DETAILED ACTION
The RCE filed 7/26/25 has been entered. Claims 8 and 13 have been amended and no claims have been cancelled.
Claims 1-20 are pending.
The Amendment to the Drawings filed 7/26/25 has been entered.
Applicant’s amendments/arguments have overcome the previously presented Objections to the Drawings and some of the previously presented Claim Objections.
The Examiner recommends filing a written authorization for Internet communication in response to the present action. Doing so permits the USPTO to communicate with Applicant using Internet email to schedule interviews or discuss other aspects of the application. Without a written authorization in place, the USPTO cannot respond to Internet correspondence received from Applicant. The preferred method of providing authorization is by filing form PTO/SB/439, available at: https://www.uspto.gov/patent/forms/forms. See MPEP § 502.03 for other methods of providing written authorization.
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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/26/25 has been entered.
Response to Arguments
Applicant’s arguments with respect to claims 1-20 have been fully considered but they are not persuasive.
Applicant argues that the combination of Everton and Morris fails to teach or suggest all elements of the independent claims. Specifically, Applicant argues that the claimed invention removes images specifically “according to the analysis” of warning criteria to prevent malicious content from reaching recipients and this selective security-based image removal is fundamentally different from Morris’s image removal system. Applicant finally argues that one skilled in the art would not be motivated to combine these references in the claimed manner, as they serve entirely different purposes. However, the examiner respectfully traverses. Everton discloses analyzing the content (i.e., headers, body, attachments, etc.) of email messages coming into email system 102/144 using a suspect analyzer and an email parser, determining a tracking code associated with external content and replacing the tracking code with an <img> element referencing a URL into the email message (Figs. 1A-B, 3, 4A-B, 5, 10 and 11, [0025], [0030]-[0032], [0040], [0042]-[0043], [0049]-[0051], [0075]-[0077]). Morris discloses an email comprising images is received, a server strips and stores the images, and then sends a standard email message to the recipient with a link to the images, the email message is then received on the recipient’s computer by the standard email application and once the email message is opened, the user clicks on the link and the images are displayed (Fig. 1, [0021], [0026]-[0028]). It would have been obvious to a person with ordinary skill in the art before the effective filing date of the claimed invention to incorporate removing, storing and retrieving images using an image server to Everton because Everton discloses retrieving an image from a server ([0062]) and Morris suggests removing, storing and retrieving images using an image server ([0021]). One of ordinary skill in the art would be motivated to utilize the teachings of Morris in the Everton system in order to prevent phishing attacks in email systems. Since the examiner has provided some teaching, suggestion, or motivation to combine the Everton and Morris references and since both, Everton and Morris, disclose modifying an electronic message, the combination of Everton and Morris is proper and hindsight has not been employed in combining Everton and Morris. Furthermore, the claimed language does not recite limitations that explicitly describe a security-based image analysis and removal. For example, the claimed language does not clearly recite an algorithm and/or detailed steps that is/are used to perform the security-based image analysis. Finally, the claimed language merely disclose analyzing an electronic message according to a criteria and remove an image from the electronic message based on the analysis. Based on the teachings recited above and the explanation provided, the combination of Everton and Morris does in fact teach the claimed subject matter.
Therefore, the applicant’s arguments are not persuasive.
Claim Objections
Claims 1-20 are objected to because of the following informalities:
Since all the claims were amended in the Amendment filed 5/23/25, any non-currently amended claims (i.e., claims 1-7, 9-12 and 14-20) should be indicated as “(Previously Presented)” rather than “(Original).” Appropriate correction is required.
The limitation “…wherein the recipient message system receives the modified incoming electronic message, retrieve the image from the image server according to the modified incoming electronic message and display the image.” in claim 1, lines 11-13, should be “…wherein the recipient message system receives the modified incoming electronic message, retrieves the image from the image server according to the modified incoming electronic message and displays the image.” (emphasis added) in order to resolve the typographical/grammatical error(s) in the limitation. Appropriate correction is required.
The limitation “…the original electronic message…” in claim 8, line 7, should be “…the original incoming electronic message…” (emphasis added) in order to resolve the lack of antecedent basis in the limitations. Appropriate correction is required.
