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 .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 20, 2026, has been entered.
Status of the Claims
3. This action is responsive to the following communication: a Request for Continued Examination filed on March 20, 2026 along with Amended Claims and Remarks; Claims 1-4, 6-14, and 16-20 are pending in the case; Claims 1, 11, and 19 are independent claims; Claims 5 and 15 are canceled. This action is made non-final.
Response to Arguments
4. Applicant’s arguments with respect to § 103 rejections, see Remarks filed on March 20, 2026 (see pgs. 6-7), in view of Claim Amendments filed therewith, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Brummer et al. (US 2019/0034059 A1), as further discussed below in § 103 rejection.
5. It is noted that Claim Amendments introduced ambiguities with respect to where the reminder is displayed and how it is interacted with, necessitating § 112 rejections (see below) – for example, independent Claim 1 (and similarly, independent Claims 11 and 19) recites that the chat messages are accessible by any user account, and after receiving a request from a first user account to generate a reminder, a selection of an option to view the reminder is received, but it is not clear in the claim if this option is performed by the first user or if any user account can select an option to view the reminder. Dependent Claims 3 and 6 (and similarly, dependent Claims 11, 13, 16, and 20) recite displaying a representation of the reminder, but it is not clear in the claims if such representation is displayed only to the first user account or to any user account accessing the chat messages. Further clarification is needed in these claims to ensure that they are interpreted in the intended manner and that they are supported by the instant Specification (i.e., clarifying that the selection of the an option to view the reminder is made by the first user account in the first user account’s user interface and that the indication of the reminder is displayed to the first user account in the first user account’s user interface).
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 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.
6. Claims 1-4, 6-14, and 16-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
Independent Claim 1 (and similarly, independent Claims 11 and 19), as amended, contains 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, at the time the application was filed, had possession of the claimed invention. Claim 1 was amended to recite “displaying a user interface comprising graphical view of an online chat channel and a plurality of messages posted to the online chat channel, the online chat channel and messages sent to the online chat channel maintained by a communications platform, the online chat channel accessible by any user account” and “receiving a selection of an option to view the reminder; displaying a representation of the reminder adjacent to the first chat message,” which appears to suggest that the “selection of an option to view the reminder” can be received by any user and/or that the representation of the reminder adjacent to the first chat message can be viewed by any user, which does not appear to be supported by the instant Specification. The instant Specification in Fig. 4 appears to illustrate that the reminder is only visible to the user who makes the request to generate it and there does not appear to be any mention of displaying such reminder to any other user. Dependent claims do not appear to cure the above-noted deficiencies of Claim 1, thus they are also rejected under the same rationale.
7. Claims 1-4, 6-14, and 16-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.
Independent Claim 1 (and similarly, independent Claims 11 and 19), as amended, recites “receiving a selection of an option to view the reminder” and “displaying a representation of the reminder adjacent to the first chat message,” but it is not clear how these limitations are to be interpreted since the claim can be interpreted as permitting any user to select an option to view the reminder and/or to view the representation of the remainder adjacent to the first chat message (see § 112(a) rejection, above). Dependent claims do not appear to cure the above-noted deficiencies of Claim 1, thus they are also rejected under the same rationale.
In addition, dependent Claim 3 (and similarly, dependent Claims 13 and 20) recites “displaying a representation of the reminder within a user interface of a chat application” but independent Claim 1 (and similarly, independent Claims 11 and 19) already recites “a user interface” thus it is not clear if the representation of the reminder is displayed in the same user interface or a different one. Dependent Claim 4 (and similarly, dependent Claim 14) recites “within the user interface” but it is not clear which “user interface” (the one recited in Claim 1 (and similarly, Claim 11) or the one recited in Claim 3 (and similarly, Claim 13), if different) is being referenced in this claim.
Claim Rejections - 35 USC § 103
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
8. Claims 1-4, 6, 7, 10-14, 16, 17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Holland, US 9,787,822 B1, issued on October 10, 2017, in view of Lee et al. (hereinafter Lee), US 11,470,024 B2, issued on October 11, 2022 (filed on April 22, 2020), and further in view of Brummer et al. (hereinafter Brummer), US 2019/0034059 A1, published on January 31, 2019.
