DETAILED ACTION
Claims 1-20 are presented on 05/28/2025 for examination on merits. Claims 1, 8, and 15 are independent base claims.
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 .
Examiner's Instructions for filing Response to this Office Action
When the Applicant submits amendments regarding to the claims in response the Office Action, the Examiner would appreciate Applicant if a clean copy of the claims is provided to facilitate the prosecution which otherwise requires extra time for editing the marked-up claims from OCR.
Please submit two sets of claims:
Set #1 as in a typical filing which includes indicators for the status of claim and all marked amendments to the claims; and
Set #2 as an appendix to the Arguments/Remarks for a clean version of the claims which has all the markups removed for entry by the Examiner.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of Patent No. US 12,323,406 B2 (USPAT 406).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the Patent contain every element of the claims of the instant
application and as such anticipate the claims of the instant application.
Regarding claim 1, USPAT 406 discloses:
A system comprising:
one or more memories (USPAT 406, CLM. 1: one or more memories); and
one or more processors, communicatively coupled to the one or more memories (USPAT 406, CLM. 1: one or more processors, communicatively coupled to the one or more memories), configured to:
access, via an e-mail server, an e-mail account associated with a user (USPAT 406, CLM. 1: access, via the e-mail server, the e-mail account of the user via the e-mail address and the e-mail password);
identify, based on scanning a subject line or a body of an e-mail message in the e- mail account, an authentication e-mail message that was transmitted to the e-mail account in association with an interaction party, wherein the authentication e-mail message includes a link to authenticate a sign-up with the interaction party (USPAT 406, CLM. 1: identify, …, a sign-up authentication e-mail message that was transmitted to the user in association with a sign-up by the user with the interaction party based on one or more sign-up indicators associated with the sign-up authentication e-mail message, wherein the sign-up authentication e-mail message includes a link to authenticate the sign-up with the interaction party by the user);
transmit, based at least in part on identifying the authentication e-mail message in the e-mail account, a notification to a user device associated with the user, wherein the notification requests confirmation that the user signed up for a service with the interaction party (USPAT 406, CLM. 1: transmit, based at least in part on identifying the sign-up authentication e-mail message in the e-mail account, a pop-up notification to the user device, wherein the pop-up notification requests confirmation from the user that the user signed up for an account with the interaction party);
receive, from the user device and in response to the notification, an input indicating whether or not the user signed up for the service (USPAT 406, CLM. 1: receive, from the user device and in response to the pop-up notification, a user input confirming that the user signed up for the account with the interaction party); and
transmit, via the e-mail server and based on receiving the input, data associated with the input (USPAT 406, CLM. 1: activate [the link] based on receiving the user input, wherein the link is in the sign-up authentication e-mail message, thus the transmitting is via the e-mail server when the link is activated).
Independent claims 8 and 15 are rejected for the same reason as claim 1, because they each recites the same limitations as claim 1 in similar language.
Regarding dependent claims 2-7, 9-14, and 16-20 of the present application, they are obvious variants of the same subject matter as found in the reference application and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-2, 4, 6-9, 11, and 13-16, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Spears (US 20170345003 A1) in view of Custer (US 9704190 B2).
As per claim 1, Spears teaches a system comprising:
one or more memories; and
one or more processors, communicatively coupled to the one or more memories, configured to:
access, via an e-mail server, an e-mail account associated with a user (Spears, the Abstract: access to the user [e-mail] account; par. 0030-0031: confirm the email address to access; the user has provided an email address that the user identifies as his own; the e-mail server is the service provider);
identify, based on scanning a subject line or a body of an e-mail message in the e- mail account (Spears, 0030-0031: asks the user to identify and confirm the email; see par. 0032-0035 for the link and clicking on the link for confirmation, FIG. 3 illustrates a sign-up/registration e-mail message that PayPal sends to the user “John”), an authentication e-mail message that was transmitted to the e-mail account in association with an interaction party, wherein the authentication e-mail message includes a link to authenticate a sign-up with the interaction party (Spears, par. 0030: the service provider informs the user via a message 210, “Thank you for signing up! We have sent an email; par. 0045: the service provider displays the following example instructions 460, “Thank you for signing up.” It is noted that the user receiving the email message 300 may click on the link 320; par. 0035);
However, Spears does not explicitly disclose the steps of transmitting a notification to a user device to get a confirmation of user’s interaction with a service (or an input indicating whether or not the user signed up for the service) and sending data based on receiving the input. This aspect of the claim is identified as a further difference.
