Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This action is in response to the Request for Continued Examination filed 10/6/2025. Claims 1-20, 23-24, 26, 37 have been canceled. Claims 21-22, 25, 27-36, 38-40 are pending and have been considered below.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/6/2025 has been entered.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 21, 28 and 35 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1 of U.S. Patent No. 9,842,144 B2.
Instant Application 15/832,809
US Patent 9,842,144 B2
21. A method, comprising:
storing, on a first computing device, profile data, the profile data including a profile for each of a plurality of persons, the profile data related to persons used in messages sent to or from the first computing device;
querying, over a network, a social networking server using a communication address of a sender of a first message to obtain first information associated with the sender, the first information including at least one of an email address, phone number, or instant messaging identifier belonging to the sender and a link to a website provided by a remote computing device;
obtaining, over a network, content by accessing the website and using the at least one of an email address, phone number, or instant messaging identifier belonging to the sender as search criteria to identify third information included in a webpage hosted by the website, wherein the third information comprises additional contact information belonging to the sender;
updating the profile data using the third information; and
sending, over the network, the third information to the social network server.
Claim 1.
a. storing, on a user terminal, first profile data, the first profile data including a profile for each of a plurality of persons, the first profile data related to persons used in messages to or from the user terminal, and
b. the first profile data comprising information extracted from bodies of the messages; querying, over a network, a social network server using information extracted from a body of a first message of the messages to obtain first information;
c. querying, over a network, a first computing device using the information extracted from the body of the first message to obtain second information;
d. storing the first information and the second information as part of the first profile data;
e. after storing the first information and the second information, querying, over a network, a second computing device using the first information and the second information as search criteria to obtain third information;
f. updating the first profile data using the third information
Both of the instant claims and the claims of U.S. Patent 9,842,155 B2 are directed to extracting information form a communication from a sending user (sender) to a receiving user (receiver). The extracted information includes information about the sender and can be used to identify other information on remote social network, with the difference being that the claims of U.S. Patent 9,842,155 B2 disclose using first and second information to search for and identify third information, while the instant claims disclose using contact information in first information to search for and identify third information. The differences are not enough to overcome an obviousness double-patenting rejection.
Claims 28 and 35 of the instant application include similar limitations as Claim 21 and are similarly rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1 of U.S. Patent No. 9,842,144 B2.
Note: Claim 40 of the instant application includes the limitations of Claims 11 and 12 of US Patent 9,842,144 B2, but cannot be rejected on the ground of nonstatutory double patenting over either of Claim 11 or Claim 12 because Claim 40 includes the limitations of both claims.
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 negatived by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim(s) 21, 22, 24-39 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Brezina et al. (US 2009/0030872 A1) in view of Newstadt et al. (US 9,613,382 B1).
Claims 1-20. (Canceled)
Claim 21. Brezina discloses a method, comprising:
storing, on a first computing device, profile data, the profile data including a profile for each of a plurality of persons, display a profile containing information about communications to, from and involving a contact of a user (P. 0013) or a plurality of profiles (P. 0022) stored locally external to an email client, instant message client or other communication client (P. 0135) or stored remotely (P. 0136),
the profile data related to persons used in messages sent to or from the first computing device, display a profile containing information about communications to, from and involving a contact of a user (P. 0013);
querying, over a network, a social networking server using a communication address of a sender of a first message to obtain first information associated with the sender, a user selects an email in the user’s inbox and profile information related to the sender of the email is displayed (P. 0023) including name, screen names, social network profile names, social network profile URLs, physical addresses, website URLs, and a contact network of the sender (P. 0024) and the system can search a social network based on the sender’s email address to identify a profile page of the sender, and contacts that are publicly listed on the social network profile page can be listed in the contact network of the sender (P. 0032) The sender’s email (communication) address is used to obtain a profile page, including contacts’ information, and a contact network of a sender, the first information is analogous to the profile information, including information on contacts, of the sender;
the first information including … a link to a website provided by a remote computing device, the sender’s profile includes name, screen names, social network profile names, social network profile URLs, physical addresses, website URLs, and a contact network of the sender (P. 0024) the system can search a social network based on the sender’s email address to identify a profile page of the sender, and contacts’ info that are publicly listed on the social network profile page can be listed in the contact network of the sender (P. 0032);
obtaining, over a network, content by accessing the website and using the at least one of an email address, phone number, or instant messaging identifier belonging to the sender as search criteria to identify third information included in a webpage hosted by the website, wherein the third information comprises additional contact information belonging to the sender, the information related to the user further includes info of the contacts of the sender, including names, screen names, nick names, employee numbers, social network profile names, social network profile URLs, telephone numbers, website URLs, or any combination of these (P. 0027) the system can search a social network based on the sender’s email address to identify a profile page of the sender, and contacts that are publicly listed on the social network profile page can be listed in the contact network of the sender (P. 0032) the second computer can receive an e-mail sent by the first user containing a social network profile name for the first user from the first computer and the second computer can extract this social network profile name from the e-mail and use it to access a social network webpage (P. 0133) The search is performed using the sender’s email address, information in the profile for the sender that includes the sender’s contacts’ information is identified, which is the same types of contact information provided for the user;
updating the profile data using the third information, the retrieved information is added to the sender’s contact network (P. 0032).