With respect to independent Claim 1, Holland teaches a method comprising:
displaying a user interface comprising graphical view of an online chat channel … (see Fig. 1; see also further discussion below regarding “chat messages” and Brummer and Lee).
receiving a request from a first user account to generate a reminder for a first chat message previously sent to the online chat channel by a second user account, the request identifying the first chat message (see Fig. 3 (element 330), col. 2, lines 22-28, col. 3, lines 16-18 and 22-33, col. 7, lines 36-45, showing a user input on a received message to create a reminder; see further discussion of Brummer, below).
in response to the request … to generate the reminder and associate the reminder object with the first chat message (see Fig. 3 (element 340), col. 2, lines 29-34, col. 7, lines 49-56 and 63-66, showing generation of a reminder and associating such reminder with the message).
receiving a selection of an option to view the reminder (see Fig. 6, col. 11, lines 5-42, showing reminder interface and allowing the user to select a particular reminder, and in turn displays the message associated with the reminder to the user).
displaying a representation of the reminder adjacent to the first chat message (see Fig. 6, col. 11, lines 5-42, showing reminder interface and allowing the user to select a particular reminder, and in turn displays the message associated with the reminder to the user; see also discussion of Brummer, below).
receiving … an indication of the remainder to the first user account (see Fig. 3 (element 360), col. 2, lines 37-44, col. 8, lines 53-67, showing that upon occurrence of a trigger (i.e., at a scheduled time), the reminder may be activated).
While Holland illustrates that the reminder generation is performed on the user’s device, Holland makes it clear that different modules described therein, including the “reminder module 230” can be “implemented entirely or partially on a single device or across multiple devices,” including on one or more servers, and a skilled artisan would understand that such implementation would entail transmission of information between the user’s device and the server in order to perform the steps described therein (see Holland, col. 4, lines 38-54). A skilled artisan would readily understand the benefits of implementing the reminder generation of Holland in a client-server architecture in order to allow for the reminder information to be accessible on multiple devices and more easily and efficiently updated and maintained, as is well known in the art.
In addition, It is noted that Holland does not appear to use the term “chat message,” instead Holland refers to “text messages,” but a skilled artisan would understand that the reminders applied to the “text messages” of Holland can be similarly applied to “chat messages” or other types of messages, as illustrated by Lee.
Lee is directed towards providing reminder messages in a chatroom (see Lee, Abstract). Lee teaches that a particular message can have an associated reminder based on time and place (and other attributes) specified in a received message and/or specified by the user (see Lee, col. 12, lines 14-36). Lee teaches that a reminder message is distinguished from other messages in a chatroom, and that the reminder messages are linked to corresponding original messages so that a selection of the reminder message results in the original message (in its original location) is displayed (see Lee, Fig. 9, element 903, col. 15, lines 44-60). Accordingly, it would have been obvious to a skilled artisan, at the time the instant Application was filed, with a reasonable expectation of success, to incorporate the reminder message indicators into chat sessions as suggested by Lee with messages associated with reminders in Holland, in order to ensure that the user can easily distinguish reminder messages in a chat session (see Lee, col. 15, line 61 – col. 16, line 5).
With respect to displaying a representation of the reminder adjacent to the first chat message, it is noted that Holland and Lee both illustrate displaying a reminder adjacent to the corresponding message (see Holland, Fig. 6, col. 11, lines 5-42, stating that “Upon selection of the reminder 650, an input interface (e.g., input interface 224) may receive an indication of the selection of the reminder 650 and pass the indication to a module (e.g., reminder module 230). The module that receives the indication may respond to the receipt of the indication by instructing display of the text message associated with the reminder. In some embodiments, the instructions may direct display of the group or chain of messages corresponding with the text message associated with the reminder. For example, the display may be instructed to display the chain of text messages including the text message associated with the reminder, scroll to the particular text message associated with the text message, and/or to highlight the particular associated text message among the other corresponding text messages of the text message chain.”; see also Lee, Fig. 6 (element 602), col. 14, lines 1-24). While Applicant argues that the reminder of Holland is displayed in a separate display, not adjacent to the chat message (see Remarks filed on March 20, 2026, pg. 7), the teachings of Brummer can be relied upon for an explicit showing of this functionality.
Brummer is directed towards sending reminders to users of electronic messaging applications (see Brummer, ¶ 0004). Brummer discloses that a reminder can be set for a particular message in a chat conversation (see Brummer, Figs. 2-3, ¶¶ 0054-55) and explicitly illustrates that once a reminder is set it is displayed adjacent to the corresponding message in the chat conversation (see Brummer, Fig. 4 (element 58), ¶¶ 0058-59). Accordingly, it would have been obvious to a skilled artisan at the time the instant application was filed, with a reasonable expectation of success, to modify the display of messages in Holland and/or Lee to include the display of corresponding reminders as suggested by Brummer in order to allow the user to view the reminders in the same interface as messages and to easily determine which messages have corresponding reminders associated with them without needing to open a separate window.
