DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/11/2025 has been entered.
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 .
Examiner’s Comment
This Action is in response to the Request for Continued Examination filed on 12/11/2025 with Amended Claims and Applicant's Remarks filed on 12/11/2025.
Applicant has amended claims 1, 14, and 20 according to Amendments filed on 12/11/2025. Claims 1-20 are pending and currently under consideration for patentability.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,961,108. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in U.S. Patent No. 11,961,108 recite the entirety of limitations of claims 1-20 of the instant application. For example, in the instant application independent claims 1, 14, and 20 are anticipated by claims 1, 12, and 16 of U.S. Patent No. 11,961,108 because claims 1, 12, and 16 of U.S. Patent No. 11,961,108 recite additional features such as “executing, via the messaging server, a classification and regression software program on said digital content and determining, based on said execution, an identification of a context of the digital content, said context referencing a specific content or a categorical taxonomy; and communicating, via the messaging server, to said inbox of said user, said modified message including the digital content containing the data and the added content type tag indicating that said digital content corresponds to the type of content identified by the content preference information as being of interest to the user for visual display at the inbox of the user in the UI of the messaging application, said communication of said modified message with the added content tag causing the modified message to be displayed in the inbox of the user in the Ul in a manner that visually differentiates said modified message from other messages in the inbox that do not contain content corresponding to said type of content, said visual differentiation comprising the modified message display including visible information indicating that the electronic message contains data corresponding to the user-specified interest in the type of content based on said annotation so as to facilitate selection of the modified message without a need to perform a search of the inbox to locate messages having the particular type of content, wherein said communication is based on said determined identification of a context of the digital content” wherein in the instant application claims 1, 14, and 20 do not recite these features and are essentially broader than claims 1, 12, and 16 of U.S. Patent No. 11,961,108. Therefore claim 1 of U.S. Patent No. 11,961,108 is in essence a “species” of the generic invention of the instant application claim 1. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Claims 2-13 (Dependent on Claim 1) and claims 15-19 (Dependent on Claim 14) do not cure the deficiencies of the independent claims. Appropriate correction is required.
Claim Rejections - 35 USC § 101
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims are directed to a judicial exception (i.e., a law of nature, natural phenomenon, or abstract idea) without significantly more.
Step 1: In a test for patent subject matter eligibility, claims 1-20 are found to be in accordance with Step 1 (see 2019 Revised Patent Subject Matter Eligibility), as they are related to a process, machine, manufacture, or composition of matter. Claims 1-13 recite a method, claims 14-19 recite a non-transitory computer-readable media, and claim 20 recites a system. When assessed under Step 2A, Prong I, they are found to be directed towards an abstract idea. The rationale for this finding is explained below:
Step 2A, Prong I: Under Step 2A, Prong I, claims 1, 14, and 20 are directed to an abstract idea without significantly more, as they all recite a judicial exception. Claims 1, 14, and 20 recite limitations directed to the abstract idea including receiving input indicating an interest of a user in a first type of content; receiving a first electronic message addressed to an inbox of the user; analyzing the first electronic message prior to delivery to the user’s inbox and determining, based on the analysis, that first digital content included in the first electronic message corresponds to the first type of content of interest to the user; adding, based on the analysis, a first content type tag to the first electronic message indicating that the first digital content included in the first electronic message is of the first type of content of interest to the user; and the UI comprising first and second objects selectable by the user, selection of the first object causing a first UI display comprising a listing of electronic messages addressed to the inbox of the user, the listing comprising a first display item corresponding to the first electronic message, the first display item comprising an annotation corresponding to the first content type tag and indicating that the first electronic message includes the first type of content of interest to the user, selection of the second object causing a second UI display corresponding to each electronic message, of a number of electronic messages in the user's inbox having a respective content type tag, the second UI display displaying digital content extracted from each one of the number of electronic messages in accordance with each one's respective content type tag, for the first electronic message, the second UI display comprising a second display item comprising the first digital content corresponding to the first type of content of interest to the user extracted from the first electronic message in accordance with the first content type tag included in the first electronic message. These further limitations are not seen as any more than the judicial exception. Claims 1, 14, and 20 recite additional limitations including at a computing device, and “generating a display of a user interface (UI) of a messaging application”. The claims are considered to be an abstract idea under certain methods of organizing human activity because the claims are directed to commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) and managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) such as receiving user selection/input, analyzing content according to user interest, tagging the content data according to content type, and displaying the content according to the user’s interest/input and content type tag. The claims are also considered to be an abstract idea under Mental Processes such as concepts performed in the human mind (including an observation, evaluation, judgment, opinion) because the claims are directed to receiving data (i.e. input indicating an interest of a user in a first type of content and a first message addressed to an inbox of the user), and analyzing data (i.e. first message and determining that the first message is the first type of content), adding data (i.e. first content type tag to the first message). Therefore, under Step 2A, Prong I, claims 1, 14, and 20 are directed towards an abstract idea.
Step 2A, Prong II: Step 2A, Prong II is to determine whether any claim recites any additional element that integrate the judicial exception (abstract idea) into a practical application. Claims 1, 14, and 20 recite additional limitations including at a computing device, and “generating a display of a user interface (UI) of a messaging application”. The limitations reciting – at a computing device, and “generating a display of a user interface (UI) of a messaging application” are seen as adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f). Accordingly, alone, and in combination, these additional elements are seen as using a computer or tool to perform an abstract idea, adding insignificant-extra-solution activity to the judicial exception. They do no more than link the judicial exception to a particular technological environment or field of use, i.e. computing device, and therefore do not integrate the abstract idea into a practical application. The courts decided that although the additional elements did limit the use of the abstract idea, the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment and this fails to add an inventive concept to the claims (See Affinity Labs of Texas v. DirecTV, LLC,). Under Step 2A, Prong II, these claims remain directed towards an abstract idea.
Step 2B: Claims 1, 14, and 20 recite additional limitations including at a computing device, and “generating a display of a user interface (UI) of a messaging application”. The limitations reciting – at a computing device, and “generating a display of a user interface (UI) of a messaging application” do not integrate the judicial exception (abstract idea) into a practical application because of the analysis provided in Step 2A, Prong II. Claims 1, 14, and 20 do not include additional elements or a combination of elements that result in the claims amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements listed amount to no more than mere instructions to apply an exception using a generic computer component. In addition, the applicant’s specifications describe a “general purpose computer”, ¶ [0029], for implementing the computing device, which do not amount to significantly more than the abstract idea of itself, which is not enough to transform an abstract idea into eligible subject matter. Furthermore, there is no improvement in the functioning of the computer or technological field, and there is no transformation of subject matter into a different state. Under Step 2B in a test for patent subject matter eligibility, these claims are not patent eligible.
Dependent claims 2-13 and 15-19 further recite the method and computer-readable media of claims 1 and 14, respectively. Dependent claims 2-13 and 15-19 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation fail to establish that the claims are not directed to an abstract idea:
Under Step 2A, Prong I, these additional claims only further narrow the abstract idea set forth in claims 1, 14, and 20. For example, claims 2-13 and 15-19 describe the limitations for receiving user selection/input, analyzing content according to user interest, tagging the content data according to content type, and displaying the content according to the user’s interest/input and content type tag – which is only further narrowing the scope of the abstract idea recited in the independent claims.
Under Step 2A, Prong II, for dependent claims 2-13 and 15-19, there are no additional elements introduced. Thus, they do not present integration into a practical application, or amount to significantly more.
Under Step 2B, the dependent claims do not include any additional elements that are sufficient to amount to significantly more than the judicial exception. Additionally, there is no improvement in the functioning of the computer or technological field, and there is no transformation of subject matter into a different state. As discussed above with respect to integration of the abstract idea into a practical application, the additional claims do not provide any additional elements that would amount to significantly more than the judicial exception. Under Step 2B, these claims are not patent eligible.
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(s) 1-4, 9-17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication 2015/0100894 to Kumar in view of U.S. Patent 10,311,514 to Eid.
