send a first email to the customer email address that requests authorization to complete a purchase. The system may receive a second email, from the customer email address, encoded with the token and confirming or canceling the purchase. The system may authenticate the second email using the customer email address and the token. And the system may transmit a confirmation of the purchase to the third party vendor website…A payment server may receive the reply email message, including the token that has been submitted by the user's email client. The payment server may parse the sender of the message, attempt to find the sender in its database, and, assuming success, it parses the token in a novel decoding process. The first stage in the decoding process may determine the merchant for which this token is valid. In a second stage, after discovery of the merchant, a public key for the merchant is used to decrypt an encrypted portion of the token and then validate the authenticity of the token and provide further instructions for how to process the payment.)
transmitting a notification to the third party vendor that indicates that e-commerce transaction was successfully processed, (Abstract Section, A system for leveraging email to complete an online checkout from a customer accessing a third party vendor website is disclosed. The system may store customer information including a name, email address, shipping address, and billing information. 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. The system may authenticate the customer email address. The system may send a first email to the customer email address that requests authorization to complete a purchase. The system may receive a second email, from the customer email address, encoded with the token and confirming or canceling the purchase. The system may authenticate the second email using the customer email address and the token. And the system may transmit a confirmation of the purchase to the third party vendor website.)
Custer does not explicitly disclose wherein the email is generated in response to the sender activating a mailto link that generates the email containing the token.
However, Killoran teaches wherein the email is generated in response to the sender activating a mailto link that generates the email containing the token, (Column 4/line 4, The message processing module 110 (in conjunction with the email interface module 112) may generate and transmit advertisement email messages to customers that are registered with the e-commerce system 100, such as the user of the customer client device 120. The advertisement email messages may be HyperText Markup Language (HTML) email messages, Rich Text Format (RTF) email messages, and/or may be defined according to any other appropriate format. The advertisement email messages may include Uniform Resource Identifiers (URIs) or hyperlinks that are defined according to the mailto URI scheme. Each mailto URI or hyperlink may describe an email message that may be generated by an email client module (such as the email client module 122) when that URI or hyperlink is selected. The generated message may include a number of parameters that indicate, for example, a product that was advertised in the advertisement email that the customer wishes to purchase. The generated message may then be sent to the e-commerce system 100, and received by the message processing module 110; when the generated message is received by the message processing module 110, the message processing module 110 may then initiate a transaction to purchase the product indicated in the message on behalf of the customer. In such an instance, the message processing module 110 may interact with the order execution module 108 to perform the transaction.)
One of ordinary skill in the art would have recognized that applying the known technique of Custer to the known invention of Killoran 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 mailto link features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the method to include wherein the email is generated in response to the sender activating a mailto link that generates the email containing the token, results in an improved invention because applying said technique ensures that users can complete transactions through emails, thus improving the overall user convenience of the invention.
Custer as modified does not explicitly disclose performing the e-commerce transaction when the authenticating is successful and the third party vendor is authorized to generate the token for the e-commerce transaction.
However, Dickinson teaches performing the e-commerce transaction when the authenticating is successful and the third party vendor is authorized to generate the token for the e-commerce transaction, (Column 9/line 36, At operation 904, a security ticket and claim are extracted from the request. The claim defines a scope of requested access. The ticket includes an expiration and a restriction. The ticket may also include an optional repetition parameter that defines how many times the same ticket may be used. Processing moves from operation 904 to optional operation 906.; and Column 6/line 41, As mentioned previously, role restrictions for third parties may be associated with specific domain names in a web-based service. The first example ticket 652 is associated with the domain name http://accturatecreditinfo.com (a fictional domain name). The ticket has an expiration of 60 seconds and a restriction of contact analysis role only. Thus, the third party assigned with ticket 652 has 60 seconds to perform its process once the ticket is accepted and it can only access the user data at the web-based service for performing contact analysis. The second ticket 654 is associated with the domain name http://productimages.com, which may be a third party provider service for processing product images of a particular business. The ticket has an expiration period of 10 seconds and the restriction is limited product access role. This role may be defined in an access management portion of the web-based service. In addition to the expiration and the restriction, ticket 654 may optionally include a repetition parameter. The repetition parameter may enable third party providers to use their security ticket repeatedly based on a value of the repetition parameter. In the example of FIG. 6, the repetition parameter is set to “No” meaning the ticket is a single use ticket. )
One of ordinary skill in the art would have recognized that applying the known technique of Dickinson to the known invention of Custer 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 mailto link features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the method to include performing the e-commerce transaction when the authenticating is successful and the third party vendor is authorized to generate the token for the e-commerce transaction results in an improved invention because applying said technique ensures that user’s email and token are authenticated to prevent authorized users accessing sensitive data, thus improving the overall user convenience of the invention.
