1/30/2026Notice 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 .
Response to Amendment
This office action is responsive to amendment received on 1/30/2026. Claim 1 is amended. Claims 1, 6, 7, 8, 10, 11, 12, 13, 14, 15, 16, 17 and 18 are pending examination.
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, 1 6, 7, 8, 10, 11, 12, 13, 14, 15, 16, 17 and 18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 2A, Prong One, the independent claim recites: receiving an electronic message with an attachment, performing a security check on the attachment, generating an image of the attachment content, embedding the image in the message body if the catchment is non-malicious, transmitting the message with both the embedded image and attachment. The claim is directed to the abstract idea of organizing and displaying information- specifically, and similar to the mental process of reviewing a document doe safety and creating visual preview of its content for a recipient. The claim recites limitations that fall within the” mental process” and “certain methods of organizing human activity” groupings identified in the 2019 Patent eligibility guidance. These limitations are similar to Electric Power Group, LLC v. Alstom S.A. of collecting, analyzing, and displaying information; Cybersecure Corp v. Retail Decisions, Inc. of processing information through a series of steps and Intellectual Ventures ILLC v. capital One Bank of tailoring information presentation based on analysis.
The claims merely apply generic computer components (messaging server, security check software, image generation tools) to implement the abstract idea.
Step 2A, Prong Two, the additional elements recited in the claims do not integrate the abstract idea into a practical application because they recited generic computer components such as messaging server, message sending device and message receiving device are generic computer elements performing routine functions such as receiving, processing and transmitting. The claims do not improve computer functionality, network efficiency, or security technology itself. The claims simply use computers as tools to implement the abstract idea of conditional document preview generation.
Step 2B, the claims lack an inventive concept sufficient to transform the abstract idea into patent eligible subject matter. Therefore, the claims are rejected under 35 U.S.C. 101.
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.
Claims 1, 6, 7, 8, 10, 11, 12, 13, 14, 15, 16, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Sharp et al, U.S. Patent Pub. No. 2015/0200885 (referred to hereinafter as Sharp) and further in view of Jones U.S. Patent No. 2016/0182532.
As to claim 1, Sharp teaches a method of providing electronic messages to a message receiving device, the method being performed by a messaging server, the method comprising:
receiving, by the messaging server, an electronic message from a message sending device, wherein the electronic message comprises at least one attachment (see at least sharp, paragraphs, 0037, 0041 and 0042, server receiving an email with attachments/links, then processes previews);
generating, by the messaging server, an image of a content of the at least one attachment (see at least sharp, fig. 6, abstract and paragraphs 0041-0042, generating preview thumbnails, gif/jpg);
embedding, by the messaging server, the image of the content of the at least one attachment in a message body of the electronic message, wherein the image of the content is generated and embedded in the message body if the preceding security check has revealed that the at least one attachment is non-malicious (see at least sharp 2015/020085, paragraphs 0022, 0026, incorporating thumbnails in body of the email post parsing); and
transmitting, by the messaging server, the electronic message with the embedded image along with the at least one attachment to the message receiving device (see sharp 2015/020085, paragraph 0044).
Sharp teaches the invention as mentioned above sharp does not explicitly teach perform, by the server system, a security check of the electronic message, wherein the security check comprises a malware check of the at least one attachment. However, Jones teaches performing, by the messaging server, a security check of the electronic message, wherein the security check comprises a malware check of the at least one attachment (see Jones paragraphs 0005 and 0010, sterilizing email attachments and other communications, its system receives a communication containing data with executable code and process it to remove risk before delivery (i.e. a security malware check countermeasure step) which is malware safety check);
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have known to combine the teachings of Jones with those of sharp to ensure both safety and usability in the email system. The secure previews and access to original files enhance email functionality by ensuring access to non-malicious emails.
2-5. (Cancelled)
As to claim 6, Sharp-Jones teaches the method of claim 1, wherein the generating step comprises converting the content of the at least one attachment into a predetermined image format (see at least Sharp paragraph 0041).