Brezina does not disclose the first information including at least one of an email address, phone number, or instant messaging identifier belonging to the sender, as disclosed in the claims. In the same field of invention, Newstadt discloses a computing device communicates with a first online community and a second online community via a network (C. 4, L. 48-50) a computing device uses login information to access a first online community and obtain information from the first user account (C. 9, L. 10-14) the computing device accesses a second online community using login information and modifies the second user account based on the information obtained from the first user account (C. 9, L. 16-21) the computing device modifies the first account based on information obtained from the second user account (C. 9, L. 23-27) obtaining contact information for a second user account wherein the contact information includes an email address, a phone number, and an instant-messaging address (Claims 1 and 7). The information obtained from the second user account includes an email address, a phone number and an instant messaging address of a contact of the user. Therefore, considering the teachings of Brezina and Newstadt, it would have been obvious to one having ordinary skill in the art at the time of the invention to combine the first information including at least one of an email address, phone number, or instant messaging identifier belonging to the sender with the teachings of Brezina. One would have been motivated to combine obtaining, over a network, content by accessing the website and using the contact information of the sender as search criteria … with the teachings of Brezina in order to synchronize different accounts of a user that may contain different information to simplify the process of viewing a user’s information spread across multiple accounts (Newstadt: C. 1, L. 22-32, C. 1, L. 36-52).
Brezina does not disclose sending, over the network, the third information to the social network server, as disclosed in the claims. However, in the same field of invention, Newstadt discloses a computing device communicates with a first online community and a second online community via a network (C. 4, L. 48-50) a computing device uses login information to access a first online community and obtain information from the first user account (C. 9, L. 10-14) the computing device accesses a second online community using login information and modifies the second user account based on the information obtained from the first user account (C. 9, L. 16-21) the computing device modifies the first account based on information obtained from the second user account (C. 9, L. 23-27). Therefore, considering the teachings of Brezina and Newstadt, it would have been obvious to one having ordinary skill in the art at the time of the invention to combine sending, over the network, the third information to the social network server with the teachings of Brezina and Newstadt. One would have been motivated to combine sending, over the network, the third information to the social network server with the teachings of Brezina and Newstadt in order to synchronize different accounts of a user that may contain different information to simplify the process of viewing a user’s information spread across multiple accounts (Newstadt: C. 1, L. 22-32, C. 1, L. 36-52).
Claim 22. Brezina and Newstadt disclose the method of claim 21, and Brezina discloses a search is performed and returns webpages containing information related to the user (contacts) and then the person associated with the webpage is added as a contact of the user performing the search (P. 0033) the links to the additional social network profiles are listed as part of the attachment profile (P. 0134) Again, the webpages containing contact information and the links to additional social network profiles each serves as the first information, and in each case, this information is saved prior to accessing the links; the embodiment directed to the webpages and the embodiment directed to the links are combined using Newstadt. Therefore, considering the teachings of Brezina and Newstadt, it would have been obvious to one having ordinary skill in the art at the time of the invention to combine the querying the remote computing device is performed after the storing the first information with the teachings of Brezina and Newstadt. One would have been motivated to combine the querying the remote computing device is performed after the storing the first information with the teachings of Brezina and Newstadt in order to synchronize different accounts of a user that may contain different information to simplify the process of viewing a user’s information spread across multiple accounts (Newstadt: C. 1, L. 22-32, C. 1, L. 36-52).
Claim 23. Canceled.
Claim 24. canceled.
Claim 25. Brezina and Newstadt disclose the method of claim 21, and Brezina further discloses the communication address of the sender comprises a domain, and the querying the social network server device comprises using the domain as search criteria, the extracted information is an email address of a sender (P. 0033) the e-mail can contain a social network profile name for the first user, the computer extracts this social network profile name from the e-mail and uses it to access a social network webpage (P. 0133). The embodiments described in P. 0033 and 0133 are combined using the combination of Newstadt with Brezina.
Claim 26. canceled.
