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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 29, 32, 33, 34 and 35 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 29 is dependent upon cancelled claim 1; Claim 33 is dependent upon cancelled claim 30; Claim 34 is dependent upon cancelled claim 28. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Claim 29 will be interpreted to be dependent on claim 23; and claims 33 and 34 will be interpreted to be dependent upon claim 23.
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.
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.
Claims 23-27, 29, 32-37, 41 and 42 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.
Claims 23 and 41 recite the limitation "the messenger application GUI". There is insufficient antecedent basis for this limitation in the claim.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: messenger module in claims 41 (and 42); contact list module in claim 41 and a prediction module in claim 33.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 23-27, 29, 32, 36-39, 41 and 42 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 8,171,416 to Urquhart et al.
Urquhart ‘416 disclose:
As concerns claim 23, a system comprising:
memory (Fig. 1) comprising machine readable instructions; a processor (Fig. 1) to execute the machine readable instructions and cause the processor to:
output on a display (col. 3, line 14) a first graphical user interface (GUI) (Fig. 2, 38) comprising:
a message thread (col. 3, line 55-windows containing send or receive messages) between a user and a recipient (col. 1, lines 55-56-user, contact);
a visual cue graphical element representative of a visual cue (Fig. 2, Fig. 3-nickname “Smitty”) that provides a visual indication of the recipient (Fig. 2, Fig. 3-nickname “Smitty”) to reduce a likelihood that a message sent using the messenger application (col. 2, lines 37-38-IM programs) GUI to the recipient is sent to an unintended recipient (col. 4, lines 5-13);
a message window (col. 3, line 55) with the message thread (col. 3, line 55-windows containing send or receive messages); and
a compose message field (col. 4, lines 1-2) to receive information and a send message element (send button 48) for sending the information within the compose message field to the recipient, wherein the first GUI provides a confirmation graphical element (col. 4, line 3-confirmation button 44) to confirm that the information within the compose message field is to be sent to the recipient in response to activating the send message element;
output on the display a second GUI (Fig. 2) comprising a visual cue graphical rendering control element (Fig. 2, 38, 40) for enabling the visual cue graphical element to be provided as part of the first GUI.
As concerns claim 38, a method comprising:
rendering on a display (col. 3, line 14) of a device (Fig. 1, 10) a messenger application graphical user interface (GUI) (Fig. 2, 38) comprising a first message thread (col. 3, line 55-windows containing send or receive messages) between a user and a first recipient (col. 1, lines 55-56-user, contact), and a first visual cue graphical element representative of a first visual cue (Fig. 2, Fig. 3-nickname “Smitty”) for the first recipient, wherein the first visual cue provides a visual indication of the first recipient (Fig. 2, Fig. 3-nickname “Smitty”); and
updating the messenger application GUI rendered on the display so that the messenger application GUI comprises a second message thread (col. 3, line 55-windows containing send or receive messages; message to a “second” contact) between the user and a second recipient (col. 3, lines 55-65-contacts, thus plural contacts that includes a “second” recipient), and a second visual cue graphical element (col. 3, lines 55-65-require confirmation for contacts) representative of a second visual cue (Fig. 2, Fig. 3-nickname) for the second recipient, wherein the first and second visual cues for the first and second recipients provide a visual indication of the first and second recipients, respectively, and reduce a likelihood that the user send a message to an unintended recipient (col. 4, lines 5-13), wherein the messenger application GUI includes a message window (col. 3, line 55) to display the message threads (col. 3, line 55-windows containing send or receive messages); and
wherein the messenger application GUI comprises a compose message field (col. 4, lines 1-2) to receive information and a send message element (send button 48) for sending the information within the compose message field to the first or second recipient, wherein the messenger application GUI provides a confirmation graphical element (col. 4, line 3-confirmation button 44) to confirm that the information within the compose message field is to be sent to the selected first or second recipient in response to activation of the send message element.
As concerns claim 41, one or more non-transitory computer-readable media comprising machine readable instructions executable by a processor, the machine readable instructions comprising:
a messenger module (Fig. 1, 20) to output on a display (col. 3, line 14) a graphical user interface (GUI) (Fig. 2, 38) comprising: a message thread (col. 3, line 55-windows containing send or receive messages) between a user and a recipient (col. 1, lines 55-56-user, contact), and a visual cue graphical element (Fig. 2, Fig. 3-nickname “Smitty”) representative of a visual cue for that provides a visual indication of the recipient to reduce a likelihood that a message sent using the messenger application GUI to the recipient is sent to an unintended recipient (col. 4, lines 5-13); and
a message window (col. 3, line 55) with the message thread (col. 3, line 55-windows containing send or receive messages);
a compose message field (col. 4, lines 1-2) to receive information and a send message element (send button 48) for sending the information within the compose message field to the recipient, wherein the GUI provides a confirmation graphical element (col. 4, line 3-confirmation button 44) to confirm that the information within the compose message field is to be sent to the recipient in response to activating the send message element; and a contact list module (Fig. 2, 24) to output on the display a visual cue graphical rendering control element (Fig. 2, 38) for enabling the visual cue graphical element to be provided as part of the GUI.