The limitation “…wherein the recipient message system received the modified incoming electronic message, retrieves the image from the image server according to the image link and display the modified incoming electronic message and the image to a recipient.” in claim 8, lines 11-13, should be “…wherein the recipient message system receives the modified incoming electronic message, retrieves the image from the image server according to the image link and displays the modified incoming electronic message and the image to a recipient.” (emphasis added) in order to resolve the typographical/grammatical error(s) in the limitation. Appropriate correction is required.
The limitation “…wherein the recipient message system retrieves the image from the image server according to the modified incoming electronic message and display the image to a recipient.” in claim 13, lines 11-13, should be “…wherein the recipient message system retrieves the image from the image server according to the modified incoming electronic message and displays the image to a recipient.” (emphasis added) in order to resolve the typographical/grammatical error(s) in the limitation. Appropriate correction is required.
All dependent claims are objected to as having the same deficiencies as the claims they depend from.
Note: For examination purposes, the claims will be interpreted based on the claim language suggested by the Examiner.
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 of this title, 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 1-4 and 7-20 are rejected under 35 U.S.C. 103 as being unpatentable over “Everton et al.” (US PGPUB 2019/0356623) (Hereinafter Everton) in view of “Morris” (US PGPUB 2003/0200268).
With respect to claim 1, Everton teaches an electronic message visual indicator system (System of Fig. 1A, [0017]) comprising:
a gateway computer system (email system/subsystem 102/144; Figs. 1A-B, [0017], [0022]) in communications with a message transport system (public network 124; Fig. 1A, [0017]) adapted to receive an original incoming electronic message from a sender message system prior to the original incoming electronic message extending into a perimeter of a recipient message system (receiving an email message generated by a mail transfer agent of email client 120 before the email message is made available in the inboxes of the recipient(s); Figs. 1A-B, 3 and 4A-B, [0040]-[0041]), analyze the original incoming electronic message according to a set of warning criteria (analyzing the content of email messages coming into email system 102/144 using a suspect analyzer and an email parser; Figs. 1A-B, 3 and 4A-B, [0025], [0030]-[0032], [0040], [0042]-[0043]), add a link to the image that is placed in the original incoming electronic message to provide a modified incoming electronic message (receiving an email message and inserting an <img> element referencing a URL into the email message; Figs. 4A-B, 5, 10 and 11, [0049]-[0051], [0075]-[0077]); and,
wherein the original incoming electronic message is received by the recipient message system wherein the recipient message system receives the modified incoming electronic message (email message is passed to the recipient email client 120; Figs. 1A, 6, 10 and 11, [0060], [0080]-[0081]), retrieve the image from the server according to the modified incoming electronic message (the recipient email client 120 issues a command to fetch the image pointed to by the replacement URL and receives the image; Figs. 1A, 6, 10 and 11, [0061]-[0063], [0080]-[0081]) and display the image (the recipient email client 120 receives the image and presents it in the email message; Figs. 1A, 6, 10 and 11, [0063], [0080]-[0081]).
Everton does not teach remove an image from the original incoming electronic message according to the analysis, store the image on an image server and retrieve the image from the image server.
However, Morris teaches remove an image from the original incoming electronic message according to the analysis, store the image on an image server and retrieve the image from the image server (an email comprising images is received, the server strips and stores the images, and then sends a standard email message to the recipient with a link to the images. The email message is then received on the recipient’s computer by the standard email application. Once the email message is opened, the user clicks on the link and the images are displayed; Fig. 1, [0021], [0026]-[0028]).
It would have been obvious to a person with ordinary skill in the art before the effective filing date of the claimed invention to incorporate removing, storing and retrieving images using an image server to Everton because Everton discloses retrieving an image from a server ([0062]) and Morris suggests removing, storing and retrieving images using an image server ([0021]).
One of ordinary skill in the art would be motivated to utilize the teachings of Morris in the Everton system in order to prevent phishing attacks in email systems.
With respect to claim 2, Everton as modified teaches the electronic message visual indicator system of claim 1. Everton further teaches wherein the gateway computer system is outside the perimeter of the recipient’s message system (remote email subsystem 144 is located outside the perimeter of a local area network comprising a recipient email client 120; Fig. 1A, [0017], [0022]).
With respect to claim 3, Everton as modified teaches the electronic message visual indicator system of claim 1. Everton further teaches wherein the image is modified according to changes in an attribute associated with the modified incoming electronic message (monitoring for a change in status of the email message and in response to a change in status of the email message, the unique URL is associated with a second image instead of a first image; Figs. 10-11, [0075]-[0081]).
