DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Notice to Applicant
2. The following is a Final Office action. In response to Examiner’s Non-Final Action of 12/30/2025, Applicant, on 01/21/2026, amended independent Claims 1 and 8 and 15. Claims 2-7, 9-14 and 16-21 are as originally presented.
Claims 1-21 are pending in this application and have been rejected below.
Response to Amendment
3. Applicant’s amendments and arguments are acknowledged.
4. Prior Claim Objections withdrawn in light of discussion during the interview held on 20th January 2026 and Applicant’s arguments.
5. The prior 35 USC §112 rejection withdrawn in light of Applicant’s amendments.
6. The prior 35 USC §103 rejection withdrawn in light of Applicant’s amendments and arguments.
7. The prior 35 USC §101 rejection maintained despite Applicant’s amendments and arguments.
Claim Rejections - 35 USC § 101
8. 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.
9. Claims 1-21 rejected under 35 U.S.C. 101 because, although they are drawn to statutory categories of system (machine), method (process) or manufacture (medium), they are also directed to a judicial exception (an abstract idea) without significantly more.
10. At Step 2A Prong One of the subject matter eligibility analysis, Claim 1 recites A system comprising: receive .. a first registration request from a first user .. having a first list of contacts associated with a first organization .., and send a response to the first registration request .. to confirm the first registration request; receive .. a second registration request from a second user .. having a second list of contacts and associated with a second organization .. and send a response to the registration request .. to confirm the second registration request; store .. the first list of contacts for the first user and the second list of contacts for the second user ..; grant .. to the first [user] .. view permission for the second list of contacts for the second user ..; grant .. to the second [user] .. view permission for the first list of contacts for the first user ..; determine .. that the first user has the second user as a contact in the first list of contacts and that the second user has the first user as a contact in the second list of contacts and transmit .. granting permission to communicate .. to the first user .. and to the second user ..; receive .. a selection of a communication type .. to grant permission from the first user .. and the second user ..; receive .. a communication having the communication type .. from a sender comprising one of the first user .. and the second user ..; determine .. whether the first user .. and the second user .. have granted permission to communicate using the communication type; and forward .. the communication having the communication type to a recipient comprising one of the first user .. and the second user, which, under Broadest Reasonable Interpretation in light of the Specification, is an abstract idea of Certain Methods of Organizing Human Activity, particularly fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) because receiving registration requests from users to participate in a system in which they grant permission for receiving communications from other registered users is a business practice involving commercial interactions, marketing or sales activities or behaviors, and managing relationships. Furthermore, it is also an abstract idea of Mental Processes - concepts performed in the human mind (including an observation, evaluation, judgment, opinion), because determining whether two users each have the other in a list of contacts is a process that, under Broadest Reasonable Interpretation, can be performed in the mind since it involves observation and evaluation. Claims 8 and 15 recite a similar abstract idea.
At Step 2A Prong Two of the analysis, the judicial exception (abstract idea) is not integrated into a practical application because independent Claims 1, 8 and 15, including additional elements such as a memory having computer-executable instructions stored thereon; and at least one processor to execute the computer-executable instructions, a contacts module, a first client computing device, a first email and calendar server computing device, a second client computing device, a second email and calendar server computing device, the first email and calendar server computing device different than the second email and calendar server computing device, a database, a graphical user interface, at least one of email, phone, and text messaging, A non-transitory computer-readable medium comprising instructions stored thereon that, when executed by at least one processor, causes the at least one processor to perform operations, individually, and in combination, when viewed as a whole, are not an improvement to a computer or a technology, the claims do not apply the judicial exception with a particular machine, and the claims do not effect a transformation or reduction of a particular article to a different state or thing. Generally linking the use of the judicial exception to a particular technological environment or field of use, as in the instant claims, is not indicative of integration into a practical application - see MPEP 2106.05(h); adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as in the instant claims, is also not indicative of integration into a practical application - see MPEP 2106.05(f). The Claims are therefore directed to the judicial exception.
At Step 2B of the analysis, independent Claims 1, 8 and 15 do not include any additional elements that are sufficient to amount to significantly more than the judicial exception (abstract idea), because any such additional elements such as those listed above, individually or in combination, do not recite anything that is beyond conventional and routine activity or use of computers (as evidenced by Figures 1, 13 and paragraphs 23-24, 48, 50, 66, 99, 107-110 of the Specification in the instant Application, and court decisions such as buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) discussed at 2106.05(d) of the MPEP), do not effect a transformation or reduction of a particular article to a different state or thing, nor do they apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular field of use or technological environment. Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally linking the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)), as in the instant independent Claims, is not indicative of an inventive concept ("significantly more").
At Step 2A Prong One, dependent Claims 2-7, 9-14 and 16-21 incorporate (and therefore recite) the abstract idea noted in independent Claims from which they depend, and further recite extensions of that abstract idea.
At Step 2A Prong Two, dependent Claims 2, 4, 6, 7, 9, 11, 13, 14, 16, 18, 20 and 21 do not include any additional elements beyond those included in the list above with respect to the independent Claims from which they depend. These dependent Claims therefore do not integrate the judicial exception (abstract idea) into a practical application for the same reasons as stated above at Step 2A Prong Two for the independent Claims.
