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 .
This communication is responsive to amendment filed on 08/29/2025.
Status of claims:
Claims 1-20 were canceled.
Claims 21, 27 and 33 are amended.
Claims 21-38 are presented for examination.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 09/11/2025 comply with the provisions of M.P.E.P 609. It has been placed in the application file. The information referred to therein has been considered as to the merits.
Response to Arguments
Applicant’s arguments with respect to the amended and newly added limitations have been considered in analyzing of the rejection below.
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 21-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
Claims 1, 27 and 33 are directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Step 2A, Prong One:
The claims recite the following limitations directed to an abstract idea:
“identifying….; selecting…” are processes that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. That is nothing in the claim element precludes the steps from practically being performed in a human mind. For example, the limitations “identifying….; selecting…”, in the context of the claim encompasses one can manually or mentally with the aid of pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the "Mental Processes" grouping of abstract ideas.
Step 2A, Prong Two:
This judicial exception is not integrated into a practical application. The claim recites the additional element:
“accessing…; adding…; communicating…; responsive…receiving...; storing...”, which represent(s) an extra solution activity because it is a mere nominal or tangential addition to the claim, a mere generic transmission and presenting of collected and analyzed data. (See MPEP 2106.05(g).
At Step 2B:
The conclusions for the mere implementation using a computer, mere field of use, and using generic computer components (i.e. ML) as a tool are carried over and do not provide significantly more.
The claims recite “extracting…; causing…to perform…; causing…to perform…; causing…to perform…; causing…to perform…;receiving…; outputting…”. These are identified as insignificant extra-solution activity above when re-evaluated this element is well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II), "i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); … OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network);" and thus remains insignificant extra-solution activity that does not provide significantly more.
“a memory storage device; a processor; non-transitory computer-readable storage medium ”, which are recited at a high level of generality such that they amount to on more than mere instructions to apply the exception using a generic component. (see MPEP 2106.05(f)). These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer (see MPEP 2106.05(h)).
“machine learning model” is a mere implementation using a computer. It is at best generally linking the abstract idea to a particular field of use or technological environment of machine learning (see MPEP 2106.05(h).
Looking at the claims as a whole does not change this conclusion and the claims appear to be ineligible under 101.
As per claims 22-23, 25-526, 28, 31-32 and 34-35, the claim recites the limitation(s), which are under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. That is nothing in the claim element precludes the steps from practically being performed in a human mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the "Mental Processes" grouping of abstract ideas.
The claims also recited the addition limitations, which are identified as insignificant extra-solution activity above when re-evaluated this element is well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II), "iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334; i. … transmitting data over a network, …Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); … OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350.
As per claims 24, 29-30 and 36-38, the claims recite the limitation(s), These are identified as insignificant extra-solution activity above when re-evaluated this element is well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II), "i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); … OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network);" and thus remains insignificant extra-solution activity that does not provide significantly more.
The addition limitations are identified as insignificant extra-solution activity above when re-evaluated this element is well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II), "iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334; i. … transmitting data over a network, …Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); … OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out the invention.
Claims 21-38 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 21, 27, and 33: recite the newly added limitation “a self- contain", which is not mention in the specification. Appropriate correction is required.
All dependent claims are rejected for the same reasons given in their respective parent claims.
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.
Claims 21, 27, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over
Snider et al. (US 2018/0351901), hereinafter “Snider”, in view of Resheff et al. (US 10/963842), hereinafter “Resheff”, and further in view of the article “You've got Mail, and Here is What you Could do With It! Analyzing and Predicting Actions on Email Messages”, by Castro et al., hereinafter “Castro”.
As per claim 21, Snider discloses a system for obtaining labeled emails for use as a training dataset in training a machine learning model to be used by an organization, without exposing emails to a person outside the organization (abstract and par. [0026]-[0027], An online system and an online method that enables intelligent chat messaging within an email environment based on email communication data, wherein the system functions to implement the feature extractor using an ensemble of machine learning classifiers.), the system comprising:
a processor (par, [0071], processor),
a memory storage device storing instructions thereon, which, when executed by the processor (par, [0071], memory), causes the system to perform operations comprising:
- accessing a plurality of emails addressed to recipients of the organization (par. [0061]-[0063], the system has functions enable a user to access futures that the participant can select or use to access and initialize multiple chat sessions spawned by a selection of a single email (or a plurality of emails);
- communicating the email over a network to an email client application of the email recipient (par. [0034] & [0037], the email processing server may analyze the email communication data including the header information, sender data, originating IP address, and body or content of the email communication to determine and/or generate overlay data and/or metadata to be transmitted with the inbound email communication. Based on the analysis of the email communication, at step S204, the email processing server or an associated chat server may generate metadata and provide functionality that enables a plurality of chat communication capabilities and features for the inbound email communication.);
- responsive to the email recipient selecting a label for the email via the actionable message, receiving over the network the label indicator for the selected label and the email identifier for the email (par. [0046]-[0052]); and
- storing the label indicator for the selected label and the email identifier for the email in a database as part of the training dataset for use in training the machine learning model (par. [0062], the selected email of the chat communication that is stored in the remote email server.).
