DETAILED ACTION
Status of Claims
0. This is a Final office action in response to communication received on 02/11/2026. Claims 1-4, 8, 10-15, and 19 are pending and are examined herein.
Claim Rejections - 35 USC § 112
1. 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.
Claims 1-4, 8, and 10-11 are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 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 pre-AIA the applicant regards as the invention.
As per claim 1, it recites a method claim. The claim at least in part recites “verifying from the selected message link whether the user has consented to receiving operator data indicating acceptance of receipt of information from associated with the predetermined operator chatroom has been received from the user terminal” however this is a contingent limitation in a method claim, MPEP 2111.04 II. Contingent Limitations. The Examiner interpreted this as user could provide consent OR not. In the event the user has consented, the user would receive a non-ephemeral or permanent message, see at least as-filed specification [0078], which means that none of the following limitations which are now claimed as a non-volatile message associated with one or more functions are required to occur in a method claim. As such, due to recitation of above noted and underlined (emphasis added) the Applicant fails to present one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention because the remaining claim limitations are claimed as if the user has positively not provided consent and as a result the chatroom is configured as showing volatile temporary message - which results in indefiniteness as the no consent from the user is not positively claimed and the Examiner is not at liberty to import claim limitations. As such, the Applicant is requested to claim the above noted recitation as positively and definitely occurring to avoid indefiniteness in association with whether marketing message to be shown, based on user election of consent or lack thereof to receiving marketing message(s), is a permanent or temporary one. Appropriate correction is required.
As per claims 2-4, 8, and 10-11, they are rejected as they fail to cure the above noted deficiency with respect to claim 1.
Claim Rejections - 35 USC § 101
2. 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 1-4, 8, 10-15, and 19 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. Next using the 2019 Revised Patent Subject Matter Eligibility Guidances (hereinafter 2019 PEG) the rejection as follows has been applied.
Under step 1, analysis is based on MPEP 2106.03, Claims 1-4, 8, 10-11 are a method; claims 12-15 and 19 are a computer device or an apparatus. Thus, each claim 1-4, 8, 10-15, and 19, on its face, is directed to one of the statutory categories (i.e., useful process, machine, manufacture, or composition of matter) of 35 U.S.C. §101.
Under Step 2A Prong One, per MPEP 2106.04, prong one asks does the claim recite an abstract idea, law of nature, or natural phenomenon? In Prong One examiners evaluate whether the claim recites a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. While the terms "set forth" and "described" are thus both equated with "recite", their different language is intended to indicate that there are two ways in which an exception can be recited in a claim. For instance, the claims in Diehr, 450 U.S. at 178 n. 2, 179 n.5, 191-92, 209 USPQ at 4-5 (1981), clearly stated a mathematical equation in the repetitively calculating step, and the claims in Mayo, 566 U.S. 66, 75-77, 101 USPQ2d 1961, 1967-68 (2012), clearly stated laws of nature in the wherein clause, such that the claims "set forth" an identifiable judicial exception. Alternatively, the claims in Alice Corp., 573 U.S. at 218, 110 USPQ2d at 1982, described the concept of intermediated settlement without ever explicitly using the words "intermediated" or "settlement."
Next, per 2019 PEG, to determine whether a claim recites an abstract idea in Prong One, examiners are now to: (I) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (II) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 PEG. If the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I, analysis should proceed to Prong Two in order to evaluate whether the claim integrates the abstract idea into a practical application.
(I) An abstract idea as recited per abstract recitation of claims 1-4, 8, 10-15, and 19 [i.e. recitation with the exception of additional elements as noted and analyzed under step 2A prong two and step 2B inquiries below, i.e. under step 2A prong one the Examiner considered claim recitation other than the additional elements (which once again are expressly noted below) to be the abstract recitation] (II) is that of providing temporary marketing information when user does not or has not consented to receiving marketing message which is certain methods of organizing human activity.
The phrase "Certain methods of organizing human activity" applies to fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Further, see MPEP 2106.04(a)(2) II. A-C.
Therefore, the identified limitations fall within the subject matter groupings of abstract ideas enumerated in Section I of 2019 PEG, thus analysis now proceeds to Prong Two in order to evaluate whether the claim integrates the abstract idea into a practical application.