At Step 2A Prong Two for dependent Claims 3, 5, 10, 12, 17 and 19 the judicial exception (abstract idea) is not integrated into a practical application because the Claims, including additional elements such as those listed above for the independent Claims and a short message service (SMS) and a multimedia messaging service (MMS) message, at least one image, at least one video, at least one audio file, and at least one emoji, individually, and in combination, when viewed as a whole, are not an improvement to a computer or a technology, the claims do not apply the judicial exception with a particular machine, and the claims do not effect a transformation or reduction of a particular article to a different state or thing. Generally linking the use of the judicial exception to a particular technological environment or field of use, as in the instant claims, is not indicative of integration into a practical application - see MPEP 2106.05(h); adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as in the instant claims, is also not indicative of integration into a practical application - see MPEP 2106.05(f). These Claims are therefore directed to the judicial exception.
At Step 2B, dependent Claims 2, 4, 6, 7, 9, 11, 13, 14, 16, 18, 20 and 21 do not include any additional elements beyond those included in the list above with respect to the independent Claims from which they depend. These dependent Claims therefore do not recite anything that is sufficient to amount to significantly more than the judicial exception for the same reasons as stated above at Step 2B for the independent Claims.
At Step 2B, dependent Claims 3, 5, 10, 12, 17 and 19 do not include any additional elements that are sufficient to amount to significantly more than the judicial exception (abstract idea), because any such additional elements such as those listed above for the independent Claims and a short message service (SMS) and a multimedia messaging service (MMS) message, at least one image, at least one video, at least one audio file, and at least one emoji, individually or in combination, do not recite anything that is beyond conventional and routine activity or use of computers (as evidenced by Figures 1, 13 and paragraphs 23-24, 48, 50, 66, 99, 107-110 of the Specification in the instant Application, and court decisions such as buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) discussed at 2106.05(d) of the MPEP), do not effect a transformation or reduction of a particular article to a different state or thing, nor do they apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular field of use or technological environment. Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally linking the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)), as in the instant Claims, is not indicative of an inventive concept ("significantly more").
Therefore, Claims 1-21 are rejected under 35 U.S.C. 101 as being directed to non-eligible subject matter. See Alice Corp. v. CLS Bank International, 573__ U.S. 2014.
Response to Arguments
11. Applicant's arguments filed 01/21/2026 have been fully considered; they are found persuasive with regard to the 35 U.S.C. 103 rejection, which has therefore been withdrawn, but are found not persuasive with regard to the 35 U.S.C. 101 rejection.
12. Applicant argues (at pp. 11-12) that “the claim elements in claim 1, as an example, in combination, amount to limitations that cannot be practically performed in the human mind”, and therefore the claim does not fall into the abstract idea category of Mental Processes, and is thus patent eligible (at Step 2A Prong One of the subject matter analysis under 35 U.S.C. 101).
Examiner respectfully disagrees. Claim 1 and similarly the other independent Claims all recite an abstract idea in the category of Mental Processes (determining whether two users each have the other in a list of contacts, for example) under Broadest Reasonable Interpretation of the amended claim language in light of the Specification at Step 2A Prong One of the analysis, as explained in detail at paragraph 10 above in this office action (see also MPEP 2106.04(a)(2)(III)(C)). The computer-related limitations are additional elements which are considered at Step 2A Prong Two of the analysis above; such consideration of the claim language as a whole indicates that the additional elements are used as a tool to implement the abstract idea recited in the Claims and thus do not integrate the judicial exception into a practical application at this step of the analysis (see MPEP 2106.05(f)).
13. Applicant argues (at p. 12) that, at Step 2B of the analysis, “the claim features provide a non-conventional and non-generic arrangement that prevent the first user from sending the second user an email and/or phone call unless the second user has the first user on a list of contacts and has granted permission to communicate using a communication type being one of one of email, phone, and text messaging” which is significantly more than the abstract idea.
Examiner respectfully disagrees. As explained in detail at paragraph 10 above in this office action, the claims when considered as a whole, including the additional elements, do not amount to an inventive concept (“significantly more” than the judicial exception) because, like the analysis at Step 2A Prong Two, the additional elements are merely used as a tool to implement the abstract idea.
Examiner notes that the non-conventionality (or novelty) in the current claims (as indicated by withdrawal of the 35 U.S.C. 103 rejection) lies in the features mentioned above by Applicant; however, the dependence of communication access by the first user on the granting of permission by the second user is part of the abstract idea, not an improvement of technology.
14. With regard to the 35 U.S.C. 103 rejection, Examiner agrees with Applicant’s arguments that the amended claim language overcomes the combined teachings of Kidd and Errico, and the rejection has therefore been withdrawn.
Conclusion
15. THIS ACTION IS MADE FINAL. 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.
16. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Wilkins (US Patent Publication 20070266156 A1) describes a method and system for creating a contact record in a contact management system, where the contact record includes an indication of whether approval from the contact record owner is required prior to enabling a requester to access to the contact record.
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARJIT S BAINS whose telephone number is (571)270-0317. The examiner can normally be reached M-F 9:30am-6:00pm.
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/SARJIT S BAINS/Examiner, Art Unit 3623 /RUTAO WU/Supervisory Patent Examiner, Art Unit 3623
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