Snider substantially discloses the invention as claimed, except for “adding an actionable message stamp to a header of the email, the actionable message stamp comprising a plurality of labels, the actionable message stamp configured to prompt the email recipient to select a label from the plurality of labels for the email when the email is presented to the email recipient via an email client application”.
On the other hand, Resheff discloses adding an actionable message stamp to a header of the email, the actionable message stamp comprising a plurality of labels, the actionable message stamp configured to prompt the email recipient to select a label from the plurality of labels for the email when the email is presented to the email recipient via an email client application (abstract, col.7 lines 35-50 and col. 8 lines 9-29, wherein a label (216) for the email message (210) may be a recipient defined importance level for the email message (210). For example, the importance level may be high priority, medium priority, or normal priority. Specifically, rather than the importance level being defined by the sender of the email message, which may be concurrently in the email header (216), the label (216) stores an importance level defined by another recipient of the email message. In the list of email messages (302), email information (304) for an email message is related to a corresponding label field (306) that shows a current label for the email message. The email information (304) may be any portion of the email message including the email body and email header. By including labels, a user may quickly determine whether an email requires the user's attention), wherein the actionable message stamp comprises a self-contained interactive software component that executed exclusively within the email client application, wherein, upon the email recipient selecting the label for the email via the self-contained interactive software component the self-contained interactive software component transmits a label indicator and an email identifier, and does not transmit any email message content, to the server (abstract, col.7 lines 35-50 and col. 8 lines 9-29, wherein a label (216) for the email message (210) may be a recipient defined importance level for the email message (210). For example, the importance level may be high priority, medium priority, or normal priority. Specifically, rather than the importance level being defined by the sender of the email message, which may be concurrently in the email header (216), the label (216) stores an importance level defined by another recipient of the email message. In the list of email messages (302), email information (304) for an email message is related to a corresponding label field (306) that shows a current label for the email message. The email information (304) may be any portion of the email message including the email body and email header. By including labels, a user may quickly determine whether an email requires the user's attention),
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention was made to modify the disclosures and features of Snider to include the features as disclosed by Resheff for the purpose of a group email message is treated as multiple individual messages that are individually managed to save time cost and storage cost are increased by the number of destination email addresses.
However, the combincation of Snider and Resheff does not disclose the limitation “identifying a sample email set from the plurality of emails by randomly selecting a percentage of all emails from the plurality of emails”.
Meanwhile, Castro discloses identifying a sample email set from the plurality of emails by randomly selecting a percentage of all emails from the plurality of emails (page 307, abstract and right col.[2], identify "important" messages, while a complementary one is to bundle messages, wherein conducted a large-scale experiment involving users who had previously agreed to participate in such research studies, wherein results show that for recall values of 90% we can predict important actions such a read or reply at precision levels up to 40% for active users, which we consider pretty encouraging for an assistance task. For less active users, we show that our regularization achieves an increase in AUC of close to 50%. Identify the most popular actions. such as read. reply. Delete, and forward, and verify how predictable they are; and page 308, right col. [1-3], observed that about 35% of the entire non-dormant population perform at least one action on a daily basis. which we believe is sufficient for motivating the task of predicting actions. Table l lists the most common actions over a period of two months. One interesting observation is that while read is obviously the most frequent action, conducted by 98% of users, for 44% of users it is, maybe surprisingly, the only action);
- selecting an email from the sample email set from the plurality of emails, the email being addressed to an email recipient of the organization (page 308, right col. [1-5], observed that about 35% of the entire non-dormant population perform at least one action on a daily basis. which we believe is sufficient for motivating the task of predicting actions. Table l lists the most common actions over a period of two months. One interesting observation is that while read is obviously the most frequent action, conducted by 98% of users, for 44% of users it is, maybe surprisingly, the only action…verified that it is performed on only 2% of incoming messages. For each message, we counted the number of users it was sent to. The count of recipients per message was then aggregated by sender to compute the average number of users receiving an email from each sender during a period of two weeks; and page 315, left col [1-2], the distinction between enterprise or small-organization email prediction and Web email is critical since as mentioned before. they drastically differ, not only in size. but in nature of traffic and behavior)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention was made to modify the disclosures and features of cited references to include the features as disclosed by Castro for the purpose of providing a unified framework of this scale for predicting multiple actions on Web email and process in boxes.