Under Step 2A Prong Two, per MPEP 2106.04, prong two asks does the claim recite additional elements that integrate the judicial exception into a practical application? In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. If the additional elements in the claim integrate the recited exception into a practical application of the exception, then the claim is not directed to the judicial exception (Step 2A: NO) and thus is eligible at Pathway B. This concludes the eligibility analysis. If, however, the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception (Step 2A: YES), and requires further analysis under Step 2B (where it may still be eligible if it amounts to an ‘‘inventive concept’’).
Next, per 2019 PEG, Prong Two represents a change from prior guidance. The analysis under Prong Two is the same for all claims reciting a judicial exception, whether the exception is an abstract idea, a law of nature, or a natural phenomenon. Examiners evaluate integration into a practical application by: (I) Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (II) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit.
Accordingly, the examiner will evaluate whether the claims recite one or more additional element(s) that integrate the exception into a practical application of that exception by considering them both individually and as a whole.
The claim elements in addition to the abstract idea, i.e. additional elements, as recited in claims 1-4, 8, 10-15, and 19 at least are a computer device comprising at least one processor configured to execute computer-readable instruction in a memory, and message link to a chatroom wherein chatroom displays volatile temporary messages which are converted if a user performs a function (such as share, forward, or reply associated with volatile message) associated with the temporary message and deleted if associated function with the temporary message is not performed (per claim 1); (claims 5-6), a link (claim 9), a non-transitory computer-readable recording medium storing a computer program for causing a computer device to implement (claim 11). Remaining claims either recite the same additional element(s) as already noted above or simply lack recitation of an additional element, in which case note prong one as set forth above.
As would be readily apparent to a person having ordinary skill in the art (hereinafter PHOSITA), the additional elements are generic computer components. The additional elements are simply utilized as generic tools to implement the abstract idea or plan as "apply it" instructions (see MPEP 2106.05(f)). The additional elements are generic as they are described at a high level of generality, see at least Figs. 1-2 and their associated disclosure. The processor executing the "apply it" instruction is capable of communicating/sending/receiving data over a network, note receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014). The abstract idea is intended to be merely carried out in a technical environment such as network based communication environment e.g. Internet particularly in chatroom type communication channel in which messages are to be managed based on user action(s) or lack thereof (see MPEP 2106.05(h)).
Accordingly, viewed as a whole, these additional claim element(s) do not provide any additional element that integrates the abstract idea (prong one), into a practical application (prong two) upon considering the additional elements both individually and as a combination or as a whole as they fail to provide: an additional element that reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field; or an additional element that implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim; or an additional element that effects a transformation or reduction of a particular article to a different state or thing; or an additional element that applies or uses the judicial exception, again, in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception as explained above.
Thus, the abstract idea of providing temporary marketing information when user does not or has not consented to receiving marketing message which is certain methods of organizing human activity (prong one) is not integrated into a practical application upon consideration of the additional element(s) both individually and as a combination (prong two).
Therefore, under step 2A, the claims are directed to the abstract idea, and require further analysis under Step 2B.
Under step 2B, per MPEP 2106.05, as it applies to claims 1-4, 8, 10-16, and 19, the Examiner will evaluate whether the foregoing additional elements analyzed under prong two, when considered both individually and as a whole provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). The abstract idea of providing temporary marketing information when user does not consent to receiving marketing message which is certain methods of organizing human activity - has not been applied in an eligible manner. The claim elements in addition to the abstract idea are simply being utilized as generic tools to execute "apply it" instructions as they are described at a high level of generality. Additionally, the abstract idea is intended to be merely carried out in a technical environment, however fail to contain meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment (Id. or note step 2A prong two).
Next, in view of compact prosecution only further analysis per the Berkheimer Memo dated April 19, 2018 is being conducted as the following additional elements would be readily apparent as generic to a person having ordinary skill in the art (hereinafter PHOSITA), in other words analysis is similar to Berkheimer claim 1 and not claims 4-7 where there was "a genuine issue of material fact in light of the specification," nevertheless the Examiner finds the additional elements when considered both individually and as a combination to be well-understood, routine or conventional and expressly supports in writing as follows:
(i) receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network) [similarly here one enters chatroom via a link and temporary message can be shared with others];
(ii) Affinity v DirecTV - "The court rejected the argument that the computer components recited in the claims constituted an “inventive concept.” It held that the claims added “only generic computer components such as an ‘interface,’ ‘network,’ and ‘database,’” and that “recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” Id. at 1324-25 (citations omitted). The court noted that nothing in the asserted claims purported to improve the functioning of the computer itself or “effect an improvement in any other technology or technical field.” Mortgage Grader, 811 F.3d at 1325 (quoting Alice, 134 S. Ct. at 2359)." [similarly here temporary message is displayed in chatroom interface]; and
(iii) For example, a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, without specifying how. See MPEP 2106.05(f) for more information concerning mere instructions to apply a judicial exception, including a discussion of the exemplar provided herein, which is based on Alice, 573 U.S. at 222-26. See also Benson, 409 U.S. 63 (holding that merely implementing a mathematical principle on a general purpose computer is a patent ineligible abstract idea); Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044 (Fed. Cir. 2017) (using a computer as a tool to process an application for financing a purchase); and
iv. Electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755; and also note storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93 [similarly here electronically stored marketing messages are retrieved, and converted from temporary-to-permanent which are stored].