With respect to Claim 1:
Kumar teaches:
A method, comprising: receiving, at a computing device, input indicating an interest of a user in a first type of content (i.e. receiving input or preference criteria for prioritizing email messages based on user’s interests such as subscribing to emails from a content provider) (Kumar: ¶ [0092] “For example, a page, widget or other user interface (i.e., as part of website 118) may be provided for a user to input or select preferences, including identifying or selecting one or more criteria for prioritizing email messages on their shared environment (e.g., shared environment 1102) or identifying interests (i.e., topics, subjects, hobbies, or the like) in order to receive targeted advertising or recommendations on content providers to which the user may want to subscribe.”);
receiving, by the computing device, a first electronic message addressed to an inbox of the user (i.e. receiving email message addressed to user) (Kumar: ¶ [0097] “Attention is now directed to FIG. 12A where one example of a flow diagram 1200a for generating a grid view including one or more tiles is depicted. At a stage 1201, an electronic email message (EMM) ( e.g., an email, a message, a newsletter, an advertisement, an invoice, etc.) is received at a first domain. The first domain may be any unique address that may be electronically accessed, such as by way of an email address, a uniform resource identifier (URI), a uniform resource locator (URL), a uniform resource name (URN), or the like that defines an entity and/or resource by name, for example.”);
analyzing, via the computing device, the first electronic message prior to delivery to the user’s inbox and determining, based on the analysis, that first digital content included in the first electronic message corresponds to the first type of content of interest to the user (i.e. tracking and analyzing email messages, before publication, in order to determine if the email message includes digital content corresponding to the preference type of the user such as subscription email) (Kumar: ¶ [0094] “In some examples, an application for email processing and publication on shared environment 1102 ( e.g., application 200 in FIG. 2) may be configured to gather, organize, process and/or store data (i.e., "track" data) associated with user preferences and activity (i.e., actions on, or interactions with, shared environment 1102), as described above. For example, a variety of types of data associated with messages displayed on shared environment 1102, including a user's activity, may be tracked for use in targeting advertisements and other subscription emails that may be of interest to a user. Activity data may include types of (i.e., subjects, products, brands, interests, or other aspects of content in) emails subscribed to, unsubscribed from, prioritized, demoted, liked by friends, linked to, viewed many times, viewed for long periods of time, trends indicated by such activity, or other metrics. Such activity data may be processed to determine trends, patterns, or other useful information about a user (e.g., buying patterns, media ( e.g., books, video, music, and the like) preferences, interests, hobbies, and the like). In some examples, targeted advertisements or subscription email suggestions (e.g., newsletters, marketing emails, or other opt-in emails that may be of interest to a user) may be determined and provided to a user based upon activity data associated with the user's account.” Furthermore, as cited in ¶ [0079] “In some examples, the account associated with an application for email processing and publication on a shared environment ( e.g., application 200 in FIG. 2) may be configured to retrieve or receive (i.e., using an API, as described herein) subscription emails directly and/or securely from content providers to which the account is subscribed, and to filter and not publish to a shared environment emails from content providers to which the account does not subscribe. For example, emails received for an address may be checked against a stored list of subscriptions for an account associated with the address before publication on a shared environment. In an example, if an email message is received from a content provider to which the account associated with a recipient address is not subscribed, the email message may not be published. In another example, if an email message is received from a content provider to which the account associated with a recipient address is subscribed, the email message will be given a high priority position in a shared environment ( e.g., shared environment 1102 in FIG. 11 ), and if the email message is received from a content provider to which the account is not subscribed, given a low priority position in a shared environment (e.g., shared environment 1102 in FIG. 11).”);
adding, via the computing device, based on the analysis, a first content type tag to the first electronic message […] (i.e. adding a first content type tag to the email message) (Kumar: ¶¶ [0098] [0099] “At a stage 1203 the EMM is parsed to identify content in the EMM for subsequent tiling as will be described below. Content in the EMM may include but is not limited to text, images, media, metadata, objects, links, lists, and hyperlinks to other content, for example. Media may include but is not limited to audio, video, audio/video, animation, and other media formats. The EMM may include tags that are associated with and may define or describe the content the tag is associated with. The tags may be associated with and/or recognized those typically used by browsers (e.g., Firefox™, Chrome™, IE™, Bing™ or others) that operate on HTML data. Parsing at the stage 1203 may be accomplished using a variety of software, algorithms, program code, and the like, including but not limited to Java™, parsers that are Java™ based, a custom parser, or others…At a stage 1205 content identified by the parsing at the stage 1203 is extracted into one or more content types. The one or more content types may be those described above, but are not limited to content types described herein. For purposes of explanation, the following may be some of the content types that are extracted: text (T), image (I), media (M), and link (L).”); and
generating, via the computing device, a display of a user interface (UI) of a messaging application at a client computing device, the UI comprising first and second objects selectable by the user (i.e. generating a UI for display comprising first and second selectable objects) (Kumar: ¶ [0083] “Displaying one or more messages in a prioritized (e.g., left to right, top to bottom, and the like, according to one or more criteria) and tiled format, or other web browsing interface, on a shared environment may promote readability (i.e., messages may be easier to see, read, review, skim, or otherwise be visually consumed by a user), as described below (FIG. 11). In some examples, a shared environment may include other items (e.g., hyperlinks, buttons, icons, widgets, or the like) for sorting, prioritizing, sharing, searching, or performing other acts associated with a published clean version of a message (see, e.g., FIG. 11).”),
selection of the first object causing a first UI display comprising a listing of electronic messages addressed to the inbox of the user, the listing comprising a first display item corresponding to the first electronic message, […] (i.e. first selection allows user to view all emails or first display item corresponding to first email) (Kumar: Fig. 11 and ¶ [0085] “As shown, shared environment 1102 may display, show, or otherwise publish, cleaned versions of email messages in an open tiled format, where the contents of a cleaned version of a message is displayed in a tile, for example, including image, video, or other content. For example, each of tiles 1124-1138 may represent (i.e., show, display, be associated with, or the like) a cleaned version of a message. Each tile may display a timestamp or age of a message ( e.g., timestamp 1140-1150), a subject of a message ( e.g., subjects 1152-1162), and a part or all of a body of a message (e.g., message bodies 1164-1178).”),
selection of the second object causing a second UI display corresponding to each electronic message, of a number of electronic messages in the user's inbox having a respective content type tag, the second UI display displaying digital content extracted from each one of the number of electronic messages in accordance with each one's respective content type tag, for the first electronic message, the second UI display comprising a second display item comprising the first digital content corresponding to the first type of content of interest to the user extracted from the first electronic message in accordance with the first content type tag included in the first electronic message (i.e. selecting filter options causes a second UI to display electronic messages allows user to see how many email messages are in the corresponding filtered content type) (Kumar: Elements 1108-1120 in Fig. 11 and ¶ [0091] “In some examples, shared environment 1102 may display, or otherwise provide, other links, icons, and/or buttons associated with various functions, for example, linking to other pages associated with shared environment 1102. For example, shared environment may include filters 1108-1120 for filtering email messages published on shared environment 1102, for example, by subject matter. In some examples, each of filters 1108-1120 may be implemented as an icon, button, or other hyperlink, which may be invoked ( e.g., by clicking, placing a cursor over, or otherwise selected) to show a subset of the messages published on shared environment 1102. For example, filter 1108 may be invoked to show only a subset of messages being associated with ( e.g., categorized under, tagged as having subject matter regarding, or otherwise associated with) lifestyle in shared environment 1102. Similarly, filter 1110 may be invoked to show only a subset of messages being associated with humor in shared environment 1102. Also similarly, filters 1112-1120 may be invoked to show only a subset of messages being associated, respectively, with sports, technology, science, miscellaneous and favorites. In some examples, shared environment 1102 also may include search field 1122, which may provide a field for entering a query or term for searching, for example, data associated with messages being published on shared environment 1102. In some examples, search field 1122 may enable searching of other data associated with other messages.”).