With respect to claim 4, Everton as modified teaches the electronic message visual indicator system of claim 1. Everton further teaches wherein the gateway computer system is included in the recipient’s message system (recipient email clients are connected to an on-premises email subsystem 102 via connections contained within a LAN; Fig. 1A, [0017], [0019]).
With respect to claim 7, Everton as modified teaches the electronic message visual indicator system of claim 1. Everton further teaches wherein the gateway computer system receives the original incoming electronic message prior to the recipient’s message system according to an Mail Exchange record associated with the original incoming electronic message (email clients 120 are connected to the email subsystem 102/144. The email clients 120 may connect to the email subsystem 102/144 using a protocol such as SMTP, MAPI, IMAP, EAS, EWS, and/or POP3; Figs. 1A-B and 3, [0019], [0022], [0024]).
The limitations of claim 8 are rejected in the analysis of claim 1 above and this claim is rejected on that basis.
With respect to claim 9, Everton as modified teaches the electronic message visual indicator system of claim 8. Everton further teaches wherein the image is an indicator representing an attribute taken from a group consisting of information that the original incoming electronic message: has been transmitted, placed the original incoming electronic message in a holding area, deleted, originates from a risky source, and any combination thereof (through use of an <img> element in the body of the email, the status of the email message will be seen by the user regardless of which email client 120 she happens to open the email on. In serving the first image or second image, the content caching circuitry may indicate to the email client 120 that the image is not to be cached such that the email client 120 will fetch the latest image associated with the unique URL each time the email message 306 is opened. The first image may indicate through imagery (e.g., caution sign with caption “under review”) that the scan is incomplete. The second image may indicate that the email is not a phishing attempt (e.g., the second image may be a green check mark) or may indicate that the email is likely a phishing attempt (e.g., a red x with the caption “phishing attempt”); Figs. 1A and 10-11, [0080]-[0081]).
With respect to claim 10, Everton as modified teaches the electronic message visual indicator system of claim 8. Everton further teaches wherein the gateway computer system transmits the modified incoming electronic message to a holding area outside the perimeter of the recipient’s message system (content caching circuitry 115 is operable to store and serve content embedded in, linked to by, and/or attached to email messages sent and/or received by the email system 102/144. Email message is passed to the recipient email client 120. The recipient email client 120 issues a command to fetch the image pointed to by the replacement URL, receives the image and presents it in the email message; Figs. 1A and 6-7, [0028], [0037], [0049], [0060]-[0063]).
With respect to claim 11, Everton as modified teaches the electronic message visual indicator system of claim 10. Everton further teaches wherein the gateway computer system transmits a notification to the recipient’s message system representing the modified incoming electronic message being stored in a holding area outside the perimeter of the recipient message system (content caching circuitry 115 is operable to store and serve content embedded in, linked to by, and/or attached to email messages sent and/or received by the email system 102/144. Email message is passed to the recipient email client 120. The recipient email client 120 issues a command to fetch the image pointed to by the replacement URL, receives the image and presents it in the email message; Figs. 1A and 6-7, [0028], [0037], [0049], [0060]-[0063]).
With respect to claim 12, Everton as modified teaches the electronic message visual indicator system of claim 8. Everton further teaches wherein the gateway computer system modifies an indicator in the image (Through use of an <img> element in the body of the email, the status of the email message will be seen by the user regardless of which email client 120 she happens to open the email on. In serving the first image or second image, the content caching circuitry may indicate to the email client 120 that the image is not to be cached such that the email client 120 will fetch the latest image associated with the unique URL each time the email message 306 is opened. The first image may indicate through imagery (e.g., caution sign with caption “under review”) that the scan is incomplete. The second image may indicate that the email is not a phishing attempt (e.g., the second image may be a green check mark) or may indicate that the email is likely a phishing attempt (e.g., a red x with the caption “phishing attempt”); Figs. 1A and 10-11, [0075]-[0081]).
The limitations of claims 13-14 are rejected in the analysis of claims 1 and 3 respectively and these claims are rejected on that basis.
With respect to claim 15, Everton as modified teaches the electronic message visual indicator system of claim 13. Everton further teaches wherein the link is modified according to changes in an attribute associated with the modified incoming electronic message (monitoring for a change in status of the email message and in response to a change in status of the email message, the unique URL is associated with a second image instead of a first image; Figs. 10-11, [0075]-[0081]).