As per claim 27, is a computer-implemented method claim, which is corresponding the system claim 1. Therefore, it’s rejection under the same rational as claim 1 above.
As per claim 33, is a memory storage device claim, which is corresponding the system claim 1. Therefore, it’s rejection under the same rational as claim 1 above.
Claims 22, 28, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Snider , Resheff and Castro, and further in view of Borna (US 8,972,495 B1)
As per claim 22, 28, and 34, the combination of Snider, Resheff, and Castro substantially discloses the invention as claimed, except for “the email to which the actionable message is added is an email that has been delivered to a mailbox inbox of the email recipient as hosted at an email server and not yet delivered to an email client application of the email recipient, wherein the actionable message stamp comprises a nudge message”.
On the other hand, Borna discloses the email to which the actionable message is added is an email that has been delivered to a mailbox inbox of the email recipient as hosted at an email server and not yet delivered to an email client application of the email recipient, wherein the actionable message stamp comprises a nudge message (col. 10 lines 3-16, the nudge message at the bottom of the UI will be removed by the message server after the nudge has been responded).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention was made to modify the disclosures and features of cited references to include the features as disclosed by Borna for the purpose of permitting senders to set the system based classifications of communications, and to permit recipients via the recipient's communication system to organize, filter, and/or take action based on the system classifications of communications set by a sender and imposed by the communication system.
Claims 23, 26, 29, 32, 35, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Snider , Resheff and Castro, and further in view of Sikka et al. (US 2021/0012211 A1), hereinafter “Sikka”
As per claims 23, 29, and 35, the combination of Snider, Resheff, and Castro substantially discloses the invention as claimed, except for “prior to adding the actionable message to the email and communicating the email over the network to the client email application of the email recipient, determining that a count of emails addressed to an email recipient who is a member of the organization and to which the actionable message is to be added is less than a predetermined threshold”.
Meanwhile, Sikka discloses prior to adding the actionable message to the email and communicating the email over the network to the client email application of the email recipient, determining that a count of emails addressed to an email recipient who is a member of the organization and to which the actionable message is to be added is less than a predetermined threshold (par. [0139], identify samples with high confidence values and to then update sample map to only display those samples (i.e., displaying of samples based on confidence value of criteria of certain accepting sample sets using filter). For example, network analyzer could receive a modification to a threshold confidence value and then cause sample map to display samples with confidence values that exceed the modified threshold confidence level);
- wherein the actionable message is added to the email and the email is communicated over the network to the client email application of the email recipient in response to determining that the count of emails addressed to the email recipient who is a member of the organization and to which the actionable message is to be added is less than a predetermined threshold (par. [0139] and [0156], identify samples with high confidence values and to then update sample map to only display those samples (i.e., displaying of samples based on confidence value of criteria of certain accepting sample sets using filter). For example, network analyzer could receive a modification to a threshold confidence value and then cause sample map to display samples with confidence values that exceed the modified threshold confidence level. The Network evaluator collects samples with low mutual difference values into a particular group and comparing two sets of activation levels).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention was made to modify the disclosures and features of cited references to include the features as disclosed by Sikka to generate specific outputs based on particular inputs for the purpose of providing more effective processes of generating, analyzing, and modifying neural network environment.
As per claims 26, 32, and 38, the combination of Snider, Resheff, and Castro substantially discloses the invention as claimed, except for “prior to adding the actionable message to the email and communicating the email over the network to the client email application of the email recipient, determining that a size of the training dataset does not exceed a threshold size; and wherein the actionable message is added to the email and the email is communicated over the network to the client email application of the email recipient in response to determining that the size of the training dataset does not exceed a threshold size”.
Meanwhile, Sikka discloses prior to adding the actionable message to the email and communicating the email over the network to the client email application of the email recipient, determining that a size of the training dataset does not exceed a threshold size (par. [0139], identify samples with high confidence values and to then update sample map to only display those samples (i.e., displaying of samples based on confidence value of criteria of certain accepting sample sets using filter). For example, network analyzer could receive a modification to a threshold confidence value and then cause sample map to display samples with confidence values that exceed the modified threshold confidence level);
- wherein the actionable message is added to the email and the email is communicated over the network to the client email application of the email recipient in response to determining that the size of the training dataset does not exceed a threshold size (par. [0139] and [0156], identify samples with high confidence values and to then update sample map to only display those samples (i.e., displaying of samples based on confidence value of criteria of certain accepting sample sets using filter). For example, network analyzer could receive a modification to a threshold confidence value and then cause sample map to display samples with confidence values that exceed the modified threshold confidence level. The Network evaluator collects samples with low mutual difference values into a particular group and comparing two sets of activation levels).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention was made to modify the disclosures and features of cited references to include the features as disclosed by Sikka to generate specific outputs based on particular inputs for the purpose of providing more effective processes of generating, analyzing, and modifying neural network environment.