Kumar does not explicitly disclose adding, via the computing device, a first content type tag to the first electronic message indicating that the first digital content included in the first electronic message is of the first type of content of interest to the user; and the first display item comprising an annotation corresponding to the first content type tag and indicating that the first electronic message includes the first type of content of interest to the user.
However, Eid further discloses:
adding, via the computing device, a first content type tag to the first electronic message indicating that the first digital content included in the first electronic message is of the first type of content of interest to the user (i.e. adding or flagging a first content type to the electronic message, the content type tag indicating a first type of content of interest) (Eid: Col. 6 Lines 9-19 “According to the embodiments of the disclosure, the financial messaging platform may flag (tag) information as it is entered into the platform. Flagging may include identifying information of a particular information type, recording the information, and presenting the information in a uniform manner. For example, if a user inputs "I executed a trade of AAPL at $451.64," the platform may recognize the information as a trade, create a flagged record of the information within the message, and present the flagged message to selected users of the messaging platform in a uniform manner, such as, "TRADE: AAPL@ $451.64."); and
the first display item comprising an annotation corresponding to the first content type tag and indicating that the first electronic message includes the first type of content of interest to the user (Eid: Col. 10 Lines 45-63 “Further, the display of the financial product related messages 302 may be accompanied by a user alert, such as an accompanying sound, acoustic message or color to indicate a new post. Users may also modify the financial product related messages 302 they submitted after they have been already displayed. The members of the financial messaging platform 16 may be notified of the change. Notably, the users can change the type of financial product related messages 302, such as to change "Trade" message to "Order" message or the like, but not the prices. In some instances, the users can also remove tags such as "T," "M," or "O." In either case, if the user wants to change the type of the financial product related messages 302 or remove a corresponding tag, the user may click on the message of interest so that a drop down menu is shown enabling the user to select an appropriate action. In some example embodiments, the users may need to click on a dedicated icon such as shown in the figures as a black circle with a "T," "M," or "O" letter inside the circle.”).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to add Eid’s adding, via the computing device, a first content type tag to the first electronic message indicating that the first digital content included in the first electronic message is of the first type of content of interest to the user; and the first display item comprising an annotation corresponding to the first content type tag and indicating that the first electronic message includes the first type of content of interest to the user to Kumar’s generating, via the computing device, a user interface (UI) of a messaging application for display at a client computing device, the UI comprising first and second objects selectable by the user. One of ordinary skill in the art would have been motivated to do so because “users can easily differentiate these types of messages” (Eid: Col. 1 Line 67) and “automatically tagged and/or aggregated into information pools to make it even more accessible by the users” (Eid: Col. 2 Lines 4-5).
With respect to Claims 14 and 20:
All limitations as recited have been analyzed and rejected to claim 1. Claim 14 recites “A non-transitory computer-readable storage medium tangibly encoded with computer-executable instructions, that when executed by a processor associated with a computing device, performs” (Kumar: ¶¶ [0037] [0071]) the steps of method claim 1. Claim 20 recites “A computing device comprising: a processor; and a non-transitory computer-readable storage medium for tangibly storing thereon program logic for execution by the processor, the program logic comprising:” (Kumar: ¶¶ [0037] [0071]) the steps of method claim 1. Claims 14 and 20 do not teach or define any new limitations beyond claim 1. Therefore they are rejected under the same rationale.
With respect to Claim 2:
Kumar teaches:
The method of claim 1, wherein the UI further comprises a third object selectable by the user, selection of the third object causing a third UI display comprising digital content extracted from electronic messages addressed to one or more other users (i.e. third selectable object comprises a UI displaying a share button which display electronic messages that were shared or addressed to other users) (Kumar: Element 1106 in Fig. 11 and ¶ [0090] “In some examples, shared environment 1102 may include share button 1106, which may be invoked (e.g., by clicking, placing a cursor over, or otherwise selected) to render and present a page configured for sharing one or more messages presented in tiles 1124-1136, or in other tiles published above or below tiles 1124-1136 (not shown). In some examples, sharing may include forwarding to another user, another email address, publishing (e.g., recommending, liking, posting, linking, or otherwise publishing) on a social network (e.g., Facebook, Twitter, Google+, or the like), for example, using access information associated with both an email account (i.e., provided by a system for electronic mail processing and publication) and a social network account.”).
With respect to Claim 15:
All limitations as recited have been analyzed and rejected to claim 2. Claim 15 does not teach or define any new limitations beyond claim 2. Therefore it is rejected under the same rationale.
With respect to Claim 3:
Kumar teaches:
The method of claim 1, wherein the second UI display comprises multiple display areas, each display area for a corresponding to one of multiple content type tags, the second display item comprising the first digital content extracted from the first electronic message being displayed in a display area, of the multiple display areas, corresponding to the first content type tag (i.e. UI comprises of multiple display areas corresponding to each content type tag) (Elements 1108-1120 in Fig. 11 and ¶ [0091] “In some examples, shared environment 1102 may display, or otherwise provide, other links, icons, and/or buttons associated with various functions, for example, linking to other pages associated with shared environment 1102. For example, shared environment may include filters 1108-1120 for filtering email messages published on shared environment 1102, for example, by subject matter. In some examples, each of filters 1108-1120 may be implemented as an icon, button, or other hyperlink, which may be invoked ( e.g., by clicking, placing a cursor over, or otherwise selected) to show a subset of the messages published on shared environment 1102. For example, filter 1108 may be invoked to show only a subset of messages being associated with ( e.g., categorized under, tagged as having subject matter regarding, or otherwise associated with) lifestyle in shared environment 1102. Similarly, filter 1110 may be invoked to show only a subset of messages being associated with humor in shared environment 1102. Also similarly, filters 1112-1120 may be invoked to show only a subset of messages being associated, respectively, with sports, technology, science, miscellaneous and favorites. In some examples, shared environment 1102 also may include search field 1122, which may provide a field for entering a query or term for searching, for example, data associated with messages being published on shared environment 1102. In some examples, search field 1122 may enable searching of other data associated with other messages.”).
With respect to Claim 16:
All limitations as recited have been analyzed and rejected to claim 3. Claim 16 does not teach or define any new limitations beyond claim 3. Therefore it is rejected under the same rationale.
With respect to Claim 4:
Kumar teaches:
The method of claim 3, wherein each respective display area comprises a descriptive indicator of its corresponding content type tag (i.e. each tab includes a description corresponding to the content type tag) (Elements 1108-1120 in Fig. 11 and ¶ [0091] “In some examples, shared environment 1102 may display, or otherwise provide, other links, icons, and/or buttons associated with various functions, for example, linking to other pages associated with shared environment 1102. For example, shared environment may include filters 1108-1120 for filtering email messages published on shared environment 1102, for example, by subject matter. In some examples, each of filters 1108-1120 may be implemented as an icon, button, or other hyperlink, which may be invoked ( e.g., by clicking, placing a cursor over, or otherwise selected) to show a subset of the messages published on shared environment 1102. For example, filter 1108 may be invoked to show only a subset of messages being associated with ( e.g., categorized under, tagged as having subject matter regarding, or otherwise associated with) lifestyle in shared environment 1102. Similarly, filter 1110 may be invoked to show only a subset of messages being associated with humor in shared environment 1102. Also similarly, filters 1112-1120 may be invoked to show only a subset of messages being associated, respectively, with sports, technology, science, miscellaneous and favorites. In some examples, shared environment 1102 also may include search field 1122, which may provide a field for entering a query or term for searching, for example, data associated with messages being published on shared environment 1102. In some examples, search field 1122 may enable searching of other data associated with other messages.”) .
With respect to Claim 17:
All limitations as recited have been analyzed and rejected to claim 4. Claim 17 does not teach or define any new limitations beyond claim 4. Therefore it is rejected under the same rationale.