With respect to claim 16, Everton as modified teaches the electronic message visual indicator system of claim 13. Everton further teaches wherein the image represents an attribute of the original incoming electronic message taken from a group of graphic indicators consisting of representation that the original incoming electronic message was sent, delivered, rejected, failed, blocked, quarantined, unread, read, spam, security risk, and any combination thereof (Through use of an <img> element in the body of the email, the status of the email message will be seen by the user regardless of which email client 120 she happens to open the email on. In serving the first image or second image, the content caching circuitry may indicate to the email client 120 that the image is not to be cached such that the email client 120 will fetch the latest image associated with the unique URL each time the email message 306 is opened. The first image may indicate through imagery (e.g., caution sign with caption “under review”) that the scan is incomplete. The second image may indicate that the email is not a phishing attempt (e.g., the second image may be a green check mark) or may indicate that the email is likely a phishing attempt (e.g., a red x with the caption “phishing attempt”); Figs. 1A and 10-11, [0080]-[0081]).
With respect to claim 17, Everton as modified teaches the electronic message visual indicator system of claim 13. Everton further teaches wherein the image represents an attribute of the modified incoming electronic message taken from a group of graphic indicators consisting of representations that the modified incoming electronic message was sent, delivered, rejected, failed, blocked, quarantined, unread, read, spam, security risk, and any combination thereof (Through use of an <img> element in the body of the email, the status of the email message will be seen by the user regardless of which email client 120 she happens to open the email on. In serving the first image or second image, the content caching circuitry may indicate to the email client 120 that the image is not to be cached such that the email client 120 will fetch the latest image associated with the unique URL each time the email message 306 is opened. The first image may indicate through imagery (e.g., caution sign with caption “under review”) that the scan is incomplete. The second image may indicate that the email is not a phishing attempt (e.g., the second image may be a green check mark) or may indicate that the email is likely a phishing attempt (e.g., a red x with the caption “phishing attempt”); Figs. 1A and 10-11, [0080]-[0081]).
With respect to claim 18, Everton as modified teaches the electronic message visual indicator system of claim 13. Everton further teaches wherein the gateway computer system transmits a notification to the recipient’s message system representing the modified incoming electronic message being stored in a holding area outside the perimeter of the recipient’s message system (content caching circuitry 115 is operable to store and serve content embedded in, linked to by, and/or attached to email messages sent and/or received by the email system 102/144. Email message is passed to the recipient email client 120. The recipient email client 120 issues a command to fetch the image pointed to by the replacement URL, receives the image and presents it in the email message; Figs. 1A and 6-7, [0028], [0037], [0049], [0060]-[0063]).
With respect to claim 19, Everton as modified teaches the electronic message visual indicator system of claim 13. Everton further teaches wherein the gateway computer system transmits a notification to the recipient’s message system representing the original incoming electronic message being stored in a holding area of the recipient’s message system (content caching circuitry 115 is operable to store and serve content embedded in, linked to by, and/or attached to email messages sent and/or received by the email system 102/144. Email message is passed to the recipient email client 120. The recipient email client 120 issues a command to fetch the image pointed to by the replacement URL, receives the image and presents it in the email message; Figs. 1A and 6-7, [0028], [0037], [0049], [0060]-[0063]).
With respect to claim 20, Everton as modified teaches the electronic message visual indicator system of claim 13. Everton further teaches wherein the gateway computer system transmits a notification to the recipient’s message system representing the modified incoming electronic message being stored in a holding area of the recipient’s message system (content caching circuitry 115 is operable to store and serve content embedded in, linked to by, and/or attached to email messages sent and/or received by the email system 102/144. Email message is passed to the recipient email client 120. The recipient email client 120 issues a command to fetch the image pointed to by the replacement URL, receives the image and presents it in the email message; Figs. 1A and 6-7, [0028], [0037], [0049], [0060]-[0063]).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Everton in view of Morris, and further in view of “Kennedy et al.” (US PGPUB 2019/0058727) (Hereinafter Kennedy).
