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 .
DETAILED ACTION
This office action is in response to amendment/reconsideration filed 2/12/2026, the amendment/reconsideration has been considered. Claims 15-34 are pending for examination.
Response to Arguments
Applicant's arguments been fully considered but they are not persuasive. The applicant argues the following issues.
(A) Rejection under 35 U.S.C. 103(a)
Issue: The applicant argues with respect to independent claims such as claim 15 that the amended limitation overcome the current rejection. Specifically, the applicant argues that “Maag uses keyword matching to identify specific words that are known to signify a side conversation, such as customer keywords, or words in the subject of an email, such as "automatic reply". Maag et al., paragraphs [0228]-[0229]. Those keywords are used along with the number of recipients to determine side conversations. The keyword strategies described in Maag are fundamentally different from "constructing a conversation map of a logical flow within the email thread by analyzing text within the email thread that refers to other portions of conversation within the email thread to determine which portions of the email thread are related to the first subject and which portions are related to the second subject, and by ranking a confidence of each logical flow, the conversation map including a first map related to the first subject and a second map related to the second subject", as recited in amended claim 15.”
Examiner respectfully disagrees.
First of all, the applicant-cited claim limitation is subject to 112 rejections and for the sake of the examination Examiner adopts broadest reasonable interpretation as explained in the 112 rejection section below.
Secondly, see Examiner’s response in the corresponding art rejection section below, wherein it is cited and explained regarding how Maag teaches this amended claim limitation. It is to be noted that the Examiner’s rejection is based on her broadest reasonable interpretations as stated in the 112 rejection section.
Claim Rejections - 35 USC § 112
3. 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.
4. 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.
5. Claims 15-34 are 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.
Claim 15 is amended to recite “constructing a conversation map of a logical flow within the email thread by analyzing text within the email thread that refers to other portions of conversation within the email thread to determine which portions of the email thread are related to the first subject and which portions are related to the second subject, and by ranking a confidence of each logical flow.”
First of all, it is unclear what is considered “other portions of conversation within the email thread” since there is no “portion(s) of conversation” recited at all. Applicant is required to clarify. For the sake of the examination, Examiner assumes any portions.
Secondly, the relationship between the recited entities cannot be definitely determined. For example, “other portions of conversation”, parsed portion that has identified first subject, the parsed portion that has identified second subject, portions that are related to the first subject, or the portions that are related to the second subject. Applicant is required to clarify. For the sake of the examination, Examiner assumes any relationship.
Thirdly, the scope of “constructing a conversation map of a logical flow within the email thread…by ranking a confidence of each logical flow” cannot be definitely determined. It is unclear what is “each logical flow” when the preceding limitation only recites “a logical flow”. Applicant is required to clarify. For the sake of the examination, Examiner interprets as using any criterion for constructing a conversation map of a logical flow.
Claims 16-34 are similarly rejected.
Claim Rejections - 35 USC § 103
6. 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 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.
7. 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 of this title, 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.
8. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
9. Claims 15-34 are rejected under 35 U.S.C. 103 as being unpatentable over Maag et al (US 2019/0205897) in view of Lindsay et al (US 2016/0323235).