With respect to Claim 9:
Kumar teaches:
The method of claim 1, wherein receiving input indicating an interest of a user further comprises: receiving the input from the user, the user input comprising at least one of a text entry by the user in association with a text entry area of the messaging application's UI, and a selection of recommended content preference information provided within the messaging application's UI (i.e. user inputs text such as address, and a selection of recommended content preference information is provided via interface) (Kumar: ¶ [0113] “In FIG. 12F, a subscriber to the aggregating domain upon logging in ( e.g., user name & password) into the domain may enter an address (e.g., URL 1280) where tiles 1251 associated with the subscribers subscribed to EMM's are populated with the various content types as described above. The processed EMM' s presented in the tile 1251 format may reflect the subscribers interest in food, fashion, automobiles, bicycling, fitness, bargain hunting, and a variety of other interests. As one example, a received EMM relating to a bespoke bicycle shop in another state is subscribed to by the subscriber, is processed after being received, and generated into tile 1251, which becomes selected tile 1251 when activated by cursor 1230s. Content rotation CR of text Tl textually describes in several paragraphs, custom bicycle features being visually displayed in regard to content rotation CR of image I1 which comprises several images for each of the custom features. Paragraph one may describe features in image one, and so forth. In some examples, the subscriber may have other persons or entities that he/she may wish to share some or all of the content in a tile 1251. To that end, a tile 1251 may include an icon or other field or image that when activated (e.g., via the cursor 1230s or other) may allow the tile's content to be shared (e.g., as another EMM to another domain). For example, activating a "Share" icon 1289 in selected tile 1251' may cause content in that tile to be emailed or otherwise transmitted to an address such as an email address, URI, URN, URL, or other. In some examples, activating the "Share" icon 1289 results in content in the selected tile 1251' being shared only with another subscriber to the aggregating domain 1280. That is Jane_Doe@aggregating. domain.com may share tile 1251' with one or more subscribers such as subscriber John.Doe@aggregating.domain.com, for example. Although not depicted in FIG. 12F, selected tile 1251' or any other selected tile(s) in grid view 1250 may be displayed with prominent view as described in regards to tile 1251h' in FIG. 12E.”).
With respect to Claim 10:
Kumar teaches:
The method of claim 1, further comprising: analyzing activity of the user on a network (i.e. tracking and analyzing user’s activity) (Kumar: ¶ [0094] “In some examples, an application for email processing and publication on shared environment 1102 ( e.g., application 200 in FIG. 2) may be configured to gather, organize, process and/or store data (i.e., "track" data) associated with user preferences and activity (i.e., actions on, or interactions with, shared environment 1102), as described above. For example, a variety of types of data associated with messages displayed on shared environment 1102, including a user's activity, may be tracked for use in targeting advertisements and other subscription emails that may be of interest to a user. Activity data may include types of (i.e., subjects, products, brands, interests, or other aspects of content in) emails subscribed to, unsubscribed from, prioritized, demoted, liked by friends, linked to, viewed many times, viewed for long periods of time, trends indicated by such activity, or other metrics.”);
determining, based on the activity, at least one type of content (i.e. determining type of content based on tracked activity) (Kumar: ¶ [0094] “Such activity data may be processed to determine trends, patterns, or other useful information about a user (e.g., buying patterns, media ( e.g., books, video, music, and the like) preferences, interests, hobbies, and the like). In some examples, targeted advertisements or subscription email suggestions (e.g., newsletters, marketing emails, or other opt-in emails that may be of interest to a user) may be determined and provided to a user based upon activity data associated with the user's account. In other examples, targeted advertisements or subscription email suggestions may be determined and provided to a user based upon activity data associated with one or more groups or a plurality of users.”); and
communicating, over the network, the at least one type of content for selection by the user from within the messaging application's UI (i.e. communicating the type of content for selection by user via interface) (Kumar: ¶ [0094] “In some examples, activity data may be used by an application for email processing and publication on shared environment 1102 (e.g., application 200 in FIG. 2) to provide targeted advertisements or subscription email suggestions to a user. In other examples, such activity data may be shared with, or provided to, content providers for their use in targeting advertisements, marketing emails, newsletters and the like. For example, activity data indicating a user subscribes to, prioritizes, and/or has friends that like, a string instrument newsletter may cause an application for email processing and publication on shared environment 1102 (e.g., application 200 in FIG. 2) or a content provider to target an advertisement for a hand cream to the user. In still other examples, data associated with an application for email processing and publication on shared environment 1102 may be used differently and are not limited to the examples shown and described.”).
With respect to Claim 11:
Kumar teaches:
The method of claim 10, wherein the activity is selected from a group consisting of: actions on electronic messages performed by the user, search history of the user, product identifiers in electronic messages in the inbox of the user, and merchant information (i.e. activity includes actions on electronic messages, merchant information, impression or search history of user, and products purchased in electronic messages of user) (Kumar: ¶ [0094] “In some examples, an application for email processing and publication on shared environment 1102 ( e.g., application 200 in FIG. 2) may be configured to gather, organize, process and/or store data (i.e., "track" data) associated with user preferences and activity (i.e., actions on, or interactions with, shared environment 1102), as described above. For example, a variety of types of data associated with messages displayed on shared environment 1102, including a user's activity, may be tracked for use in targeting advertisements and other subscription emails that may be of interest to a user. Activity data may include types of (i.e., subjects, products, rands, interests, or other aspects of content in) emails subscribed to, unsubscribed from, prioritized, demoted, liked by friends, linked to, viewed many times, viewed for long periods of time, trends indicated by such activity, or other metrics. Such activity data may be processed to determine trends, patterns, or other useful information about a user (e.g., buying patterns, media ( e.g., books, video, music, and the like) preferences, interests, hobbies, and the like). In some examples, targeted advertisements or subscription email suggestions (e.g., newsletters, marketing emails, or other opt-in emails that may be of interest to a user) may be determined and provided to a user based upon activity data associated with the user's account. In other examples, targeted advertisements or subscription email suggestions may be determined and provided to a user based upon activity data associated with one or more groups or a plurality of users. In some examples, activity data may be used by an application for email processing and publication on shared environment 1102 (e.g., application 200 in FIG. 2) to provide targeted advertisements or subscription email suggestions to a user. In other examples, such activity data may be shared with, or provided to, content providers for their use in targeting advertisements, marketing emails, newsletters and the like. For example, activity data indicating a user subscribes to, prioritizes, and/or has friends that like, a string instrument newsletter may cause an application for email processing and publication on shared environment 1102 (e.g., application 200 in FIG. 2) or a content provider to target an advertisement for a hand cream to the user. In still other examples, data associated with an application for email processing and publication on shared environment 1102 may be used differently and are not limited to the examples shown and described.”).
With respect to Claim 12:
Kumar teaches:
The method of claim 1, wherein the computing device is a server computer (Kumar: ¶ [0040] “FIG.1 illustrates an exemplary system for electronic mail processing and publication for shared environments. Here, system 100 includes network 102, clients 104-110, server 112, databases 114-116, and website 118. "Elements" may refer to one or more of network 102, clients 104-110, server 112, databases 114-116, and website 118 shown in association with system 100. As shown, the type, quantity, configuration, topology, and other characteristics are provided for purposes of illustration only and may be varied beyond the examples shown and provided. In some examples, network 102 may be any type of data network including, without limitation, a local area network (LAN), wide area network (WAN), municipal area network (MAN), wireless local area network (WLAN), computing cloud, or any other type of aggregation of computing, networking, storage, or processing resources. As shown, clients 104-110 may be implemented as a desktop computer ( e.g., client 104), mobile communication (i.e., voice and data) device ( e.g., client 106), mobile computing device (e.g., client 108), or notebook or laptop (i.e., portable) computing device (client 110). Each of clients 104-110 may be in data communication with server 112 using network 102. In some examples, server 112 may be a web, application, email, or other type of server, without limitation.”).