Claim 27. Brezina and Newstadt disclose the method of claim 21, and Brezina further discloses ranking each of the plurality of persons using the updated profile data; and synchronizing, using the ranking, data among different computing devices of a user, the different computing devices including the first computing device, the profile can display additional contact information such as name, screen names, social network profile names, social network profile URLs, physical addresses, website URLs (P. 0024) and company website profile (P. 0031), ranking contacts of a user based on total volume of communication, volume of communication over a period of time, length of communications, importance level of communications, types of communications, contents of communications, time of communications; methods by which the contacts were determined to be associated with the sender, or any combination of these (P. 0035) giving a higher ranking to contacts associated with business communications than contacts associated with social communications (P. 0036) where each contact of a user has a profile (P. 0038, see also Paragraphs 0059 and 0061), adding a person’s (contact’s) email, phone number to the person’s profile (P. 0055) telephone number, facsimile number, and screen name can be added to a person’s profile (P. 0056) social network profile URL and social network screen name can be added to a person’s profile (P. 0059), contact information can be extracted from a shared network drive or through a secure connection. In some implementations, contact information can be automatically shared between systems (P. 0063) In Paragraph 0059, the person is associated with a social network URL whereas, in Paragraph 0061, the person is associated with a company (business) domain, each of the social network URL and the company domain necessarily tied to server computers, therefore, applying the rankings of Paragraph 0036 would rank the company (business) system over the social network system; furthermore, since ranking is based on various types of information listed above and this information can be added to a person’s profile, when information is added to a person’s profile, the ranking would be applied to the added information; therefore, the data from the different devices, i.e. social network or company system, would be synchronized.
Claim(s) 28, 29 is/are directed to non-transitory machine readable storage medium (embodying instructions) claim(s) similar to the method claim(s) of Claim(s) 21, 22 and is/are rejected with the same rationale.
Claim 30. Brezina and Newstadt disclose the non-transitory machine readable storage medium of claim 28, and Brezina further discloses the profile data is stored on the computing device, profile data is storedf locally external to an email client, instant message client or other communication client (P. 0135).
Claim 31. Brezina and Newstadt disclose the non-transitory machine readable storage medium of claim 28, and Brezina further discloses the persons used in messages to or from the user comprise a person that is identified in a body of the first message, extracting an email address from an email or attachment to an email (P. 0057), information that is extracted from communications with the person can also be used as search criteria (P. 0070), information from communications and attached files that can be used as search criteria include names or other identifiers of persons who were listed as senders or recipients on communications to which the files were attached (P. 0130).
Claim 32. Brezina and Newstadt disclose the non-transitory machine readable storage medium of claim 28, and Brezina further discloses the first search is performed in response to the computing device receiving the first message, the social networking web site is accessed from the social network profile name included in the email from the sender (P. 0133). The embodiments described in P. 0033 and 0133 are combined using the combination of Newstadt with Brezina.
Claim 33. Brezina and Newstadt disclose the non-transitory machine readable storage medium of claim 28, and Brezina further discloses the first information comprises at least one of, a social network name, an electronic address, or a telephone number, the social networking profile name included in the email and the social networking web site is accessed (P. 0133). The embodiments described in P. 0033 and 0133 are combined using the combination of Newstadt with Brezina
Claim 34. Brezina and Newstadt disclose the non-transitory machine readable storage medium of Claim 28, and Brezina further discloses the profile data comprises at least one of a photo, a phone number, or an electronic address, the returned data is the URL to the person’s social network profile as well as the person’s name and email addresses and phone numbers (P. 0059).
Claim(s) 35 is/are directed to system (comprising: at least one processor; and memory storing instructions configured to instruct the at least one processor) claim(s) similar to the non-transitory machine readable storage medium claim(s) of Claim(s) 28 and is/are rejected with the same rationale.
Claim 36. Brezina and Newstadt disclose the system of claim 35, and Brezina further discloses the instructions are further configured to instruct the at least one processor to: rank each of the plurality of persons using the updated profile data; and synchronize, using the ranking, data among different computing devices of the user, the different computing devices including the first computing device, the profile can display additional contact information such as name, screen names, social network profile names, social network profile URLs, physical addresses, website URLs (P. 0024) and company website profile (P. 0031), ranking contacts of a user based on total volume of communication, volume of communication over a period of time, length of communications, importance level of communications, types of communications, contents of communications, time of communications; methods by which the contacts were determined to be associated with the sender, or any combination of these (P. 0035) giving a higher ranking to contacts associated with business communications than contacts associated with social communications (P. 0036) where each contact of a user has a profile (P. 0038, see also Paragraphs 0059 and 0061), adding a person’s (contact’s) email, phone number to the person’s profile (P. 0055) telephone number, facsimile number, and screen name can be added to a person’s profile (P. 0056) social network profile URL and social network screen name can be added to a person’s profile (P. 0059), contact information can be extracted from a shared network drive or through a secure connection. In some implementations, contact information can be automatically shared between systems (P. 0063) In Paragraph 0059, the person is associated with a social network URL whereas, in Paragraph 0061, the person is associated with a company (business) domain, each of the social network URL and the company domain necessarily tied to server computers, therefore, applying the rankings of Paragraph 0036 would rank the company (business) system over the social network system; furthermore, since ranking is based on various types of information listed above and this information can be added to a person’s profile, when information is added to a person’s profile, the ranking would be applied to the added information; therefore, the data from the different devices, i.e. social network or company system, would be synchronized.