As to claim 15, Maag discloses computer-implemented method for converting email threads to chat messages, comprising:
receiving an email thread by a processor ([0018], “identifying, from the plurality of email messages an email message thread comprising a plurality of emails relating to an email subject”);
parsing the email thread by a processor to determine a plurality of participants ([0018], “identifying, from the plurality of email messages an email message thread comprising a plurality of emails relating to an email subject, the email message thread comprises a side conversation, the side conversation comprising one or more email messages having fewer participants than an initial email in the email message thread, and the first review data collection strategy comprises identifying, as the related data items, at least one electronic trade data item having a trader identifier associated with a trader matching a participant of the side conversation”, wherein identifying the side conversion with fewer participants indicates a plurality of participants);
parsing the email thread by the processor using machine learning (“XVIII. Keywords and Machine Learning”; [0286], “additionally, machine learning algorithms, and/or any feedback gathered from an analyst about past review collections created by the data analysis system (e.g., identifying true positives, false positives, etc.), may be used as additional initial item identification, review collection, or scoring strategies”), to identify at least a first subject and a second subject different from the first subject, the first subject and the second subject being selected by the processor from a pre-populated list or being derived by the processor on-the-fly ([0018], “identifying, from the plurality of email messages an email message thread comprising a plurality of emails relating to an email subject, the email message thread comprises a side conversation, the side conversation comprising one or more email messages having fewer participants than an initial email in the email message thread, and the first review data collection strategy comprises identifying, as the related data items, at least one electronic trade data item having a trader identifier associated with a trader matching a participant of the side conversation”; [0165], “one particular review collection strategy may be to find related side conversations, as disclosed herein, which may identify all communications between two traders who are having the side conversation regarding a suspect trade, and to add those to the review collection”; [0208]-[0210], “The search results may return a side conversation (or multiple side conversations)…”; [0229], “Other keywords may also be used to filter out side conversations instead”, wherein the subject/keywords is selected on the fly or from a pre-defined list);
constructing a conversation map of a logical flow within the email thread by analyzing text within the email thread that refers to other portions of conversation within the email thread to determine which portions of the email thread are related to the first subject and which portions are related to the second subject, and by ranking a confidence of each logical flow (see 112 rejection and Examiner’s interpretation therein. See citation above, wherein the side conversations are based on different subjects/keywords , and wherein the “multiple side conversations” within the email thread constitute a conversation map of a logical flow within the email thread, and a first side conversation of the multiple side conversations constitutes a first map related to the first subject and a second side conversation of the multiple side conversations constitutes a second map related to the second subject, each corresponds to a sub-logical flow or another logical flow. It is to be noted that the claim does not require a specific type of map. See also [0212[; [0230], wherein scoring side conversations indicates a confidence lavel), the conversation map including a first map related to the first subject and a second map related to the second subject (see citation and explanation above);
creating, by the processor a fist group associated with the first subject and a second email group associated with the second subject, wherein the first email group including at least a first participant from the plurality of participants exchanging emails related to the first subject, and the second group including at least a participant from the plurality of participants exchanging emails related to the second subject (see citation above, wherein participants in a first side conversation forms a first group associated with the first subject, and participants in a different side conversation forms a second group associated with the second subject),
but does not expressly disclose that the created groups are collaborative chat groups within a collaborative environment, or pre-populating, by the processor, the first collaborative chat group and the second collaborative chat group with first messages and second messages, respectively, based on the conversation map of the logical flow, wherein the first messages containing portions of the email thread between the participants exchanging emails related to the first subject, and the second messages containing portions of the email thread between the participants exchanging emails related to the second subject, or causing, by the processor, transmission of an invitation to at least one of the participants in at least one of the first collaborative chat group and the second collaborative chat group to join one of the first collaborative chat group and the second collaborative chat group.
Lindsay discloses a concept that each created group is a collaborative chat group within a collaborative environment, and a concept of pre-populating, by a processor, each collaborative chat group with respective messages, based on a conversation map of a logical flow, wherein the respective messages containing portions of the email thread between the participants exchanging emails related to a respective subject; and causing, by the processor, transmission of an invitation to at least one of the participants in at least one respective collaborative chat group to join one of the respective collaborative chat group ([0076]-[0077], “the email conversation is parsed by the processor to obtain a body of the email conversation, which may be further parsed into a plurality of email replies and file attachments. The IM request then further comprises the body of the email conversation, the plurality of email replies, and the file attachments. At operation 420, a sender and one or more recipients are identified by the processor. In certain embodiments, the sender and the one or more recipients are identified from at least the email request and the email conversation”; See also claim 4, “wherein the body of the email conversation is further parsed into a plurality of email replies, the IM service adding each email reply as a separate message to the IM chat session” wherein the plurality of chat messages in the IM chat session correspond to the respective messages. Also see figure 4, steps 430-460; [0081]; see [0032]-[0033], “the subject of the group chat is extracted from the subject of the email and utilized within the IM chat session. After the IM server 134 has created the chat, the IM server 134 invites 214 all of the email recipients to the chat as members of the chat”).