With respect to Claim 13:
Kumar teaches:
The method of claim 1, wherein the computing device is the client computing device (Kumar: ¶ [0040] “FIG.1 illustrates an exemplary system for electronic mail processing and publication for shared environments. Here, system 100 includes network 102, clients 104-110, server 112, databases 114-116, and website 118. "Elements" may refer to one or more of network 102, clients 104-110, server 112, databases 114-116, and website 118 shown in association with system 100. As shown, the type, quantity, configuration, topology, and other characteristics are provided for purposes of illustration only and may be varied beyond the examples shown and provided. In some examples, network 102 may be any type of data network including, without limitation, a local area network (LAN), wide area network (WAN), municipal area network (MAN), wireless local area network (WLAN), computing cloud, or any other type of aggregation of computing, networking, storage, or processing resources. As shown, clients 104-110 may be implemented as a desktop computer ( e.g., client 104), mobile communication (i.e., voice and data) device ( e.g., client 106), mobile computing device (e.g., client 108), or notebook or laptop (i.e., portable) computing device (client 110). Each of clients 104-110 may be in data communication with server 112 using network 102. In some examples, server 112 may be a web, application, email, or other type of server, without limitation.”).
Claim(s) 5, 6, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar and Eid in view of U.S. Publication 2014/0096032 to Mayblum.
With respect to Claim 5:
Kumar and Eid do not explicitly disclose the method of claim 4, wherein each respective display area further displays a count of the number of corresponding display items.
However, Mayblum further discloses wherein each respective display area further displays a count of the number of corresponding display items (i.e. each number of messages tagged are displayed according to their tagged content type) (Mayblum: ¶ [0042] “For instance, shoebox list view 300 is a one-column table, with a column header of "Christian Stevens and Me" 301, and a set of rows where each row relates to a specific shoebox as generated by the tagging module 101 (i.e. the shoeboxes of "Photos & Videos" 302, "Links" 303, "Locations" 304, and "Contact Info" 305). The number of messages containing tagged information may additionally be displayed. Further, when the "Links" shoebox 303 is selected (as indicated by box 306), the shoebox list view 300 changes into a link interface 307, which is displayed by the media management application 100, e.g., according to instructions in interface module 103.”).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to add Mayblum’s adding, via the computing device, a first content type tag to the first electronic message indicating that the first digital content included in the first electronic message is of the first type of content of interest to the user; and the first display item comprising an annotation corresponding to the first content type tag and indicating that the first electronic message includes the first type of content of interest to the user to Kumar’s generating, via the computing device, a user interface (UI) of a messaging application for display at a client computing device, the UI comprising first and second objects selectable by the user. One of ordinary skill in the art would have been motivated to do so in order to “have efficient mechanisms for keeping track of various media, or for accessing content.” (Mayblum: ¶ [0001]).
With respect to Claim 18:
All limitations as recited have been analyzed and rejected to claim 5. Claim 18 does not teach or define any new limitations beyond claim 5. Therefore it is rejected under the same rationale.
With respect to Claim 6:
Kumar and Eid do not explicitly disclose the method of claim 5, wherein a display area of the second UI display displays a count of zero indicating that there are no corresponding display items.
However, Mayblum further discloses wherein a display area of the second UI display displays a count of zero indicating that there are no corresponding display items (Examiner notes that the display area displays a count of the number of messages in the corresponding content type tag. The Examiner takes official notice that if no messages corresponding to "Photos & Videos", "Links", "Locations", and "Contact Info" then the display area will display a zero) (Mayblum: Fig. 3 and ¶ [0042] “For instance, shoebox list view 300 is a one-column table, with a column header of "Christian Stevens and Me" 301, and a set of rows where each row relates to a specific shoebox as generated by the tagging module 101 (i.e. the shoeboxes of "Photos & Videos" 302, "Links" 303, "Locations" 304, and "Contact Info" 305). The number of messages containing tagged information may additionally be displayed. Further, when the "Links" shoebox 303 is selected (as indicated by box 306), the shoebox list view 300 changes into a link interface 307, which is displayed by the media management application 100, e.g., according to instructions in interface module 103.”).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to add Mayblum’s display area of the second UI display displays a count of zero indicating that there are no corresponding display items to Kumar’s generating, via the computing device, a user interface (UI) of a messaging application for display at a client computing device, the UI comprising first and second objects selectable by the user. One of ordinary skill in the art would have been motivated to do so in order to “have efficient mechanisms for keeping track of various media, or for accessing content.” (Mayblum: ¶ [0001]).
With respect to Claim 19:
All limitations as recited have been analyzed and rejected to claim 6. Claim 19 does not teach or define any new limitations beyond claim 6. Therefore it is rejected under the same rationale.
Claim(s) 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar and Eid in view of U.S. Publication 2015/0033141 to Mishra.
With respect to Claim 7:
Kumar and Eid do not explicitly disclose the method of claim 1, wherein the first electronic message includes a second content type tag corresponding to a second type of content of interest to the user, the first display item further comprising another annotation corresponding to the second content type tag and indicating that the first electronic message includes the second type of content of interest to the user.
However, Mishra further discloses wherein the first electronic message includes a second content type tag corresponding to a second type of content of interest to the user, the first display item further comprising another annotation corresponding to the second content type tag and indicating that the first electronic message includes the second type of content of interest to the user (i.e. first electronic message includes a first type annotation for content such as “Personal” and also includes a second type of annotation for content such as “Friends” or “Family”) (Mishra: ¶ [0080] “In Step 510, the data extraction engine 406 applies the template to the message received in Step 502. The application of the template is to identify and extract the relevant portions of the email message. From the above example involving James-Scott, the message was "Personal" and the appropriate/associated template was identified. Now, the "Personal" template is applied to the email (i.e., email content). Here, it is understood that the learning engine 402 has parsed and identified past personal emails from other users, as well as such emails to James. Additionally, personal emails typically follow a similar format, such as including the greeting, memo in the email, and the sign-off ( or farewell). Therefore, the "Personal" message is extracted in accordance with the "Personal" template. It should be understood that there can be sub-categories of templates which are identifiable and applicable to certain email messages. For example, some personal messages are from friends and some are from family. Therefore, these messages may follow a different format. In another example, some "Business" emails may be from company 1 and company 2. In some embodiments, categories and associated templates can be created for specific companies or types of businesses.”).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to add Mishra’s first electronic message includes a second content type tag corresponding to a second type of content of interest to the user, the first display item further comprising another annotation corresponding to the second content type tag and indicating that the first electronic message includes the second type of content of interest to the user to Kumar’s generating, via the computing device, a user interface (UI) of a messaging application for display at a client computing device, the UI comprising first and second objects selectable by the user. One of ordinary skill in the art would have been motivated to do so in order “for displaying electronic mail messages in an inbox with enhanced content derived from the email messages thereby allowing users to interact with the messages from the inbox” (Mishra: ¶ [0006]).
With respect to Claim 8:
Kumar and Eid do not explicitly disclose the method of claim 1, wherein classification and regression software is used in analyzing the first electronic message and determining that the first digital content corresponds to the first type of content of interest to the user.
However, Mishra further discloses wherein classification and regression software is used in analyzing the first electronic message and determining that the first digital content corresponds to the first type of content of interest to the user (i.e. logistic regression model is used for classification and regression analysis of electronic messages in order to determine that the content corresponds to a type of content of interest to the user) (Mishra: ¶¶ [0072] [0073] “The learning module 402 can employ categorizers using logistic regression or learning models including support vector machines (SVMs) to parse, identify, extract and map the message information as discussed above. It should be understood that known or to be known learning algorithms and models that analyze data and recognize patterns for classification and regression analysis can be utilized in accordance with the present disclosure… The categorization engine 404 implements the data "learned" by the learning engine 402 in order to categorize messages received for a recipient based on the sender's address, as discussed above. For example, recipient A receives a message from his mother and a message confirmation for the flight itinerary he has just booked. Thus, the message from his mother would be categorized as "Personal," as it would be understood from the learning engine's 402 development that most messages from a relative should be personal. In a similar manner, messages received from a travel site, such as Kayak.com, would be regarded as "Travel."”).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to add Mishra’s classification and regression software is used in analyzing the first electronic message and determining that the first digital content corresponds to the first type of content of interest to the user to Kumar’s generating, via the computing device, a user interface (UI) of a messaging application for display at a client computing device, the UI comprising first and second objects selectable by the user. One of ordinary skill in the art would have been motivated to do so in order “for displaying electronic mail messages in an inbox with enhanced content derived from the email messages thereby allowing users to interact with the messages from the inbox” (Mishra: ¶ [0006]).