In a related art, Custer teaches:
transmit, based at least in part on identifying the authentication e-mail message in the e-mail account, a notification to a user device associated with the user (Custer, col.10, lines 29-37: sends a confirmation request email message to the customer's email address), wherein the notification requests confirmation that the user signed up for a service with the interaction party (Custer, col. 8, 6-30: registration may include entering information such as: name, phone number, payment information, shipping address etc.; send an order confirmation request email directly to the customer (step 314));
receive, from the user device and in response to the notification, an input indicating whether or not the user signed up for the service (Custer, col. 10, lines 40-45: the user receives an e-mail message with input fields … which solicit input from the user to confirm or delete the order. The input fields 815-820 are coded with information to automatically generate confirmation email messages); and
transmit, via the e-mail server and based on receiving the input, data associated with the input (Custer, col. 10, lines 46-62: transmitting the order based on the user input of confirmation; confirmation email message 900 may include a plurality of fields …allowing the user to input response, for example, the customer may enter “confirm”, which may be sent in the email message 900 back to the payment server).
Spears and Custer are analogous art to the claimed invention, because reasonably pertinent to the problem faced by the inventor, which may be in a different field. Thus, it would have been obvious to one of ordinary in the art, before the effective filing date of the claimed invention, to modify Spears’ system with Custer’s teachings of sending a notification to a user device to confirm the user’s action. For this combination, the motivation would have been to improve user interaction that allows confirmation of user’s action.
As per claim 2, the references as combined above teach the system of claim 1, wherein the one or more processors are further configured to:
receive, from the user device, login data associated with the e-mail account (Spears, par. 0058: a login with the correct username and password); and
wherein the one or more processors, to access the e-mail account, are further configured to: access the e-mail account using the login data (Spears, par. 0058 and 0065-0066: a login with the correct username and password; the user an access to the user account).
As per claim 4, the references as combined above teach the system of claim 1, wherein the input is received via an interaction with the notification (Custer, col. 10, lines 16-45: select inputs; col. 11, lines 50-62: for example, the notification may be via an email to the customer's email address).
As per claim 6, the references as combined above teach the system of claim 1, wherein the authentication e-mail message includes a sign-up indicator (Spears, par. 0030: the service provider informs the user via a message 210, “Thank you for signing up! We have sent an email as illustrated in FIG. 2. FIG 3 shows the link to indicate a step to finish the registering; see also par. 0032 and 0035-0037 for details of following the link as a sign-up indicator).
As per claim 7, the references as combined above teach the system of claim 1, wherein the service is an account, a newsletter, or a mailing list (Note that optional limitations are recited here) (Spears, par. 0030-0032: an account registration process; a user registers (or sets up) an account with the service provider; par. 0055: the service is an account [providing] mailing or shipping of goods to the address supplied by the user during account registration.).
Regarding claims 8-9, 11, and 13-14, they are similar to claims 1-2, 4, and 6-7 in terms of recited features, respectively; and thus, claims 8-9, 11, and 13-14 are rejected for the same reasons as discussed there above.
Regarding claims 15-16, 18 and 20, they are similar to claims 1-2, 4, and 6 in terms of recited features, respectively; and thus, claims 15-16, 18 and 20 are rejected for the same reasons as discussed there above.