Before the effective filing date of the invention, it would have been obvious for an ordinary skilled in the art to combine Maag with Lindsay. The result of the combination would have been to convert each side conversation of multiple conversations disclosed by Maag into a respective chat conversation as disclosed by Lindsay. The suggestion/motivation would have been enabling
chat conversations based on email communications (Lindsay, abstract).
As to claim 22, see similar rejection to claim 15.
As to claim 29, see similar rejection to claim 15.
As to claim 16, Maag-Lindsay discloses the computer-implemented method of claim 15, wherein parsing the email thread to determine the plurality of recipients comprises parsing a text of the email thread for a name, a partial name, or an alias (Lindsay, [0031], “The gateway can determine the recipients from email address located either in the header portion of the email or found within an email message string”; see also [0076]-[0077]).
As to claim 23, see similar rejection to claim 16.
As to claim 30, see similar rejection to claim 16.
As to claim 17, Maag-Lindsay discloses the computer-implemented method of claim 16, further comprising mapping a contact list to the name, the partial name, or the alias to determine the plurality of participants (Lindsay, [0031], “The gateway then validates 210 that all of the recipients have valid accounts with the IM server 134”; [0049], “the forwarding recipient address can be added as a "contact" either by the user or by the administrator of the existing mail service 330. The user can select this address from their contact list when initiating a process to migrate an email conversation to IM”).
As to claim 24, see similar rejection to claim 17.
As to claim 31, see similar rejection to claim 17.
As to claim 18, Maag-Lindsay discloses the computer-implemented method of claim 15, wherein parsing the email thread to determine the plurality of recipients comprises parsing a FROM, a TO, a CC or a BCC field (Lindsay, [0030]-[0031], “receives the message and verifies that the sender is authorized… validates that all of the recipients have valid accounts… the members of the group chat are the recipients of the email. The gateway can determine the recipients from email address located either in the header portion of the email”, wherein To, From, CC, and BCC are the only fields of an email header that contains sender/recipients’ email addresses. Also see Maag, [0053]).
As to claim 25, see similar rejection to claim 18.
As to claim 32, see similar rejection to claim 18.
As to claim 19, Maag-Lindsay discloses the computer-implemented method of claim 15, further comprising:
parsing the email thread for files, links, notes, events or tasks; and pre-populating at least one of the first collaborative chat group and the second collaborative chat group with the files, links, notes, events or tasks (Lindsay, [0046], “The system 300 can also be configured to place additional information in the IM chat. For example, the mail to IM gateway 360 could parse the message body and add any text to the chat and any attachments as file transfers”; [0076], “the email conversation is parsed by the processor to obtain a body of the email conversation, which may be further parsed into a plurality of email replies and file attachments. The IM request then further comprises the body of the email conversation, the plurality of email replies, and the file attachments.”).
As to claim 26, see similar rejection to claim 19.
As to claim 33, see similar rejection to claim 19.
As to claim 20, Maag-Lindsay discloses the computer-implemented method of claim 15, wherein parsing the email thread comprises parsing the email thread for context clues (Lindsay, [0032], “a group chat be created…the subject of the group chat is extracted from the subject of the email and utilized within the IM chat session”).
As to claim 27, see similar rejection to claim 20.
As to claim 34, see similar rejection to claim 20.
As to claim 21, Maag-Lindsay discloses the computer-implemented method of claim 15, further comprising:
determining that one of the plurality of participants does not have a collaboration account (Lindsay, [0031], “The gateway then validates 210 that all of the recipients have valid accounts with the IM server 134. If not, the gateway 140 attempts to associate the recipients without valid accounts with guest accounts”); and
in response to determining that the participant does not have a collaboration account, transmitting an invitation to a collaboration system (Lindsay, [0031], “The gateway then validates 210 that all of the recipients have valid accounts with the IM server 134. If not, the gateway 140 attempts to associate the recipients without valid accounts with guest accounts”; [0033], “After the IM server 134 has created the chat, the IM server 134 invites 214 all of the email recipients to the chat as members of the chat”).
As to claim 28, see similar rejection to claim 21.
Conclusion
10. 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 extension fee 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 date of this final action.
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/HUA FAN/ Primary Examiner, Art Unit 2458