Prosecution Insights
Last updated: May 29, 2026
Application No. 18/373,211

CONTEXTUAL RESPONSE SUGGESTIONS USING SECONDARY ELECTRONIC DEVICE

Final Rejection §103
Filed
Sep 26, 2023
Priority
Apr 28, 2023 — provisional 63/462,956
Examiner
SHIN, SEONG-AH A
Art Unit
2659
Tech Center
2600 — Communications
Assignee
Apple Inc.
OA Round
2 (Final)
79%
Grant Probability
Favorable
3-4
OA Rounds
0m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 79% — above average
79%
Career Allowance Rate
326 granted / 415 resolved
+16.6% vs TC avg
Strong +21% interview lift
Without
With
+20.9%
Interview Lift
resolved cases with interview
Typical timeline
2y 7m
Avg Prosecution
21 currently pending
Career history
437
Total Applications
across all art units

Statute-Specific Performance

§101
8.4%
-31.6% vs TC avg
§103
82.6%
+42.6% vs TC avg
§102
6.2%
-33.8% vs TC avg
§112
1.0%
-39.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 415 resolved cases

Office Action

§103
DETAILED ACTION 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 . Status of Claims Claims 1-8 and 11-20 are pending in this application. Claims 9 and 10 are canceled. Response to Arguments Regarding Rejection under 35 U.S.C. 103 Applicant’s arguments with respect to rejections have been fully considered but they are not persuasive. Regarding Claim 1, the Applicant argues that the rejection under 35 U.S.C. 103 is improper because Jina in view of Sharifi does not teach and suggest the newly amended limitation, "causing an audible prompt to be provided at a second electronic device, wherein the second electronic device corresponds to headphones communicatively coupled to the first electronic device wherein the input responsive to the audible prompt includes at least one of a speech input and a head gesture” (REMARKS, on page 8, 3rd paragraph – page 9). However, the Examiner respectfully disagrees. The rejection under 35 U.S.C. 103 is still proper because Examiner conducted further consideration and Jina teaches and suggests the newly amended limitation. Please, see the rejection below. 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 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 1-8, 11-12, 15, and 17-20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Jina et al., (US Pub. 2020/0374243) in view of Sharifi et al., (US Pub. 2018/0052909) and further in view of Rakshit et al., (US Pub. 2020/0098358). Regarding claim 1, Jina discloses a first electronic device, comprising: one or more processors; a memory; and one or more programs, wherein the one or more programs are stored in the memory and configured to be executed by the one or more processors, the one or more programs including instructions for: receiving a message (Figs. 8A, 8B, 10, [0238]-[0242][0264][0265] receiving a text message 810); determining [a] response message based on the received message (Figs. 8A-8C, 10, [0238]-[0242][0255][0264][0265] determining the one or more suggested inputs as response suggestions to the message); causing an audible prompt to be provided at a second electronic device ([0026][0232]-[0235] generating output responses to the user in an audible form), wherein the second electronic device corresponds to headphones communicatively coupled to the first electronic device (Figs. 1, 2A and 8A, [0030][0036][0044][0145][0071][0240] a user device 104/200/802/804 is a portable multifunctional such as Apple Watch®, iPhone® and earphones/headphones and include a headset jack which provides an interface between audio circuitry and removable audio input/output peripherals, such as a headset with both output (e.g., a headphone) and input (e.g., a microphone)), and the audible prompt includes the received message and an indication of the response message (Figs. 8A-8C, 10, [0238]-[0242][0255][0264][0265] providing the one or more suggested inputs as response suggestions to the message); in accordance with a determination that an input responsive to the audible prompt is received from the second electronic device, wherein the input responsive to the audible prompt includes at least one of a speech input and a head gesture (Fig. 8B, [0044][0145][0194] a user device 104/200/802/804 receives voice input via an interface using a headset jack or by utilizing one or more response functions such as a dictation function): in accordance with a determination that the received input corresponds to an acceptance of the audible prompt, transmitting the response message (Figs. 8D-9B, [0238]-[0244][0258] “in response to selecting a suggested input … according to the suggested input “Yes” is sent to the device associated with message 810”). Jina does not explicitly teach the bracket limitation however Sharifi does explicitly teach the bracketed limitation: determining [a] response message based on the received message (Fig. 4B, determining a response message 336A); and [in accordance with a determination that the received input corresponds to denial of the audible prompt, forgoing transmitting the response message] ([0035]-[0038] if the first suggestion 412 may be inadequate, the first suggestion 412 may not be transmitted to the sender). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to incorporate the method of Providing message response suggestions as taught by Jina with the method of suggesting replies and allowing an user to select as taught by Sharifi to improve techniques for suggesting electronic messages based on user activity and other context are presented and a level of customer engagement between customers and corresponding digital platforms (Sharifi, [0021]). Regarding claim 2, Jina in view of Sharifi discloses the device of claim 1, and Jina further discloses: wherein the received message includes a message received as part of an instant messaging conversation on the first electronic device (Jina, [0043][0077] receiving a message by communicating via instant messaging module). Regarding claim 3, Jina in view of Sharifi discloses the device of claim 1, and Jina further discloses: wherein determining the response message comprises: identifying a query associated with the received message; and obtaining, based on the identified query, results from at least one data source, wherein the response message is generated based on the results ([0204][0210][0241][0242][0269] identifying user/input intent and generating a plurality of response suggestion). . Regarding claim 4, Jina in view of Sharifi discloses the device of claim 3, and Jina further discloses: wherein the at least one data source includes at least one of a calendar application, a messages application, an e-mail application, a notes application, a maps application, and a contacts application (Jina, [0253] “the context information corresponding to the message response history includes a message sender identifier”). Regarding claim 5, Jina in view of Sharifi discloses the device of claim 1. Jina does not explicitly teach however Sharifi does explicitly teach: wherein determining the response message comprises: obtaining a plurality of results based on the received message; and identifying a result from the plurality of results having a highest confidence score, wherein the response message is generated based on the identified (Sharifi, [0032] providing a response message suggested with having a highest respective probability score). Regarding claim 6, Jina in view of Sharifi discloses the device of claim 3, and Jina further discloses: in accordance with a determination that a state of the first electronic device corresponds to a predetermined state, determining the response message using at least one parameter associated with the state of the electronic device ([0267] “the context information corresponding to the message response history includes at least one of user location information”). Regarding claim 7, Jina in view of Sharifi discloses the device of claim 1, and Jina further discloses: the one or more programs including instructions for: identifying a usage frequency associated with prior prompt acceptances from a user; in accordance with a determination that the usage frequency meets or exceeds a threshold usage frequency, causing the audible prompt to be provided at the second electronic device; and in accordance with a determination that the usage frequency does not exceed the threshold usage frequency, forgoing causing the audible prompt to be provided at the second electronic device (Jina, [0150][0256][0257] suggested inputs may be provided or not be provided based on that the user may frequently has been or has not been provided suggested input for a threshold number of times; [0026][0232]-[0235] generating output responses to the user in an audible form). Regarding claim 8, Jina in view of Sharifi discloses the device of claim 1, and Jina further discloses: the one or more programs including instructions for: identifying a response frequency associated with a message sender of the received message; in accordance with a determination that the response frequency meets or exceeds a threshold usage frequency, causing the audible prompt to be provided at the second electronic device; and in accordance with a determination that the response frequency does not exceed the threshold usage frequency, forgoing causing the audible prompt to be provided at the second electronic device (Jina, [0150][0253][0256][0257] suggested inputs may be provided or not be provided based on the context information corresponding to the message response history includes a message sender identifier; [0026][0232]-[0235] generating output responses to the user in an audible form). Regarding claim 11, Jina in view of Sharifi discloses the device of claim 1, and Jina further discloses: wherein the input responsive to the audible prompt includes a touch input ([0199][0258] the user may choose to select a provided response suggestion inputs via I/O interface, e.g., from a touch screen). Regarding claim 12, Jina in view of Sharifi discloses the device of claim 1, and Jina further discloses: wherein the indication of the response message includes less than a threshold number of parameters from the determined response message ([0243]-[0245] “a predetermined number of suggested inputs corresponding to the response categories may correspond to a number of response suggestions, per response category”). Regarding claim 15, Jina in view of Sharifi discloses the device of claim 1, and Jina further discloses: the one or more programs including instructions for: in accordance with a determination that an input responsive to the audible prompt is not received from the second electronic device, forgoing transmitting the response message (Sharifi, [0035]-[0038] if the first suggestion 412 may