Response to Arguments
Applicant’s arguments see page 8 of the Remarks disclosed, filed on 12/11/2025, with respect to the nonstatutory double patenting rejection(s) of claim(s) 1-20 have been considered but are not persuasive. The Applicant has stated “Claims 1-20 are rejected under the grounds of non-statutory double patenting over claims 1-19 of U.S. Patent No. 11,961,108 (the ‘108 Patent). Upon an indication of allowability of the present application, and after a prima facie case against the allowed claims has been presented, Applicant will address the double patenting rejection, and if needed submit an appropriate Terminal Disclaimer to obviate this rejection. While no prima facie case is made against the instant claims, it is respectfully submitted that such a rejection is inappropriate, as there is no evidence of record that the instant claims are obvious variants of the claims of the ‘108 Patent, rather the instant claims are patentably distinct.” Therefore, the rejection(s) of claim(s) 1-20 under the nonstatutory double patenting rejection is maintained above.
Applicant’s arguments see pages 15-21 of the Remarks disclosed, filed on 12/11/2025, with respect to the 35 U.S.C. § 101 rejection(s) of claim(s) 1-20 have been considered but are not persuasive:
The Applicant asserts “The claims are not directed to the abstract idea of performing commercial transactions or mental processes. Rather, the claims are directed to a specific technical solution to a specific technical problem: the technical challenge of providing an electronic mail user interface enabling notifications of content in electronic messages, efficient navigation and reduced searching. This is a technology-centric problem that did not exist before the advent of electronic mail messaging systems. To the extent the Examiner relies on the "mental process" grouping of abstract ideas, this reliance is misplaced. According to MPEP 2106.04, a mental process is one that "can be performed in the human mind, or by a human using a pen and paper." The August Memorandum reminds examiners that "the mental process grouping is not without limits" and cautions examiners "not to expand this grouping in a manner that encompasses claim limitations that cannot practically be performed in the human mind." The claimed method cannot practically be performed in the human mind or with pen and paper. Specifically: 1. Electronic mail message analysis, prior to delivery of the electronic mail message to a user's inbox, to determine that digital content included in the electronic message corresponds to a first type of content of interest to the user cannot be performed mentally; 2. Electronic mail message content type tag added to the electronic message indicating that the that the first digital content included in the first electronic message is of the first type of content of interest to the user requires computer processing capabilities; 3. Messaging application user interface generation and display are inherently technological operations. These operations recite specific electronic message analysis and augmentation, and user interface generation and display that fall well outside the scope of what can be performed mentally.” The Examiner respectfully disagrees. The “electronic mail user interface” is recited at a high level that it merely describes the computer environment in which the abstract idea takes places. There is no improvement to “the fields of networked computing and messaging”. The claims make no mention of taking into account storage space for the messages or any kind of improvement to the system’s memory or graphical user interface. At most, the claims merely disclose reorganizing/displaying mail messages according to user interest which further describes the abstract idea and the mailbox system or GUI or networked computing merely describes the computing environment in which the abstract idea takes place. Furthermore, Claims 1, 14, and 20 recite limitations directed to the abstract idea including receiving input indicating an interest of a user in a first type of content; receiving a first electronic message addressed to an inbox of the user; analyzing the first electronic message prior to delivery to the user’s inbox and determining, based on the analysis, that first digital content included in the first electronic message corresponds to the first type of content of interest to the user; adding, based on the analysis, a first content type tag to the first electronic message indicating that the first digital content included in the first electronic message is of the first type of content of interest to the user; and the UI comprising first and second objects selectable by the user, selection of the first object causing a first UI display comprising a listing of electronic messages addressed to the inbox of the user, the listing comprising a first display item corresponding to the first electronic message, the first display item comprising an annotation corresponding to the first content type tag and indicating that the first electronic message includes the first type of content of interest to the user, selection of the second object causing a second UI display corresponding to each electronic message, of a number of electronic messages in the user's inbox having a respective content type tag, the second UI display displaying digital content extracted from each one of the number of electronic messages in accordance with each one's respective content type tag, for the first electronic message, the second UI display comprising a second display item comprising the first digital content corresponding to the first type of content of interest to the user extracted from the first electronic message in accordance with the first content type tag included in the first electronic message. These further limitations are not seen as any more than the judicial exception. Claims 1, 14, and 20 recite additional limitations including at a computing device, and “generating a display of a user interface (UI) of a messaging application”. The claims are considered to be an abstract idea under certain methods of organizing human activity because the claims are directed to commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) and managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) such as receiving user selection/input, analyzing content according to user interest, tagging the content data according to content type, and displaying the content according to the user’s interest/input and content type tag. The claims are also considered to be an abstract idea under Mental Processes such as concepts performed in the human mind (including an observation, evaluation, judgment, opinion) because the claims are directed to receiving data (i.e. input indicating an interest of a user in a first type of content and a first message addressed to an inbox of the user), and analyzing data (i.e. first message and determining that the first message is the first type of content), adding data (i.e. first content type tag to the first message).
The Applicant also asserts “The claims here describe a specific system implementation involving electronic message content analysis, electronic message augmentation and messaging application user interface generation and display enabling message content notifications, efficient message navigation and reduced message search operations. The claims do not set forth or describe the abstract idea of a commercial transaction. Even assuming arguendo that the claims recite a judicial exception, the claims integrate that exception into a practical application under Step 2A Prong Two. The claims provide a specific improvement to the functioning of computer systems and to the technical field of electronic message processing and augmentation and messaging application user interface generation and display providing message content notifications enabling improved navigation and reduced search operations. According to MPEP 2106.04(d)(1) and MPEP 2106.05(a), a claim that improves computer capabilities or improves an existing technology integrates a judicial exception into a practical application. The August Memorandum explains that "an important consideration in determining whether a claim improves technology or a technical field is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome." The August and December Memoranda further instructs that when evaluating the improvements consideration, examiners should consider "whether the claim purports to improve computer capabilities or to improve an existing technology." Here, the claims improve technology in several specific ways. First, the claims provide a technical solution for addressing the ever-increasing influx of message traffic in an efficient and productive manner. As disclosed in ¶ 0004 of the present application's publication, conventional electronic messaging systems are overwhelmed by, and lack an ability to address, the ever-increasing electronic messaging traffic. A conventional system's typical response to the high traffic volumes is to offer more storage for storing messages in mailboxes that have search and navigational capabilities that are not only limited, but are difficult and time consuming to use. The claims analyze electronic messages prior to delivery to a user's inbox to identity those electronic messages that include content corresponding to the user's specified interests, and to add a content tag to an electronic message based on the analysis, where the tag added to the electronic message indicates that the electronic message includes content that corresponds to the user's specified interest. Second, conventional messaging application user interfaces lack an ability to highlight messages having content that corresponds to a user's specified interest. As disclosed at ¶ 0004, 0008, 0009 and 0044 of the published application, conventional user interfaces display a listing of messages with rudimentary manual search and navigational (e.g., scrolling) capabilities that are difficult and time consuming to use. The claims generate a messaging application user interface displayed at a client computing device enabling first display and second displays - the first display comprising a listing of electronic messages and electronic message annotations, each such electronic message annotation indicating that an annotated electronic message includes content of a type that is of interest to the user, and the second display corresponding to a respective content type tag and displaying content corresponding to the respective tag extracted from each of a number of electronic messages having the respective tag. These improvements are analogous to those found eligible in Enfish, LLC V. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), where the Federal Circuit held that claims directed to a self-referential table for a computer database were eligible because they were "directed to a specific improvement to the way computers operate." Similarly, in McRO, Inc. V. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), the court found claims eligible where they provided a specific technological solution (automatic lip synchronization and facial expression animation) rather than merely claiming the idea of a solution. The specification makes clear that the claims solve the technical problem stated in 0004: there exists a need for solutions to address the ever increasing volumes of 1 electronic messaging traffic. The solution is not merely to generate messaging application user interface in the abstract, but rather to implement a specific technical architecture involving electronic message content analysis, electronic message tag augmentation, and messaging application user interface generation and display including electronic message annotations and content extractions in accordance with the analysis and tag augmentation. The Examiner suggests that the claims amount to merely implementing an abstract idea on generic computer components. This characterization is incorrect and contradicts the guidance in MPEP 2106.05(f) and the August and December Memoranda. The August and December Memoranda caution examiners "not to oversimplify claim limitations and expand the application of the 'apply it' consideration," and notes that "the 'apply it' consideration often overlaps with the improvements consideration." The Memoranda instruct examiners to consider multiple factors including whether the claim recites only the idea of a solution or outcome versus a particular solution. The claims here recite a particular solution involving specific operations ( electronic message analysis, electronic message augmentation, user interface generation and display). This is not merely claiming the idea of generating a messaging application user interface-it is claiming a specific technical implementation. The Memoranda further instruct examiners to determine whether the claim invokes computers merely as a tool versus improving computer capabilities. As discussed above, the claims improve computer capabilities by providing an electronic messaging application user interface enabling message content notifications, efficient electronic message navigation and reduced electronic message searching. Finally, the Memoranda instructs examiners to consider the particularity or generality of the application. The claims are particular in their elements, providing a specific mechanism for analyzing received electronic messages prior to delivery to a user's inbox, determining that content included in a received electronic message is of a type corresponding to the user's specified interest, adding a tag to the received electronic message indicating that it includes content that is over interest to the user and generating a messaging application user interface with a first display that includes annotations identifying electronic messages having content of interest to the user and a second display that displays, for a respective content type of interest to the user, content extracted from each electronic message corresponding to the respective content type of interest to the user. The claims do not simply recite "apply it on a computer." They recite specific technological components working together in a specific way to achieve a specific technical result. This is sufficient to integrate any judicial exception into a practical application.” The Examiner respectfully disagrees. The “electronic mail user interface” is recited at a high level that it merely describes the computer environment in which the abstract idea takes places. The Examiner would also like to note that the claims do not provide a solution to “ever-increasing electronic messaging traffic” and at most may have an ancillary or secondary effect to messaging traffic because the claims do not take into account electronic messaging traffic data. There is no improvement to “the fields of networked computing and messaging”. The claims make no mention of taking into account storage space for the messages or any kind of improvement to the system’s memory or graphical user interface. At most, the claims merely disclose reorganizing/displaying mail messages according to user interest which further describes the abstract idea and the mailbox system or GUI or networked computing merely describes the computing environment in which the abstract idea takes place. Furthermore, Claims 1, 14, and 20 recite additional limitations including at a computing device, and “generating a display of a user interface (UI) of a messaging application”. The limitations reciting – at a computing device, and “generating a display of a user interface (UI) of a messaging application” are seen as adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f). Accordingly, alone, and in combination, these additional elements are seen as using a computer or tool to perform an abstract idea, adding insignificant-extra-solution activity to the judicial exception. They do no more than link the judicial exception to a particular technological environment or field of use, i.e. computing device, and therefore do not integrate the abstract idea into a practical application. The courts decided that although the additional elements did limit the use of the abstract idea, the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment and this fails to add an inventive concept to the claims (See Affinity Labs of Texas v. DirecTV, LLC,).
The Applicant finally asserts “The Examiner's assertion that the additional elements represent well-understood, routine, and conventional activities is conclusory and unsupported. According to MPEP 2106.05(d), an examiner must provide "a reasoned explanation that supports the conclusion" when asserting that claim elements are well-understood, routine, and conventional. The explanation must be "sufficient to establish a prima facie case." Merely citing to the categories listed in MPEP 2106.05(d)(II) is insufficient. Here, the Examiner has not identified any evidence that the specific combination of elements claimed-analysis of a received electronic message and determination, based on the analysis, that content included in the message corresponds to a first type of content of interest to the user, augmentation of the received electronic message to include a first content type tag indicating that the message includes the first type of content of interest to the user, and messaging application user interface generation with a first display listing electronic messages including the received message annotated to indicate that it includes content of the first type of interest to the user and a second display corresponding to a respective content type tag and displaying content corresponding to the respective content type tag extracted from each of a number of messages having the respective content type tag-was well-understood, routine, or conventional at the time of the disclosure. Furthermore, even if individual components might be known, "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces." Even if the Court were to find that the claims recite an abstract idea not integrated into a practical application (which Applicant respectfully submits is incorrect), the claims provide an inventive concept under Step 2B that amounts to significantly more than any judicial exception. The combination of elements-electronic message analysis, electronic message content identification, electronic message tagging, and messaging application user interface generation and display-represents a non-conventional arrangement of components that addresses the specific technical challenge of providing an electronic mail user interface facilitating notifications of content in electronic messages and efficient navigation and minimizing searching. This ordered combination provides significantly more than any abstract idea. Finally, the recent convening of an Appeals Review Panel (ARP) in Ex parte Desjardins (Appeal 2024-000567), is directly relevant to the instant case and supports a finding of eligibility. The ARP was convened specifically to review the Board's rejection of claims under 35 U.S.C. § 101, indicating heightened scrutiny of §101 rejections in technology-related cases. As instructed in the December Memorandum, the claims in Desjardins "reflected a specific improvement that addressed a technical problem in continual learning systems. Like Desjardins, the instant case involves claims to improvements in computer system functionality and data processing, including a specific improvement addressing a technical problem in electronic messaging systems. The institutional concern reflected in the Desjardins ARP proceedings counsels strongly in favor of reconsidering any §101 rejection that does not fully account for the specific technical improvements and particular solutions recited in the claims. Given the parallels to Desjardins, the preponderance of evidence favors a finding of eligibility here.” The Examiner respectfully disagrees. The “electronic mail user interface” is recited at a high level that it merely describes the computer environment in which the abstract idea takes places. The Examiner would also like to note that the claims do not provide a solution to “ever-increasing electronic messaging traffic” or “efficient navigation and minimizing searching” and at most may have an ancillary or secondary effect to messaging traffic because the claims do not take into account electronic messaging traffic data nor do the claim limitations require any searching/navigation functionality. There is no improvement to “the fields of networked computing and messaging”. The claims make no mention of taking into account storage space for the messages or any kind of improvement to the system’s memory or graphical user interface. At most, the claims merely disclose reorganizing/displaying mail messages according to user interest which further describes the abstract idea and the mailbox system or GUI or networked computing merely describes the computing environment in which the abstract idea takes place. Furthermore, Claims 1, 14, and 20 recite additional limitations including at a computing device, and “generating a display of a user interface (UI) of a messaging application”. The limitations reciting – at a computing device, and “generating a display of a user interface (UI) of a messaging application” do not integrate the judicial exception (abstract idea) into a practical application because of the analysis provided in Step 2A, Prong II. Claims 1, 14, and 20 do not include additional elements or a combination of elements that result in the claims amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements listed amount to no more than mere instructions to apply an exception using a generic computer component. In addition, the applicant’s specifications describe a “general purpose computer”, ¶ [0029], for implementing the computing device, which do not amount to significantly more than the abstract idea of itself, which is not enough to transform an abstract idea into eligible subject matter. There is no improvement in the functioning of the computer or technological field, and there is no transformation of subject matter into a different state. Therefore, the rejection(s) of claim(s) 1-20 under 35 U.S.C. § 101 is maintained above with an updated analysis.