As concerns claim 24, the system of claim 23, wherein the visual cue is a static (Fig. 2, Fig. 3-nickname “Smitty”; “static” name on screen) or a dynamic graphical element.
As concerns claim 25, the system of claim 23, wherein the visual cue is implemented as part of one or more windows, menus, tabs, borders, symbols, objects, graphics, texts (Fig. 2, Fig. 3-nickname “Smitty”), or icons of the first GUI.
As concerns claim 26, the system of claim 23, wherein the visual cue is a first visual cue (“first” is just a label), the recipient is a first recipient (“first” is just a label), and the first GUI is provided with the first visual cue for the first recipient in response to a selection of a first message thread between the first recipient and the user, and the first GUI is provided with a second visual cue for a second recipient (Fig. 2, Fig. 3-nickname) in response to a selection of a second message thread between the second recipient and the user.
As concerns claim 27, the system of claim 26, wherein the first visual cue is different from the second visual cue (Fig. 2, Fig. 3-nickname “Smitty”; different nicknames).
As concerns claim 29, the system of claim 1 (claim 23), wherein the recipient is a first recipient (“first” is just a label), and the message thread is between the first recipient and one or more other recipients (col. 3, line 55-windows containing send or receive messages), and wherein the processor is to determine that the first recipient was a last recipient to respond in the message thread (col. 3, lines 50-65-messages; last message in thread) and provide the first GUI with the visual cue to provide the visual indication of the first recipient (Fig. 2, Fig. 3-nickname; col. 3, line 57-confirmation option).
As concerns claim 32, the system of claim 29, wherein the second GUI includes a send confirmation graphical element (Fig. 2, 40) for enabling the confirmation graphical element to be provided as part of the first GUI.
As concerns claim 36, the system of claim 23, further comprising a device (Fig. 1, 10) that comprises the processor, the memory and the display.
As concerns claim 37, the system of claim 23, wherein the device is one of a mobile phone, a tablet, a laptop (col. 2, line 64), and a stationary computer.
As concerns claim 39, the method of claim 38, further comprising outputting on the display one or more visual cue graphical rendering control elements (Fig. 2, 38) for enabling the first and second visual cue graphical elements to be provided as part of the messenger application GUI.
As concerns claim 42, the one or more non-transitory computer-readable media of claim 41, wherein the recipient is a first recipient (“first” is just a label), the message thread is a first message thread (“first” is just a label), the visual cue graphical element is a first visual cue graphical element (“first” is just a label), the visual cue is a first visual cue (“first” is just a label), and the visual cue graphical rendering control element is a first visual cue graphical rendering control element (“first” is just a label), and wherein the messenger module is to update the GUI on the display so that the GUI comprises a second message thread between the user and a second recipient (col. 3, line 55-windows containing send or receive messages; message to a “second” contact), and a second visual cue graphical element representative (Fig. 2, Fig. 3-nickname) of a second visual cue for the second recipient.
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.
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 8,171,416 to Urquhart et al. in view of U.S. Patent Application Publication 2012/0331405 to Eidelson et al.
Urquhart et al. ‘416 do not disclose:
As concerns claim 40, the method of claim 38, further comprising learning a messaging behavior of the user using a prediction module so that information within a composite message field of the messenger application GUI intended for the first recipient is not sent to the unintended recipient.
Eidelson et al. ‘405 teach:
As concerns claim 40, the method of claim 38, further comprising learning a messaging behavior of the user using a prediction module (0065-auto-complete component) so that information within a composite message field of the messenger application GUI intended for the first recipient is not sent to the unintended recipient (0065-contact name will be displayed; 0067).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide the system of Urquhart et al. ‘416 with a prediction module, as taught by Eidelson et al. ‘405, in order to provide an automated feature for a user, thus adding efficiencies to the user experience.
Allowable Subject Matter
Claims 33-35 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on October 1, 2025 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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 JOHN B WALSH whose telephone number is (571)272-7063. The examiner can normally be reached 7:30-3:30 pm.
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/JOHN B WALSH/Primary Examiner, Art Unit 2451