Claim 37. Canceled.
Claim 38. Brezina and Newstadt disclose the system of claim 35, and Brezina further discloses an electronic communication address of a sender of the first message comprises a domain, and the search criteria for the first search comprises the domain, the extracted information is an email address of a sender (P. 0033) the e-mail can contain a social network profile name for the first user, the computer extracts this social network profile name from the e-mail and uses it to access a social network webpage (P. 0133). The embodiments described in P. 0033 and 0133 are combined using the combination of Newstadt with Brezina.
Claim 39. Brezina and Newstadt disclose the system of claim 35, and Brezina further discloses the third information is obtained from a webpage, the contact information for the blogger is contained in the webpage (P. 0033), the additional social network profiles are contained on a social network (P. 0133). The embodiments described in P. 0033 and 0133 are combined using the combination of Newstadt with Brezina.
Claim(s) 40 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Brezina et al. (US 2009/0030872 A1) in view of Newstadt et al. (US 9,613,382 B1) and further in view of Tafoya et al. (US 2005/0131888 A1).
Claim 40. Brezina and Newstadt disclose the system of claim 35, but do not disclose the instructions are further configured to instruct the at least one processor to: receive an incomplete input made by the user via a user interface; and cause presentation of at least one address suggestion to the user for completion of the incomplete input, wherein the address suggestion is based on the updated profile data, as disclosed in the claims. However, in the same field of invention, Tafoya discloses as a user begins to input an email address or contact, automatically suggesting one or more entries wherein the user can pick and entry or continue to enter when the entry doesn’t match the intended information (P. 0030) by scanning multiple sources of contact information (P. 0041). Therefore, considering the teachings of Brezina, Newstadt and Tafoya, it would have been obvious to one having ordinary skill in the art at the time of the invention to combine the instructions are further configured to instruct the at least one processor to: receive an incomplete input made by the user via a user interface; and cause presentation of at least one address suggestion to the user for completion of the incomplete input, wherein the address suggestion is based on the updated profile data with the teachings of Brezina and Newstadt. One would have been motivated to combine the instructions are further configured to instruct the at least one processor to: receive an incomplete input made by the user via a user interface; and cause presentation of at least one address suggestion to the user for completion of the incomplete input, wherein the address suggestion is based on the updated profile data with the teachings of Brezina and Newstadt in order to help a user find a desired contact in an environment where a plurality of different pieces of information identify one user (Tafoya: Paragraph 0007).
Response to Arguments
Applicant's arguments filed 10/6/2025 have been fully considered but they are not persuasive.
The applicant argues:
Critically, Brezina does not describe using contact information obtained from one source as search criteria on a different website. When Brezina performs searches, the search criteria come from communications (email addresses, names, etc. from email headers or bodies), not from information previously extracted from a social network or other external source. For example, in 32, Brezina describes searching a social network "based on the sender's email address" where the email address comes from a received communication, not from another website. In 1 59, when searching for additional information, the search uses "alewis@example.com" which appears to be the original email address from a communication, not contact information previously obtained from a social network query. In contrast, the claimed method creates a cascading information enrichment process: communication address social network query contact information + website link website query using contact information additional contact information. This cascade uses the interconnected nature of online information where a person's social network profile can provide both direct contact information and pointers to other information sources, which can then be queried using the direct contact information as a key.
The examiner respectfully disagrees. Brezina discloses that various contact information can be extracted from communications received from a sender, and the extracted information can be used to search other websites to retrieve contact information, first information, related to the sender. Brezina does not disclose that the sender’s email address in in the first information. Newstadt discloses that information from a first user account can retrieve information from a second user account, which can include user contact information from the second user account, and the user contact information can include a contact email, phone number and an instant messaging address. Therefore, the combination of Newstadt with Brezina would allow the sender information retrieved from the website to include the sender’s email, phone number and/or instant messaging address.
Conclusion
Any inquiry concerning this communication should be directed to JOHN M HEFFINGTON at telephone number (571)270-1696.
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/J.M.H/Examiner, Art Unit 2177 1/8/2026
/CESAR B PAULA/Supervisory Patent Examiner, Art Unit 2145