While Holland or Brummer do not appear to explicitly disclose an online chat channel accessible by any user account (but see Lee, col. 9, line 63 – col. 10, line 12), a skilled artisan would understand that the messaging application of Holland (see Holland, Fig. 1) as well as chat session illustrated by Brummer (see Brummer Fig. 2) could be readily modified to accommodate different number of users (i.e., group chat) and different conversations (i.e., chat rooms). There is nothing in Holland, Lee, or Brummer that would preclude the described implementation of reminders from being applicable to different chat sessions as was well known in the art at the time the instant Application was filed (i.e., WhatsApp group chat, Group Chat on iPhone’s Messages app, etc.).
With respect to dependent Claim 2, Holland in view of Lee and Brummer discloses the method of claim 1, as discussed above, and Holland further teaches wherein the request comprises the one or more reminder attributes (see Fig. 1 (element 160), col. 3, lines 61-67, col. 7, line 63 – col. 8, line 13).
With respect to dependent Claim 3, Holland in view of Lee and Brummer discloses the method of claim 1, and further suggests in response to receiving the indication, displaying a representation of the reminder within a user interface of a chat application (see Holland, Fig. 7, col. 11, lines 20-49, see Lee, Fig. 6 (element 602), see Brummer, Fig. 4 (element 58), and discussion of Claim 1, above).
With respect to dependent Claim 4, Holland in view of Lee and Brummer suggests the method of claim 3, as discussed above, and further suggests receiving selection of the representation of the reminder; displaying, within the user interface, the online chat channel; and displaying, within the user interface, the first chat message (see Lee, col. 15, lines 55-60; see also Holland, col. 11, lines 23-49).
With respect to dependent Claim 6, Holland in view of Lee and Brummer discloses the method of claim 1, as discussed above, and further suggests in response to receiving the indication, displaying a representation of the reminder adjacent to the first chat message (see discussion of Claim 1, above; see also Lee, Fig. 9, element 903).
With respect to dependent Claim 7, Holland in view of Lee and Brummer discloses the method of claim 1, as discussed above, and while Holland in view of Lee and Brummer does not appear to explicitly illustrate responsive to determining the first chat message has been deleted, transmitting a request to delete the reminder, a skilled artisan would understand that Holland suggests that each reminder is directly associated with its corresponding message (see Holland, col. 8, lines 42-52), and that a reminder would not exist without the corresponding message. This would have been an obvious modification of Holland in view of Lee and Brummer in order to minimize the number of unwanted reminders, particularly for the messages that were not relevant (i.e., deleted) (see also discussion of Claim 1, above, discussing a server implementation).
With respect to dependent Claim 10, Holland in view of Lee and Brummer discloses the method of claim 1, as discussed above, and further suggests transmitting a modification of a first reminder attribute to the communications platform (see Holland, col. 3, lines 61-67, col. 7, line 63 – col. 8, line 13, showing configurable settings; see also discussion of Claim 1, above, discussing a server implementation).
With respect to Claims 11-14, 16, 17, and 19, these claims are directed to a system and a non-transitory computer-readable medium, respectively, comprising steps and/or features recited in Claims 1-4, 6, and 7, respectively, and are thus rejected under the same rationale as those claims, above.
With respect to dependent Claim 20, Holland in view of Lee and Brummer discloses the method of claim 1, as discussed above, and further suggests display a representation of the reminder within a user interface of a chat application adjacent to the first chat message (see Brummer, Fig. 4; see also discussion of Claim 1, above).
Potential Allowable Subject Matter
10. As indicated in the previous Office Actions, dependent Claims 8, 9, and 18 would be allowable if rewritten in independent form to include all of the limitations of the base claim and any intervening claims, and to overcome the rejections under 35 U.S.C. § 112 as set forth in this Office Action.
A reference to specific paragraphs, columns, pages, or figures in a cited prior art reference is not limited to preferred embodiments or any specific examples. It is well settled that a prior art reference, in its entirety, must be considered for all that it expressly teaches and fairly suggests to one having ordinary skill in the art. Stated differently, a prior art disclosure reading on a limitation of Applicant's claim cannot be ignored on the ground that other embodiments disclosed were instead cited. Therefore, the Examiner's citation to a specific portion of a single prior art reference is not intended to exclusively dictate, but rather, to demonstrate an exemplary disclosure commensurate with the specific limitations being addressed. In re Heck, 699 F.2d 1331, 1332-33,216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006,1009, 158 USPQ 275, 277 (CCPA 1968)). In re: Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005); In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1782 (Fed. Cir. 1992); Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989); In re Fracalossi, 681 F.2d 792,794 n.1,215 USPQ 569, 570 n.1 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DINO KUJUNDZIC whose telephone number is (571)270-5188. The examiner can normally be reached M-F 8am - 5pm.
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/DINO KUJUNDZIC/Primary Examiner, Art Unit 3658