DETAILED ACTION
Response to Arguments
Claims 1, 2, 5, 15, 17, and 18 are currently pending. Claims 1, 2, 15, and 17 were amended. Claims 3, 4, 6-14, and 16 were canceled. Claim 18 is new.
The interpretation of claims 1, 11, and 17 under 35 U.S.C. 112(f) has been withdrawn in view of the claim amendments.
The rejection of claims 1-17 under 35 U.S.C. 112(b) as being indefinite has been withdrawn in view of the response provided on pg. 5 of the REMARKS filed on July 1, 2025 and the claim amendments.
Applicant’s arguments on pg. 6 of the REMARKS regarding the claim rejections under 35 U.S.C. 102(a)(1) and 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the U.S.C. 102(a)(1) rejection over US 2020/0099637 to Kurokawa et al. for independent claims 1, 11, and 17 have been withdrawn. However, after further consideration and an updated search, a new ground of rejection has been asserted. See Claim Rejections - 35 USC § 102 and Claim Rejections - 35 USC § 103 below for details.
Claim Objections
Claims 2 and 15 are objected to because of the following informalities:
Claim 2 should be corrected as: “wherein the processor is further configured to”.
Claim 15 should be corrected as: “wherein the processor is further configured to”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Dependent claim 5 recites “the message that is transmitted by the first user”. It is unclear if this message is referring to the “chat message” or the “message that shares a file” in parent claim 1. Claim 1 recites the first user transmitting “chat message[s]” and also the first user transmitting “a message that shares the file”.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 5, 17, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2017/0012985 to Meyers et al. (hereinafter, “Meyers”).
As per claim 1: Meyers discloses: A message providing system comprising (a messaging architecture 100 that includes a messaging system 102 [Meyers, ¶0015; Fig. 1]): a processor configured to (processor 134 [Meyers, ¶0017, 0023; Fig. 1]): run a program (Fig. 12 is a computing environment in which the messaging architecture 100 is deployed; programs are deployed by the computing environment [Meyers, ¶0068-0069; Fig. 12]); acquire user information about a second user who is a receiver of a chat message from a first user who is a transmitter of the chat message (a user 106 (“first user”) adds recipient(s) (“second user”) to a message that will be sent [Meyers, ¶0027]; the added recipients are used to identify, by an access control component, permissions to the message and attachment [Meyers, ¶0040]); in a case where a message that shares a file is produced by the first user (user 106 generates a message with an attachment or shared objects that are linked [Meyers, ¶0027]), determine whether the second user has an access right to the file based on the acquired user information (the access control component 132 of the messaging system determines permissions of each added recipient to the message [Meyers, ¶0028]); notify the first user by displaying information indicating that the second user does not have access right to the file before the message that shares the file is transmitted to the second user (notifying user 106 about the permissions via a user interface display, including giving the user 106 a chance to confirm, modify, or cancel these permission [Meyers, ¶0042]; this occurs before the message is sent to the recipient(s) [Meyers, ¶0047; Fig. 4-2(238 & 306)]); and perform a process to give the second user access right to the file in a case where an instruction for performing the process is received from the first user (once the user is notified, the user can send the message to the recipient [Meyers, ¶0047]; for example, permission to access the attachment is granted by the user in the notification [Meyers, ¶0046; Fig. 4D]).
As per claim 2: Meyers discloses all limitations of claim 1. Furthermore, Meyers discloses: wherein the processor configured to: notifying the first user that the second user does not have the access right to the file before the first user inputs an instruction to transmit the message to the second user (the access control component sets the permission to the recipients when they do not have permissions to receive/access the message and attachment; the user is notify of these permissions (i.e., the user is informed that the recipient did not have prior permissions) and is given a chance to confirm, modify, or cancel these permissions before the message with the attachment is sent [Meyers, ¶0042-0047]).
As per claim 5: Meyers discloses all limitations of claim 1. Furthermore, Meyers discloses: wherein the user information is a content of the message that is transmitted by the first user (identifying the added recipients to the message [Meyers, ¶0040]).
As per claim 17: Claim 17 is different from overall scope of claim 1. Claim 17 is directed to a non-transitory computer readable medium storing a program, when executed, to perform a process corresponding to the same functions of the system in claim 1. Therefore, the response provided in claim 1 is equally applicable to claim 17.
As per claim 18: Claim 18 is different from overall scope of claim 1. Claim 18 is directed to a method corresponding to the same functions of the system in claim 1. Therefore, the response provided in claim 1 is equally applicable to claim 18.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Meyers in view of US 2020/0304436 to Maruyama et al. (hereinafter, “Maruyama”).
As per claim 15: Meyers discloses all limitations of claim 1. Meyers do not explicitly disclose, but Maruyama discloses: wherein the processor is configured to notify the first user by using message transmission with a chatbot (a chatbot server manages a chatbot that performs control in a chatroom [Maruyama, ¶0027, 0029]; for example, the chatbot can notify a printing completion by posting a message [Maruyama, ¶0068]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the access control component in Meyers to a chatbot to enable a chatroom environment. Meyers disclosed well-known messaging systems that included email systems, instant messaging systems, communications systems within social networks, among others [Meyers, ¶0002]. Hence, it would have been obvious to try Meyer’s messaging access control system in a chatroom environment with reasonable success and enable the control of sharing content in a chatroom with a chatbot as a “moderator”.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT B LEUNG whose telephone number is (571)270-1453. The examiner can normally be reached Mon - Thurs: 10am-7pm ET.
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, JUNG KIM can be reached on 571-272-3804. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT B LEUNG/Primary Examiner, Art Unit 2494
Prosecution Insights