Claims 3, 10, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Spears and Custer, as applied to claim 1, and further in view of Pitchaimani (US 20190036934 A1; hereinafter “Pitch”).
As per claim 3, the references of Spears and Custer as combined above teach the system of claim 1, but do not explicitly disclose receiving a digital authenticator associated with accessing the e-mail account. This aspect of the claim is identified as a further difference.
In a related art, Pitch teaches:
wherein the one or more processors are further configured to:
receive, from the e-mail server, a digital authenticator associated with accessing the e- mail account (Pitch, par. 0021 and 0036-0038: sending an authentication token from the management server to the user device for e-mail access; note that the authentication token is mapped to the digital authenticator associated with accessing the e- mail account); and
wherein the one or more processors, to access the e-mail account, are further configured to: access the e-mail account using the digital authenticator (Pitch, par. 0036-0037: an authentication token can be sent to the user device 110).
Pitch is analogous art to the claimed invention in the same field of endeavor as the claimed invention, or reasonably pertinent to the problem faced by the inventor, which may be in a different field. Thus, it would have been obvious to one of ordinary in the art, before the effective filing date of the claimed invention, to modify the Spears-Custer system with Pitch’s teachings of using an authentication as a digital authenticator associated with accessing the e- mail account and accessing the e-mail account using the digital authenticator. For this combination, the motivation would have been to improve the level of security with a multi-factor authentication mechanism.
Regarding claims 10 and 17, they are similar to claim 3 in view of the inventive features recited, respectively; and thus, they rejected for the same reasons for claim 3.
Claims 5, 12, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Spears and Custer, as applied to claim 1, and further in view of Krejci (US 20210216618 A1).
As per claim 5, the references of Spears and Custer as combined above teach the system of claim 1, but do not explicitly disclose that in response to the user input, the processors are configured to activate the link included in the e-mail message or send a reply to the authentication e-mail message. This aspect of the claim is identified as a further difference.
In a related art, Krejci teaches:
wherein the one or more processors, to transmit the data associated with the input (Krejci, par. 0016: The user receives the text at her mobile device and activates the link…with the user response and a confirmation of this authentication to the artificial reality device, Krejci’s system allows the user to use the artificial reality device in an authenticated mode [to] perform functions), are configured to:
activate the link included in the e-mail message; or send a reply to the authentication e-mail message (note: optional limitations are recited herein) (Krejci, par. 0016-0017: with the link activation and an authorization record, e.g., by setting a database entry pairing the artificial reality device to the user account, the artificial reality device can activate the user account-specific key; par. 0018: the user receives the email at her laptop. This provides …the URL to the artificial reality device, … the artificial reality device activates by further embedding the artificial reality device's serial number in the URL and accessing the URL. The authentication system then provides confirmation of this authentication to the artificial reality device, allowing the user to use the artificial reality device in an authenticated mode.).
Krejci is analogous art to the claimed invention in the same field of endeavor as the claimed invention, or reasonably pertinent to the problem faced by the inventor, which may be in a different field. Thus, it would have been obvious to one of ordinary in the art, before the effective filing date of the claimed invention, to modify the Spears-Custer system with Krejci’s teachings of allowing the artificial reality device to perform user’s functions after pairing such as activating services. For this combination, the motivation would have been to improve user’s capacities with the help of user authorized interactions.
Regarding claims 12 and 19, they are similar to claim 5 in view of the inventive features recited, respectively; and thus, they rejected for the same reasons.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure as the prior art additionally discloses certain parts of the claim features (See “PTO-892 Notice of Reference Cited”).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DON ZHAO whose telephone number is (571)272.9953. The examiner can normally be reached on Monday to Friday, 7:30 A.M to 5:00 P.M EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carl G Colin can be reached on 571.272.3862. The fax phone number for the organization where this application or proceeding is assigned is 571.273.8300.
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/Don G Zhao/Primary Examiner, Art Unit 2493 10/08/2026
Prosecution Insights