8. Regarding claims 2, 8, and 14, Custer does not explicitly disclose wherein the mailto link is included in an offer message that comprises multiple tokens.
However, Killoran teaches wherein the mailto link is included in an offer message that comprises multiple tokens, (Claim 1. an advertising email message that is addressed to the email address of the customer and that includes a plurality of mailto hyperlinks respectively associated with a plurality of predetermined and mutually different quantities of a specific product, and each mailto hyperlink for generating an order reply email message that includes: a destination address field that indicates an email address of the e-commerce system; and a body field that indicates the identifier of the customer, the identifier of the specific product and the predetermined and mutually different quantity of the specific product; transmitting, by an email server, the advertising email message to the email address of the customer; receiving, by the email server, an order reply email message that indicates an order by the customer for the specific product in the predetermined and mutually different quantity, wherein the order reply email message is responsive to the advertising email message, wherein the order reply email message is addressed to the email address of the e-commerce system, and wherein the order reply email message includes the identifier of the customer, the identifier of the specific product and the mutually different quantity of the specific product; and the at least one processor and the email server performing an order execution procedure based on the order reply email message, wherein the order execution procedure includes purchasing the specific product in the predetermined and mutually different quantity for the customer.)
One of ordinary skill in the art would have recognized that applying the known technique of Custer to the known invention of Killoran 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 mailto link features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the method to include wherein the mailto link is included in an offer message that comprises multiple tokens results in an improved invention because applying said technique allows for the user to have multiple purchase options to be offered through email, thus improving the overall user convenience of the invention.
9. Regarding claims 3, 9, and 15, Custer does not explicitly disclose wherein each of the multiple tokens is associated with a different offered product.
However, Killoran teaches wherein each of the multiple tokens is associated with a different offered product, (Column 1/line 40, A method for use in an e-commerce system may include a database storing information that includes an identifier of a customer, an email address of the customer, and an identifier of a product offered by a vendor. The method may further include at least one processor generating an advertising email message. The advertising email message may be addressed to the email address of the customer, and may include a mailto hyperlink. The mailto hyperlink may include a destination address field that indicates an email address of the e-commerce system, and a body field that indicates an email body that includes the identifier of the customer and the identifier of the product. The method may further include a network interface transmitting the advertising email message, and the network interface receiving an order email message. The order email message may indicate an order by the customer for the product. The order email message may be responsive to the advertising email message, and may be addressed to the email address of the e-commerce system. The body of the order email message may include the identifier of the customer and the identifier of the product. The at least one processor and the network interface may perform an order execution procedure based on the order email message, wherein the order execution procedure includes purchasing the product for the customer.)
One of ordinary skill in the art would have recognized that applying the known technique of Custer to the known invention of Killoran 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 mailto link features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the method to include wherein each of the multiple tokens is associated with a different offered product results in an improved invention because applying said technique ensures that vendors can offer multiple different products at once, thus improving the overall user convenience of the invention.
10. Regarding claims 4, 10, and 16, Custer does not explicitly disclose wherein each of the multiple tokens are associated with a different price.
However, Killoran teaches wherein each of the multiple tokens are associated with a different price, (Claim 1. an advertising email message that is addressed to the email address of the customer and that includes a plurality of mailto hyperlinks respectively associated with a plurality of predetermined and mutually different quantities of a specific product, and each mailto hyperlink for generating an order reply email message that includes: a destination address field that indicates an email address of the e-commerce system; and a body field that indicates the identifier of the customer, the identifier of the specific product and the predetermined and mutually different quantity of the specific product; transmitting, by an email server, the advertising email message to the email address of the customer; receiving, by the email server, an order reply email message that indicates an order by the customer for the specific product in the predetermined and mutually different quantity, wherein the order reply email message is responsive to the advertising email message, wherein the order reply email message is addressed to the email address of the e-commerce system, and wherein the order reply email message includes the identifier of the customer, the identifier of the specific product and the mutually different quantity of the specific product; and the at least one processor and the email server performing an order execution procedure based on the order reply email message, wherein the order execution procedure includes purchasing the specific product in the predetermined and mutually different quantity for the customer.)
One of ordinary skill in the art would have recognized that applying the known technique of Custer to the known invention of Killoran 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 mailto link features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the method to include wherein each of the multiple tokens are associated with a different price results in an improved invention because applying said technique allow users to see and select price options, thus improving the overall user convenience of the invention.