be inadequate, the first suggestion 412 may not be transmitted to the sender). Regarding claim 17, Jina in view of Sharifi discloses the device of claim 1, and Jina further discloses: the one or more programs including instructions for: in response to receiving the message, determining a plurality of response messages based on the received message, wherein the indication of the response message includes a plurality of response options (Jina, Figs. 8A-8C, 10, [0238]-[0242][0255][0264][0265] determining and providing suggested input options as response suggestions to the message). Regarding claim 18, Jina in view of Sharifi discloses the device of claim 17, and Jina further discloses: the one or more programs including instructions for: receiving, as the audible input responsive to the prompt, a user selection of a response option from the plurality of response options; and identifying a response message from the plurality of response messages based on the audible input responsive to the prompt, wherein the transmitted response message corresponds to the identified response message (Jina, Figs. 8A-8C, 10, [0238]-[0242][0255][0264][0265] providing the one or more suggested inputs as response suggestions to the message). Regarding claims 19 and 20, Claims 19 and 20 are the corresponding method and medium claims to a system claim 1. Therefore, claims 19 and 20 are rejected using the same rationale as applied to claim 1 above. Claims 13, 14, and 16 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Jina et al., (US Pub. 2020/0374243) in view of Sharifi et al., (US Pub. 2018/0052909) and further in view of Whitmore et al., (US Pub. 2024/0296275, filed on 2023-03-03). Regarding claim 13, Jina in view of Sharifi discloses the device of claim 1. Jina in view of Sharifi does not explicitly teach however Whitmore does explicitly teach: the one or more programs including instructions for: in accordance with a determination that the determined response message includes less than a threshold number of words, providing the determined response message as the indication of the response message (Whitmore, [0040] requesting for generating replies to a word maximum, e.g., 5-7 words). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to incorporate the method of Providing message response suggestions as taught by Jina in view of Sharifi with the method of using guardrails that prevent unnecessary AI model processing as taught by Whitmore to improve the suggested compose content for the user and the generated reply efficiently (Whitmore, [0029][0046]). Regarding claim 14, Jina in view of Sharifi discloses the device of claim 1. Jina in view of Sharifi does not explicitly teach however Whitmore does explicitly teach: the one or more programs including instructions for: in accordance with a determination that the determined response message includes more than a threshold number of words: modifying the determined response message by reducing a length of the determined response message, and providing the modified response message as the indication of the response message (Whitmore, [0042][0068] the shortened summaries 224 are limited in size to the maximum number of words included in the length-limiting portion of the text prompt). Regarding claim 16, Jina in view of Sharifi discloses the device of claim 15, and Jina further discloses: the audible prompt ([0026][0232]-[0235] generating output responses to the user in an audible form), Jina in view of Sharifi does not explicitly teach however Whitmore does explicitly teach: wherein the determination that an input responsive to the [audible] prompt is not received from the second electronic device includes a determination that an input responsive to the [audible] prompt is not received within a predetermined time period (Whitmore, [0041] the first text prompt is only triggered after a focus/interaction threshold for the selected message 222 is met, such as the user interacting with the message (scrolling) or the message being opened for a minimum threshold duration). Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached form PTO-892. 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. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEONG-AH A. SHIN whose telephone number is (571)272-5933. The examiner can normally be reached 9 AM-3PM. 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, Pierre-Louis Desir can be reached at 571-272-7799. 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. Seong-ah A. Shin Primary Examiner Art Unit 2659 /SEONG-AH A SHIN/ Primary Examiner, Art Unit 2659
Read full office action

Prosecution Timeline

Show 1 earlier event
Mar 04, 2025
Response after Non-Final Action
Oct 14, 2025
Non-Final Rejection mailed — §103
Jan 12, 2026
Applicant Interview (Telephonic)
Jan 12, 2026
Examiner Interview Summary
Jan 14, 2026
Response Filed
Apr 03, 2026
Final Rejection mailed — §103
May 20, 2026
Applicant Interview (Telephonic)
May 27, 2026
Examiner Interview Summary

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Prosecution Projections

3-4
Expected OA Rounds
79%
Grant Probability
99%
With Interview (+20.9%)
2y 7m (~0m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 415 resolved cases by this examiner. Grant probability derived from career allowance rate.

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