Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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 or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 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 his invention.
Claims 1-9, 11-17 and 19-21 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 claims now contain 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.
Support for the newly added language in the independent claims cannot be found in the specification as filed. For example, section [0038] of the published application 2023/0396707 teaches including all of the characters of the first message when the number of characters is below the threshold limit, but there is no teaching of deleting or not including any/all of the characters so that none of the characters in the first message is transmitted when the threshold limit is exceeded (as now recited). Correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-2,4-5,7,12-14,16, and 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over U.S. Pub. 2001/0034225 to Gupte in view of U.S. Pub 2008/0298496 to Hunt and either one of 2010/0009653 to Shkolnikov or 2006/0154666 to Kono.
Regarding claims 1, 12 and 20 Gupte teaches a method comprising:
receiving, at a computing device, a first message addressed to a user, the first message comprising first text data (see server system 18/20 which receives an email (first message of “first text data”) addressed to a cellphone user, and see steps 104/204 in Figs. 4/5 as described in sections [0016] to [0018], [0025] and [0033]);
converting, via the computing device, the first text data to audio data (see system server 18/20 which converts the first text data into audio in steps 120/224 in Figs. 4/5 as described in sections [0020], [0030] to [0031] and [0036] to [0038]);
generating, via the computing device, a second message comprising a telephonic number for enabling access to the audio data, see sections [0022], [0029] and [0031], which teach that “a separate telephone number is embedded in the SMS message (“second message”) which when dialed by the cell phone, delivers the audio to the cell phone);
determining, via the computing device, a number of characters of the first text data of the first message, the determination further comprising comparing the number of characters to a predefined number (see section [0027], which teaches that SMS text messages have a text character limit of 160 characters).
Regarding the features of:
“conditionally communicating, via the computing device, the first text data of the first message based on the determination, the second message further comprising the first text data of the first message used to generate the audio data when the determined number of characters of the first text data is less than the predefined number (sections [0022], [0027], [0029] and [0031] which use the text data to generate the audio); and
communicating, via the computing device, the second message to the user”, the feature of “conditionally communicated” is interpreted to mean that the condition of less than 160 characters is met, so all the characters are included in the second message.
Therefore, sections [0022], [0027], [0029] and [0031] of Gupte would teach generating the text data, and the SMS message protocols in Gupte would compare the number of characters in the email to the text message limit (see section [0027]) of 160 or 250 characters, in order to create a single text message, or to create multiple SMS text messages (where each text message does not exceed the 160 character limit).
So in the condition or case that the condition of less than 160 characters is met, all the characters are included in the second message, the second message would then be “conditionally communicated”). For completeness however, as Gupte implicitly teaches this comparing/converting and “conditionally communicating” a single message if less than 160 total characters, Hunt is added.
In an analogous art, Hunt teaches a system which converts a received email to an SMS text message. See for example, the email-to-SMS gateways 120 and 125 shown in Fig. 1. As described while referring to the method flowcharts in Figs. 2-3, section [0014] explicitly teaches the conversion of email to SMS format. As further described in sections [0047] to [0052], Hunt teaches that the SMS character limit (of 160 characters) is used to determine if the original email message needs to be “fragmented” or broken into multiple messages, where each message is less than the 160 character SMS limit. For example, step 310 in Fig. 3 “fragment?”, uses the 160 character SMS limit.
Therefore, as the standardized SMS protocols in Gupte would implicitly compare the amount of text characters to the system text message limit and as Hunt explicitly teaches conversion of the text in the first email into the SMS text message by using the SMS text character limit comparison, it would have been obvious to one of ordinary skill to modify Gupte with the email to SMS text conversion and character limit comparisons of Hunt, so that it is ensured that all the characters are less than the text limit, so that one message may be (“conditionally”) communicated and/or fragmented when necessary.
Regarding the amendment now reciting that “the second message including none of the first text data otherwise” this is interpreted to mean that if the character limit is exceeded, none of the original email message is communicated in the second text message. In order to address this feature either one of Shkolnikov or Kono is added.
In an analogous art, Shkolnikov teaches a system which converts a received email to an SMS/text message. As described in section [0041], Shkolnikov teaches that the conversion of email to text/SMS format may exceed the SMS character limit, and when the first text/SMS message provides only some information when long emails are fragmented into multiple text/SMS messages this burdens the system and wastes resources (implying that no information is better than some information). Similarly, Kono teaches a system which converts a received email to an SMS text message, and as described in steps 265-280 in section [0126], Kono teaches that when the SMS character limit is exceeded, the user is given the ability to delete the entire message. Therefore, Shkolnikov teaches the reason to automatically provide all or none of the first message and Kono teaches allowing the user to manually delete all the message.