11. Regarding claims 5, 11, and 17, wherein the mailto link is included on a social media website.
However, Killoran teaches wherein the mailto link is included on a social media website,
(Column 3/line 28, The account management module 102 in the e-commerce system 100 may manage data related to accounts for customers and vendors that participate in commerce via the e-commerce system 100. The account management module 102 may be or include, for example, a web application. Vendors may interact with the account management module 102 via a web browser such as the web browser module 134 in the vendor client device 130. As one example, a user of the vendor client device 130 may provide information to the account management module 102 such as: product and pricing information to be used for email advertisements to be sent to customers in email campaigns; email formatting information to be used for email advertisements to be sent to customers; financial information related to bank accounts and/or other types of financial accounts (such as e-Payment accounts such as PayPal accounts) that may be used to received payments from customers of the e-commerce system 100, such as account numbers and/or other identifying information; and/or other information. Customers may register with the e-commerce system 100 by interacting with the account management module 102 via a web browser such as a web browser module (not depicted) in the customer client device 120. A user of the customer client device 120 may provide information to the account management module 102 via the web browser such as: an email address associated with the customer; financial information associated with the customer, such as a credit card information (such as a credit card number and expiration date), and/or other information related to bank accounts and/or other types of financial accounts (such as e-Payment accounts) that may be used to make payments to vendors via the e-commerce system 100; shipping address information; billing address information; preferences regarding which vendors the customer would like to receive email advertisements from; and/or other information. The account management module 102 may, via the database module 104, store information received from the customer client device 120 and/or the vendor client device 130 in the e-commerce database 106. The account management module 102 may also add information to the e-commerce database 106 when customers and vendors register with the e-commerce system 100, such as customer identifiers, vendor identifiers, and other identifying information.)
One of ordinary skill in the art would have recognized that applying the known technique of Custer to the known invention of Killoran 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 social media platforms features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the method to include wherein the mailto link is included on a social media website results in an improved invention because applying said technique ensures that purchases can be initiated through social media as well, thus improving the overall user convenience of the invention.
12. Regarding claims 6, 12, and 18, Custer as modified does not explicitly disclose further comprising: monitoring which of a plurality of tokens are in use.
However, Dickinson teaches further comprising: monitoring which of a plurality of tokens are in use, (Claim 6. wherein the ticket further includes a repetition parameter that defines how many times the ticket may be used to access the user data.; and Column 6/line 50, The second ticket 654 is associated with the domain name http://productimages.com, which may be a third party provider service for processing product images of a particular business. The ticket has an expiration period of 10 seconds and the restriction is limited product access role. This role may be defined in an access management portion of the web-based service. In addition to the expiration and the restriction, ticket 654 may optionally include a repetition parameter. The repetition parameter may enable third party providers to use their security ticket repeatedly based on a value of the repetition parameter. In the example of FIG. 6, the repetition parameter is set to "No" meaning the ticket is a single use ticket. Example ticket 656 is associated with domain name http://analyzeleads.com, which may provide analysis of business leads for a CRM service. The expiration of the ticket is set to 60 minutes with the restriction being "read all leads". Thus, the third party with this ticket may read all business lead data in the CRM service, but not perform any additional access operations. The optional repetition parameter is set to 10 times in this case meaning the third party provider may use the same ticket up to ten times to access the user data.)
One of ordinary skill in the art would have recognized that applying the known technique of Dickinson to the known invention of Custer 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 mailto link features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the method to include further comprising: monitoring which of a plurality of tokens are in use results in an improved invention because applying said technique ensures that the same token is being monitored on its usage to reduce duplicate transactions or fraud, 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.
System And Methods For Facilitating a Secure Transaction at a Non-Financial Institution System (US 20160321625 A1) teaches securely transferring funds over a private network. Receiving transaction data related to a fund transfer including a tokenized financial instrument, providing to a sender financial institution the tokenized financial instrument to enable the sender financial institution to de-tokenize the tokenized financial instrument and identify an account of the sender, receiving a sender private identifier generated by the sender financial institution, providing to the sender financial institution the transfer amount of the fund transfer to enable the sender financial institution to transfer funds, providing a transaction identifier and a recipient private identifier to the recipient financial institution to enable the recipient financial institution to receive an ACH message from the sender financial institution over the ACH network, the ACH message indicating payment from the sender financial institution to the recipient financial institution to perform the fund transfer with funds over the ACH network.
In addition to the foregoing, other aspects are described in the claims, drawings, and text. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Davida L. King whose telephone number is (571) 272-4724. The examiner can normally be reached M-F 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel can be reached on (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.L.K./Examiner, Art Unit 3699
/NEHA PATEL/Supervisory Patent Examiner, Art Unit 3699
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