Applicant’s arguments see pages 8-15 of the Remarks disclosed, filed on 12/11/2025, with respect to the 35 U.S.C. § 103 rejection(s) of claim(s) 1-4, 9-17, and 20 over Kumar in view of Eid with claims 5, 6, 18, and 19 being rejected in further view of Mayblum and claims 7 and 8 being rejected in further view of Mishra have been considered but are not persuasive:
The Applicant asserts “According to the claimed subject matter, prior to the claimed message is analyzed prior to delivery to the user's inbox to determine that the message's digital content corresponds to a first type of content of interest to the user. Kumar's tracking activity of the user's activities/interactions with a delivered message to provide targeted advertisement to the user fails to disclose, inter alia, the claimed analyzing an electronic message prior to delivery to a user's inbox to determine that the electronic message's first digital content is of a type that is of interest to a user, let alone then using the claimed analysis, performed prior to an message's delivery to a user's inbox, to add the claimed first content type tag to the electronic message. In response to the Examiner's response, T 94 of Kumar tracks a user's activities - i.e., types of emails that the user subscribes to, unsubscribes from, prioritizes, demotes, etc. - to determine trends. In stark contrast to Kumar's tracking a user's activities with a message to determine trends, the claimed subject matter analyzes a message's digital content prior to its delivery to the user's inbox to determine that it contains content of the claimed first type of content of interest to the user. Furthermore, according to the claimed subject matter, the adding claim element is based on the claimed analysis and adds the claimed first content type tag to the claimed message to indicate that the claimed message's digital content is of the first type of content determined by the claimed analysis to be of interest to the user. In stark contrast to the claimed analysis that is the basis for adding S first content type tag to the claimed message indicating that the claimed message's digital content is of the type of content of interest to the user, Kumar describes, at 1 94, that it merely tracks a user's interaction within its environment solely trends for purposes of identifying targeted advertisements to provide to the user.” The Examiner respectfully disagrees. The Examiner would like to refer the Applicant to ¶ [0079] of the Kumar reference; “In some examples, the account associated with an application for email processing and publication on a shared environment ( e.g., application 200 in FIG. 2) may be configured to retrieve or receive (i.e., using an API, as described herein) subscription emails directly and/or securely from content providers to which the account is subscribed, and to filter and not publish to a shared environment emails from content providers to which the account does not subscribe. For example, emails received for an address may be checked against a stored list of subscriptions for an account associated with the address before publication on a shared environment. In an example, if an email message is received from a content provider to which the account associated with a recipient address is not subscribed, the email message may not be published. In another example, if an email message is received from a content provider to which the account associated with a recipient address is subscribed, the email message will be given a high priority position in a shared environment ( e.g., shared environment 1102 in FIG. 11 ), and if the email message is received from a content provider to which the account is not subscribed, given a low priority position in a shared environment (e.g., shared environment 1102 in FIG. 11).” It is clear from the disclosure above that the Kumar reference teaches tracking and analyzing email messages, before the emails are published, in order to determine if the email message includes digital content corresponding to the preference type of the user such as subscription email, wherein a subscription email or other preferences/interests of the user are identified via analyzing the emails.
The Applicant also asserts “Kumar's parsing a message to identify generic types of content to extract from the message in order to form tiles to be displayed in a grid-like display is clearly structurally and functionally different from the claimed subject matter, which: 1) is performed to determine whether to add a content tag to an electronic message in accordance with the claimed user-specified interest in a first type of content; 2) analyzes the electronic mail message to determine that the electronic message's first digital content corresponds to the claimed user-specified interest in the first type of content; and 3) adds the claimed content tag to the electronic message to identify that the electronic message contains data corresponding to the claimed user-specified interest in the first type of content. Kumar description of parsing a message to identify generic types of content to be extracted from the message to be displayed as tiles in a grid-like display fails to disclose at least this claimed subject matter…In stark contrast to analyzing a message to determine that it is a financial messaging platform-specified message type and then tagging the message to indicate that it is a platform-specified type of message (i.e., a trade), the claimed subject matter: 1) receives input indicating an interest of a user in a first type of content and then: 2) analyzes a received message addressed to an inbox of the user; 3) determines that the received message contains the type of content of interest to the user; and 4) adds a content type tag to the received message indicating that the received message's content is of the type of content of interest to the user. Eid's merely describes a financial messaging platform that identifies a platform- specified message type and then tags the message to identify that its content is the platform-specified type of message content, which is clearly not the same as the claimed input indicating an interest of a user in a first type of content.” The Examiner respectfully disagrees. The Examiner would like to refer the Applicant to ¶¶ [0098] [0099] of the Kumar reference; “At a stage 1203 the EMM is parsed to identify content in the EMM for subsequent tiling as will be described below. Content in the EMM may include but is not limited to text, images, media, metadata, objects, links, lists, and hyperlinks to other content, for example. Media may include but is not limited to audio, video, audio/video, animation, and other media formats. The EMM may include tags that are associated with and may define or describe the content the tag is associated with. The tags may be associated with and/or recognized those typically used by browsers (e.g., Firefox™, Chrome™, IE™, Bing™ or others) that operate on HTML data. Parsing at the stage 1203 may be accomplished using a variety of software, algorithms, program code, and the like, including but not limited to Java™, parsers that are Java™ based, a custom parser, or others…At a stage 1205 content identified by the parsing at the stage 1203 is extracted into one or more content types. The one or more content types may be those described above, but are not limited to content types described herein. For purposes of explanation, the following may be some of the content types that are extracted: text (T), image (I), media (M), and link (L).” It is clear from the disclosure above that the Kumar reference teaches adding a first content type tag to the email message. Examiner would like to note that the Kumar reference discloses adding a first content type tag to the first electronic message but does not explicitly disclose adding, via the computing device, a first content type tag to the first electronic message indicating that the first digital content included in the first electronic message is of the first type of content of interest to the user; and the first display item comprising an annotation corresponding to the first content type tag and indicating that the first electronic message includes the first type of content of interest to the user. However, the Eid reference was brought in to disclose that the content type tag indicates a first type of content of interest in at least Col. 6 Lines 9-19 and Col. 10 Lines 45-63, respectively. The Examiner would like to refer the Applicant to Col. 6 Lines 9-19 of the Eid reference; “According to the embodiments of the disclosure, the financial messaging platform may flag (tag) information as it is entered into the platform. Flagging may include identifying information of a particular information type, recording the information, and presenting the information in a uniform manner. For example, if a user inputs "I executed a trade of AAPL at $451.64," the platform may recognize the information as a trade, create a flagged record of the information within the message, and present the flagged message to selected users of the messaging platform in a uniform manner, such as, "TRADE: AAPL@ $451.64."” It is clear from the disclosure above that the Eid reference teaches adding or flagging a first content type to the electronic message, the content type tag indicating a first type of content of interest. One of ordinary skill in the art would have been motivated to do combine these because “users can easily differentiate these types of messages” (Eid: Col. 1 Line 67) and “automatically tagged and/or aggregated into information pools to make it even more accessible by the users” (Eid: Col. 2 Lines 4-5). Furthermore, The Examiner would also like to note that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413,208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091,231 USPQ 375 (Fed. Cir. 1986). Therefore, the rejection(s) of claim(s) 1-20 under 35 U.S.C. § 103 is provided above with updated citations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references are cited to further show the state of the art:
U.S. Publication 2016/0373393 to Seniak for disclosing A method, performed at a server system, includes accessing an electronic message having a message body and received at an account of a respective user. Typically, prior to a first time the respective user views the message body, the electronic message is moved from a first folder of the account of the respective user to a second folder. If the electronic message satisfies predefined criteria, the method includes: generating a modified electronic message that includes the received electronic message and supplemental information related to one or more characteristics of the received electronic message; and storing the modified electronic message in the first folder of the account of the respective user. The modified electronic message is provided to the respective user, at a respective client system, in response to a request for the electronic message.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Azam Ansari, whose telephone number is (571) 272-7047. The examiner can normally be reached from Monday to Friday between 8 AM and 4:30 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner's supervisor, Waseem Ashraf, can be reached at (571) 270-3948.
Another resource that is available to applicants is the Patent Application Information Retrieval (PAIR). Information regarding the status of an application can be obtained from the (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAX. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pairdirect.uspto.gov. Should you have questions on access to the Private PAIR system, please feel free to contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Applicants are invited to contact the Office to schedule either an in-person or a telephonic interview to discuss and resolve the issues set forth in this Office Action. Although an interview is not required, the Office believes that an interview can be of use to resolve any issues related to a patent application in an efficient and prompt manner.
/AZAM A ANSARI/
Primary Examiner, Art Unit 3621
December 22, 2025