Therefore, as the standardized SMS protocols in Gupte/Hunt compare the amount of text characters to the system text message limit and as either one of Shkolnikov or Kono teach (automatic or manual) conversion of the text in the first email into the SMS text message (which includes providing all the message when under the limit and not including any of the message when over the limit), it would have been obvious to one of ordinary skill to modify Gupte/Hunt with the email to SMS text conversion and character limit comparisons of Shkolnikov or Kono, for the reasons as cited in those portions of those references.
Regarding claim 2, which recites “wherein the second message further comprises information identifying a sender of the first message”, see for example, section [0072] of Hunt, which teaches including information in the text message which identifies the sender, as recited.
Regarding claims 4 and 13, which recite “wherein the second message is a text message”, as described above, the second message sent to the cellphones in Gupte and Hunt is an SMS text message, as recited.
Regarding claims 5 and 14, which recite “wherein the predefined number of characters is indicative of a size limitation of the second message”, as described above, see section [0027] of Gupte, and sections [0047] to [0052] of Hunt, which teach that the SMS text messages have a character limit, as recited.
Regarding claims 7 and 16, which recite “further comprising: receiving, via the computing device, an indication of an interaction with the telephonic number within the second message; and presenting the audio data to the user in response to the received indication”, see sections [0022], [0027], [0029] and [0031] of Gupte, which teach that a separate telephone number is embedded in the SMS message, which when dialed by the cell phone, delivers the audio to the cell phone, as recited.
Claim 3, 8-9,11,13,17,19 and 21 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the references as applied to claim 1 above, and further in view of U.S. Patent Pub. 2013/0165086 to Doulton.
Regarding claim 3, which recite “wherein the first message is an electronic mail message and the information identifying a sender of the first message comprises the sender’s name and electronic mail address”, as Gupte and Hunt do not explicitly show the incoming email, Doulton is added.
In an analogous art, Doulton teaches a system which allows mobile device users to send and receive messages which may be converted in format from audio to text/email and vice versa. See for example, sections [0005] to [0026] which describe the conversions of messages (spoken and text), and Figs. 32 and 35-36, which show screens of voice to text email and SMS messages. Sections [0216] and [0338] also explicitly teach the SMS character limit, sections [0223] and [0438] teach a “30 second limit” on spoken replies (in order to limit the number of characters) in a single SMS response message as in [0439]. Regarding the incoming email, see for example, Figs. 35-36 of Doulton, and see sections [0227] and [0371] which show the name and reply address of the sender, as recited.
Therefore, as both Gupte/Hunt and Doulton teach conversion of email to SMS and as Doulton mor explicitly shows the sender’s name and electronic mail address (which would be in Gupte/Hunt), it would have been obvious to one of ordinary skill to modify Gupte/Hunt with the conventional features of email taught in Doulton.
Regarding claims 8 and 17, which recite “further comprising: receiving, via the computing device, an audio response from the user; and communicating, via the computing device, the audio response via a third message to a number of recipients”, see section [0031] of Gupte, which teaches that the user of the cellphone responds via voice to the original email message, which is then sent as an email to the original sending user. Regarding a plurality of recipients, if the original email was sent to plurality of people/users it would have been obvious to send the user’s response as “reply all” to the plurality of recipients as in section [0227] of Doulton’s.
Regarding claims 9, 13 and 21, which recite “wherein the third message is an electronic mail message and the audio response is embedded as an audio file in the electronic mail message”, see section [0318] of Doulton and section [0031] of Gupte, which teach that the reply email also includes the audio wav file, in the “third message”.
Regarding claims 11 and 19, which recite “wherein the third message is a text message”, as described above, see section [0027] of Gupte, sections [0216], [0338] to [0340] and [0439] of Doulton and sections [0047] to [0052] of Hunt, which teach that the SMS text messages have a character limit.
Claims 6 and 15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the references as applied to claims 1 and 12 above, and further in view of either one of U.S. Patent Pub. 2010/0135472 to Watanabe or U.S. Patent Pub. 2009/0149167 to Patel.
Regarding claims 6 and 15, which recites “wherein the converting is performed by an interactive voice response (IVR) unit”, as Gupte and Hunt do not explicitly teach using an IVR for the conversion, either one of Watanabe or Patel is added.
In an analogous art, Watanabe and Patel teach systems which send text messages to users indicating voicemails are present. Watanabe and Patel also teach using IVRs which convert text to speech and vice versa. See for example, section [0067] of Watanabe and sections [0410], [0414] and [0428] of Patel.
Therefore, as Gupte/Hunt teach conversion of messages and as either one of Watanabe and Patel teach using IVRs for the message conversion, it would have been obvious to modify Gupte/Hunt to use IVRs, as they conventionally perform this function.
Response to Arguments
Applicant's arguments filed 1-30-26 have been fully considered but they are not persuasive and/or moot in view of the new grounds of rejection.
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/STEVEN S KELLEY/Primary Examiner, Art Unit 2646