Therefore the claims here fail to contain any additional element(s) or combination of additional elements that can be considered as significantly more and the claims are rejected under 35 U.S.C. 101 for lacking eligible subject matter.
Examiner’s Reason(s) For Withdrawal Of Prior Art Based Rejection
3. Claims 1-3, 5, 10-14, and 16 were previously rejected under 35 U.S.C. 103(a) as being unpatentable over Akhter et al. (Pub. No.: US 2012/0101883) referred to hereinafter as Akhter, in view of Dalonzo et al. (Patent No.: US10,764,221) referred to hereinafter as Dalonzo.
Claims 4, 8, 15, and 19 were previously rejected under 35 U.S.C. 103(a) as being unpatentable over Akhter, in view of Dalonzo, and Famolari et al. (Pub. No.: US2007/0043828) referred to hereinafter as Famolari.
And, upon conducting an updated search the Examiner discovered see Zhao US11121997 note col 5 lines 23-42 note "Returning to the decision 208 resulting from the analysis of operation 206, if the message is identified as non-ephemeral, then in operation 220, the chat message is stored as a non-ephemeral message. Because the messaging system is an ephemeral message system with a deletion default trigger for all messages, this trigger is modified in response to the determination that the message is non-ephemeral. In some embodiments, this may involve removing all message deletion triggers. In some embodiments, this may involve extending a message viewing time, or changing from one type of deletion trigger to another. For example, a trigger to delete the message after a user has navigated away from the message in a user interface may be changed to a time-based trigger where the message may be deleted after a certain number of hours or days. In some embodiments, the new trigger may be based on the analysis of operation 206. For example, if the message content includes a meeting invitation with an address and contact information for a certain date and time, a deletion trigger may be set for that date and time, or for a set delay after that date and time."
The Examiner finds the claim amendments sufficiently read over the relied upon prior art of record, prior art made of record, and the above noted newly discovered reference upon conducting an updated search because as claimed converting a temporary to a permanent message based on one or more carrying out one or more functions associated with the temporary message as claimed does not appear to be contemplated by Dalonzo as Dalonzo requires explicit consent.
Response to Applicant’s Remarks
4. Claim interpretation: However, contrary to the Applicant’s assertions, note “Claims 1 and 12 have been amended to delete the term "whether" to address the objection”, claim 1 still recites “whether” and then goes on to solely claim a volatile temporary message, which has resulted in indefiniteness based rejection as set forth above.
101: The Applicant argues “In response to the rejection, claims 1 and 12 have been amended, among other changes, to delete all recitations of the terms "user," "predetermined operator," and "consent." Applicant submits that these claim amendments, read in the context of the claims as a whole, do not recite a certain method of organizing human activity, since the claims are not directed to fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Accordingly, Applicant respectfully requests withdrawal of the rejection.”