Claims 24, 30, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Snider , Resheff and Castro, and further in view of Pickett et al. (US 10/225,220 B2), hereinafter “Pickett”
As per claims 24, 30, and 36, the combination of Snider, Resheff, and Castro substantially discloses the invention as claimed, except for “ determining a duration of time that has lapsed since an actionable message was last added to an email addressed to the email recipient; comparing the duration of time to a predetermined threshold duration of time; and wherein the actionable message is added to the email and the email is communicated over the network to the email client application of the email recipient in response to determining the duration of time exceeds the predetermined threshold duration of time”.
On the other hand, Pickett discloses determining a duration of time that has lapsed since an actionable message was last added to an email addressed to the email recipient (col. 23 lines 18-33, col. 18, line 47-66, & col. 12 lines 4-27, a predetermined amount of time and comparing a difference between the submission time of the first message element and the submission time of the second message element to the threshold amount of time);
- comparing the duration of time to a predetermined threshold duration of time (col. 23 lines 18-33, col. 18, line 47-66, & col. 12 lines 4-27, comparing a difference between the submission time of the first message element and the submission time of the second message element to the threshold amount of time); and
wherein the actionable message is added to the email and the email is communicated over the network to the email client application of the email recipient in response to determining the duration of time exceeds the predetermined threshold duration of time (col. 18, line 47-66, col. 12 lines 4-27, a predetermined amount of time, remove the message element 310c and add the message elements 310a and 310b back to the communication thread 306 in their original places. The message element manager 114a can make the determination as to whether to leave the message element 310c indefinitely or to remove the message element 310c after a predetermined amount of time based on metadata associated with the message element 310c and/or user-configured settings associated with the messaging application).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention was made to modify the disclosures and features of cited references to include the features as disclosed by Pickett for the purpose of providing a robust and interactive communication feature that adds another layer of expression to the electronic communications.
Claims 25, 31, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Snider , Resheff and Castro, and further in view of Rowan et al. (US 11/321,629 B1), hereinafter “Rowan”.
As per claims 25, 31, and 37, the combination of Snider, Resheff, and Castro substantially discloses the invention as claimed, except for “ providing the email as input to the machine learning model to generate an output indicating a predicted class for the email; prior to adding the actionable message to the email and communicating the email over the network to the email client application of the email recipient, selecting the email, based on the predicted class, to include the actionable message when the email is to be communicated over the network to the email client application of the email recipient”.
On the other hand, Rowan discloses providing the email as input to the machine learning model to generate an output indicating a predicted class for the email (col. 4 lines 13-15, col. 10 lines 3-9, col. 8 lines 13-34, receiving an indication from the user that the labeling process is completed. The confidence score data 144includes, for each predicted label and the predicted labels data 142, a confidence score in the accuracy of the predicted label. The higher the confidence score, the more confident the analysis model is that the predicted label would match the label that the user would apply. The lower the confidence score the less confident the analysis model 118 is that the predicted label with match the label that the user would apply);
prior to adding the actionable message to the email and communicating the email over the network to the email client application of the email recipient, selecting the email, based on the predicted class, to include the actionable message when the email is to be communicated over the network to the email client application of the email recipient (col. 8 lines 13-34, The confidence score data 144includes, for each predicted label and the predicted labels data 142, a confidence score in the accuracy of the predicted label. The higher the confidence score, the more confident the analysis model is that the predicted label would match the label that the user would apply. The lower the confidence score the less confident the analysis model 118 is that the predicted label with match the label that the user would apply; and col. 22 line 36, comparing and generating confidence score data 144. The confidence score data 144includes, for each predicted label and the predicted labels data 142, a confidence score in the accuracy of the predicted label. The higher the confidence score, the more confident the analysis model is that the predicted label would match the label that the user would apply. The lower the confidence score the less confident the analysis model 118 is that the predicted label with match the label that the user would apply).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention was made to modify the disclosures and features of cited references to include the features as disclosed by Rowan for the purpose of efficiently and accurately generating labeled training sets for supervised machine learning processes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Loan T. Nguyen whose telephone number is (571) 270-3103. The examiner can normally be reached on Monday from 10:00 am - 6:00 pm, Thursday-Friday from 10:00 am - 2:00 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aleksandr Kerzhner can be reached on (571) 270-1760. The fax phone number for the organization where this application or proceeding is assigned is 571-270-4103. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
1/28/2026
/LOAN T NGUYEN/Examiner, Art Unit 2165