As to claim 7, Sharp-Jones teaches the method of claim 1, wherein the embedding step comprises directly embedding the generated image in the body of the electronic message (see at least Sharp paragraph 0043).
9. Cancelled.
As to claim14, Sharp-Jones teaches the method of claim 1, wherein the security check comprises a virtual execution of the at least one attachment in a sandbox environment (see Jones at least paragraph 0009, virtual computer executes attachment, monitored for infection, erases and reloads if malicious).
As to claim 17, Sharp-Jones teaches the method of claim 1 wherein the image is directly embedded in the message body of the electronic message (see Jones at least paragraphs 0030-0031, generated image is embedded in the message body post security).
Claims 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable Sharp-Jones and further in view of Cao et al. U.S. Patent No. 11,038,916 (referred to herein after as Cao).
As to claim12, Sharp-Jones does not but Cao teaches security check comprises a signature-based malware check of the at least one attachment (See Cao at least col. 2, lines 6-29, and col. 5 line 54- col. 6 line 37, comparing attachment virus pattern file to malware detection).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have known to combine the teachings of Cao with those of Sharp-Jones to enhance the robustness of the system by integrating static signature and dynamic execution checks to create a more comprehensive malware detection method.
As to claim 13, Sharp-Jones does not but Cao teaches the signature-based malware check comprises comparing a signature for the electronic message to a plurality of prestored signatures indicative of a malicious behavior (see Cao at least col. 4 lines 25-34, compares attachment /message signatures to prestored virus patterns which indicate presence or malware.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have known to combine the teachings of Cao with those of Sharp-Jones to enhance the robustness of the system by integrating static signature and dynamic execution checks to create a more comprehensive malware detection method.
Claims 8, 10,11, 15, 16 and 18 do not teach anything above and beyond the limitations of claims 1,6,7,12,13,14 and 17 and are rejected for similar reasons.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
The applicant argues that Sharp only displays preview thumbnails in a separate attachment card area, and that is different from embedding an image in the message body.
Response. The applicant is focusing on one paragraph of sharp (paragraph 0024), while another paragraph that directly contradicts the argument. Specifically, paragraph 0026, which states: E-mail message body 406 may include inline images, which remain in the body of the e-mail message but the preview thumbnail for inline images may have the same dimensions as the preview thumbnails for the attachments.” Therefore, Sharp discloses that images can appear inside the message body and receive the same thumbnail treatment as attachment card previews. The applicant has not addressed this paragraph which directly shows that generated images of the content residing within the message body, which is exactly what the claim requires. Furthermore, the difference between displaying a generated image in an “attachment card” and “embedding in the message body” is simply a layout choice as to where on the screen the image appears. The claim does not recite any special technical mechanism for how the embedding is done that would distinguish it from Sharp’s approach. Under the broadest reasonable interpretation of “embedding an image in the message body, “Sharp’s disclosure particularly paragraph 0026, meets the scope of the claim as currently presented.
The applicant argues that Sharp’s purpose was to eliminate the display of links in the prior art message body, and that sharp therefore does not teach putting images into the message body.
Response. This mischaracterizes Sharp’s objective. Sharp’s actual goal which is stated in paragraph 0023, is to provide a uniform display of all the attachments, whether these attachments are local files or links, so that recipient can view them consistently. Removing the link from the message body is simply one consequence of achieving that uniform display. It is not Sharp’s only teaching. Furthermore, Sharp’s objective and Sharp’s full disclosure are two different things. Even if Sharp’s main focus was on the attachment card display, Sharp in paragraph 0026, explicitly addresses images that remain in the message body. Sharp teaches both the attachment card display and inline images in the message body.
The applicant argues Sharp allegedly does not teach embedding an image in the message body, the applicant argues that Sharp’s transmitted message must lack an embedding image and therefore the transmitting limitation is not taught either.