With respect to claim 5, Everton as modified teaches the electronic message visual indicator system of claim 1. Everton further teaches wherein the gateway computer system adds a blocked address image indicator to the image (Through use of an <img> element in the body of the email, the status of the email message will be seen by the user regardless of which email client 120 she happens to open the email on. In serving the first image or second image, the content caching circuitry may indicate to the email client 120 that the image is not to be cached such that the email client 120 will fetch the latest image associated with the unique URL each time the email message 306 is opened. The first image may indicate through imagery (e.g., caution sign with caption “under review”) that the scan is incomplete. The second image may indicate that the email is not a phishing attempt (e.g., the second image may be a green check mark) or may indicate that the email is likely a phishing attempt (e.g., a red x with the caption “phishing attempt”); Figs. 1A and 10-11, [0080]-[0081]). Everton does not teach including a set of blocked internet protocol (IP) addresses and, wherein the gateway computer system adds a blocked IP address indicator when an IP address of the sender message system matches an entry in the set of blocked IP addresses.
However, Kennedy teaches including a set of blocked internet protocol (IP) addresses and, wherein the gateway computer system adds a blocked IP address indicator when an IP address of the sender message system matches an entry in the set of blocked IP addresses (determining the measure of global reputation for the sender includes determining whether an identifier of the sender (e.g., domain name, sub domain, IP address) is included in a list of senders known to be not reputable. In the event a determined risk value is greater than one or more threshold values, the message may be blocked, not delivered to an intended recipient, flagged, labeled, deleted, quarantined, and/or reported; [0028], [0036], [0052], [0057]).
It would have been obvious to a person with ordinary skill in the art before the effective filing date of the claimed invention to incorporate adding a blocked IP address indicator to Everton because Everton discloses adding a blocked address image indicator ([0081]) and Kennedy suggests adding a blocked IP address indicator ([0057]).
One of ordinary skill in the art would be motivated to utilize the teachings of Kennedy in the Everton system in order to more effectively identify authenticity and security risk of a message and reputation of a sender.
With respect to claim 6, Everton as modified teaches the electronic message visual indicator system of claim 1. Everton further teaches wherein the gateway computer system adds a blocked sender indicator to the image (Through use of an <img> element in the body of the email, the status of the email message will be seen by the user regardless of which email client 120 she happens to open the email on. In serving the first image or second image, the content caching circuitry may indicate to the email client 120 that the image is not to be cached such that the email client 120 will fetch the latest image associated with the unique URL each time the email message 306 is opened. The first image may indicate through imagery (e.g., caution sign with caption “under review”) that the scan is incomplete. The second image may indicate that the email is not a phishing attempt (e.g., the second image may be a green check mark) or may indicate that the email is likely a phishing attempt (e.g., a red x with the caption “phishing attempt”); Figs. 1A and 10-11, [0080]-[0081]). Everton does not teach including a set of blocked sender addresses and wherein the gateway computer system adds a blocked sender indicator when a sender address matches an entry in the set of blocked sender addresses.
However, Kennedy teaches including a set of blocked sender addresses and wherein the gateway computer system adds a blocked sender indicator when a sender address matches an entry in the set of blocked sender addresses (determining the measure of global reputation for the sender includes determining whether an identifier of the sender (e.g., domain name, sub domain, IP address) is included in a list of senders known to be not reputable. In the event a determined risk value is greater than one or more threshold values, the message may be blocked, not delivered to an intended recipient, flagged, labeled, deleted, quarantined, and/or reported; [0028], [0036], [0052], [0057]).
It would have been obvious to a person with ordinary skill in the art before the effective filing date of the claimed invention to incorporate adding a blocked sender address indicator to Everton because Everton discloses adding a blocked address image indicator ([0081]) and Kennedy suggests adding a blocked sender address indicator ([0057]).
One of ordinary skill in the art would be motivated to utilize the teachings of Kennedy in the Everton system in order to more effectively identify authenticity and security risk of a message and reputation of a sender.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
Cohen et al. US 2012/0284347. Discloses confirming delivery of an electronic message using a dynamic image.
Beeman et al. US 2022/0353218. Discloses delivering dynamic image content via email.
Ciancio-Bunch et al. US 2022/0150199. Discloses rendering dynamic live content in an e-mail message.
Monberg et al. US 2020/0127957. Discloses delivering dynamic content via email.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Johnny B Aguiar whose telephone number is (571)272-3563. The examiner can normally be reached on Monday to Friday 7:30 am - 5:30 pm EST.
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, Joon Hwang can be reached on (571) 272-4036. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHNNY B AGUIAR/
Primary Examiner, Art Unit 2447
August 27, 2025