However, the Examiner respectfully disagrees because (1) the claims must be given their broadest reasonable interpretation in light of the as-filed specification, at least note as-filed spec. para. [0002], [0007]-[0019], as such, using a temporary message for users who have not consented to receiving marketing messages such that it can be deleted if the user does not express interest by interacting with the message using one or more associated functions of the message upon exiting a communication channel is indeed certain methods of organizing human activity as explained in prong one, and as explained in prong two merely executing an abstract idea as “apply it” instruction and generally linking it to a communication channel such as marketer IM or chat or messaging channel on behalf of a business operator; and more importantly (2) in the Supreme Court ruling Alice vs. CLS Bank the court noted “As the courts directed in Alice "At Mayo step two, we must examine the elements of the claim to determine whether it contains an “‘inventive concept’ ” sufficient to “transform” the claimed abstract idea into a patent-eligible application. 566 U. S., at ___, ___ (slip op., at 3, 11). A claim that recites an abstract idea must include “additional features” to ensure “that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].” Id., at ___ (slip op., at 8–9). Mayo made clear that transformation into a patent-eligible application requires “more than simply stat[ing] the [abstract idea] while adding the words ‘apply it.’ ” Id., at ___ (slip op., at 3)." Further note "Given the ubiquity of computers, see 717 F. 3d, at 1286 (Lourie, J., concurring), wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Mayo, 566 U. S., at ___ (slip op., at 8–9)." Lastly note "There is no dispute that a computer is a tangible system (in §101 terms, a “machine”), or that many computer-implemented claims are formally addressed to patent-eligible subject matter. But if that were the end of the §101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept. Such a result would make the determination of patent eligibility “depend simply on the draftsman’s art,” Flook, supra, at 593, thereby eviscerating the rule that “‘[l]aws of nature, natural phenomena, and abstract ideas are not patentable,’ ” Myriad, 569 U. S., at ___ (slip op., at 11)." ” – thus by changing the recitation of “user” to “user terminal” among others noted by the Applicant does not alter the proper BRI in light of the as-filed disclosure requirement.
103: The Examiner has withdrawn this rejection, note “Examiner’s Reason(s) For Withdrawal Of Prior Art Based Rejection” as set forth above.
Conclusion
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and all the references on PTO-892 Notice of Reference Cited should be duly noted by the Applicant as they can be subsequently used during prosecution, at least note the following:
*Previously noted
- US 2022/0078148 see [0028] note “Returning to the decision 208 resulting from the analysis of operation 206, if the message is identified as non-ephemeral, then in operation 220, the chat message is stored as a non-ephemeral message. Because the messaging system is an ephemeral message system with a deletion default trigger for all messages, this trigger is modified in response to the determination that the message is nonephemeral. In some embodiments, this may involve removing all message deletion triggers. In some embodiments, this may involve extending a message viewing time, or changing from one type of deletion trigger to another. For example, a trigger to delete the message after a user has navigated away from the message in a user interface may be changed to a time-based trigger where the message may be deleted after a certain number of hours or days. In some embodiments, the new trigger may be based on the analysis of operation 206. For example, if the message content includes a meeting invitation with an address and contact information for a certain date and time, a deletion trigger may be set for that date and time, or for a set delay after that date and time.”
- US2020/0137005 see [0100] "For example, in response to the leave button 615 or the leave icon 625 being selected in one of a plurality of chatrooms, a terminal may receive a leave request for the chatroom. When the user attempts to leave the chatroom by selecting the leave button 615 or the leave icon 625, the terminal may display a warning message 630 informing that photos, videos, and files shared through the chatroom will be deleted if the user leaves the chatroom, before deleting the data. In this example, the warning message 630 may include a yes button for finally confirming the leave, and a no button for cancelling the leave."
- US 2011//0154224 see Abstract “creating at least one contextual-based chatroom that is focused on a topic of interest that is in common between at least a first user (including e.g., a pulled or pushed user) and at least a second user (including e.g., a pulled or pushed user) of an interconnected network”; and allows advertising at least see [0002]-[0006] – this could have been utilized as the primary reference in place of Akhter.
- US 2015/0332332 see Abstract “providing and displaying advertising messages within applications running on smart phones, tablets and other mobile devices while minimizing the disruptive effect of those advertising messages. The application may include an instant messaging or chat function. Within the application, advertising content may be presented in the portion of the screen dedicated to displaying the instant messaging or chat conversation, or in the portion of the screen dedicated to displaying a list of conversations, contacts or other content. The advertising content is set to be displayed for a certain amount of time and the display may indicate the amount of time remaining before the advertising content will disappear. The advertising content may include, for example, a limited time offer that the user may accept while the advertising content is displayed” – this could have been utilized as the primary reference in place of Famolari.
*NPL
- Tany Field, Explaining the fundamentals of transient identifiers, Jul 30, 2021, Novatiq, https://web.archive.org/web/20210730221249/https://www.novatiq.com/fundamentals-transient-identifiers/
- Entrepreneur en Espanol, How to activate or deactivate temporary messages in WhatsApp, Apr 30, 2021, Th Hour, https://www.thehour.com//article/How-to-activate-or-deactivate-temporary-messages-16142316.php
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.
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/DIPEN M PATEL/Primary Examiner, Art Unit 3621B
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