Response. This is simply the same embedding argument previously presented. The applicant states, Sharp does not teach embedding and therefore Sharp does not teach transmitting of a message with an embedded image. sharp in paragraph 0044 actually teaches about transmission. It discloses that the server transmits the email message to the recipient client computer, also discloses the server transmits preview images of attachment content and finally the server transmits the original attachments. These elements map directly onto the three things the transmitting limitation requires such as: the electronic message, the embedded image, and the original attachment. Therefore, Sharp meets the scope of the claimed limitations as currently presented.
Jones fails to remedy Sharp’s alleged deficiency without any analysis what jones actually teaches.
Response. This is a conclusory statement, not a legal one. The applicant provided no explanation of what jones specifically teaches or does not teach about this limitation. Why Jone’s teaching cannot be combined with Sharp’s to arrive at the claimed feature. What specific aspect of Jones is insufficient. The applicant is reminded that the rejection was based on multiple references and not only one.
No Prima Facie case of Obviousness argument.
Response. The applicant’s conclusion is not persuasive because it is entirely built on embedding argument which fails in view of paragraph 0026 of Sharp and because the applicant has never properly addressed the 103-combination analysis. The examiner disagrees and a prima facie case has been established because, Sharp teaches generating images of the attachment content including inline images in the message body per paragraph 0026 and transmitting the email with those images and the original attachments to the recipient. In addition, Jones teaches generating an image of attachment content specifically for security purpose, including malware check before processing. Finally, a person of the ordinary skilled in the art would have been motivated to combine these teaching to arrive at a messaging server that performs a malware check, generates an image of the attachment content, includes that image with eh email, and transmits both the image and the attachment to the recipient.
Arguments regarding 35 USC § 101 rejections.
The applicant argues that the claims do not recite a mental process because the claimed actions cannot be performed in the human mind and are tied to computer technology.
Response. This argument is not persuasive. The core concept of the claims is receiving a message with an attachment; check if the attachment is safe; if safe create an image of the content and send the image with the message. This is fundamentally a mental process. A human mail inspector could conceptually perform these same steps by receiving a package, check if it is safe, photocopy the contents and forward everything. Implementing these steps on a computer does not make them non-abstract. The court was clear that applying an abstract idea using a computer does not automatically make it patent eligible. The steps of claim 1 are similar to Electric Power Group of collecting, analyzing and displaying information or Intellectual ventures of tailoring information presentation based on analysis. The applicant has not specifically explained how claim 1 differs from this case beyond asserting that it is tied to computer technology, which is not sufficient.
The applicant argues that claim 1 addresses a real technical problem which is malware spreading through email attachments and therefore integrates the abstract idea into a practical application.
Response. The examiner acknowledges that a real technical problem is addressed. However, the argument is not sufficient for the following reasons: First, the claim recites only what is done, not how it is done. The malware check limitation simply says perform a malware check without specifying any particular technical mechanism. The embedding limitation simply says embed an image without explaining how I this is technically accomplished. Claims that recite desired results without specifying the technical means of achieving them are not sufficiently integrated into a practical application. Second, the improvement is to security outcomes, not to a computer itself. The messaging server performs he same generic operations it always has. An improvement must be to the functioning of the computer itself, not simply using a computer to archive a functional goal. The server here does not work better as a machine. It simply performs conventional steps in a conventional order.
The applicant argues under BASCOM that non-conventional arrangement of operations provides an inventive concept.
Response. This argument is not persuasive. In BASCOM, an eligibility was found because the claims recited a specific unconventional technical arrangement which is placing the content filter at the ISP level rather than locally. That specific placement was technically unconventional. Claim 1 contains no comparable unconventional arrangement. Each element is conventional: a messaging server (generic computer component); receiving an email (conventional operation); performing a malware check (well known security technique); generating an image (routine image processing); transmitting the message (standard network communication). The applicant has not identified anything specifically unconventional about the arrangement or provided evidence that it was non-routine. For these reasons the rejection under 35 U.S.C. 101 is maintained.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/SARGON N NANO/Primary Examiner, Art Unit 2443