Prosecution Insights
Last updated: July 17, 2026
Application No. 18/657,730

SYSTEM AND METHOD FOR SUGGESTING A PHRASE BASED ON A CONTEXT

Non-Final OA §103
Filed
May 07, 2024
Priority
May 09, 2013 — continuation of 9923849 +3 more
Examiner
KIM, HEE SOO
Art Unit
2443
Tech Center
2400 — Computer Networks
Assignee
eBay Inc.
OA Round
3 (Non-Final)
79%
Grant Probability
Favorable
3-4
OA Rounds
9m
Est. Remaining
79%
With Interview

Examiner Intelligence

Grants 79% — above average
79%
Career Allowance Rate
438 granted / 554 resolved
+21.1% vs TC avg
Minimal -0% lift
Without
With
+-0.5%
Interview Lift
resolved cases with interview
Typical timeline
2y 11m
Avg Prosecution
23 currently pending
Career history
586
Total Applications
across all art units

Statute-Specific Performance

§101
7.7%
-32.3% vs TC avg
§103
75.2%
+35.2% vs TC avg
§102
12.0%
-28.0% vs TC avg
§112
2.2%
-37.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 554 resolved cases

Office Action

§103
DETAILED ACTION This action is responsive to RCE filed on March 6th, 2026. Claims 1~20 are examined. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Continued Examination Under 37 CFR 1.114 A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/06/26 has been entered. Response to Arguments Applicant’s arguments with respect to claims 1~20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Double Patenting Claims 1~20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1~20 of U.S Patent No. 11,991,128, clams 1~20 of U.S Patent No. 10,659,406, claims 1~17 of U.S. Patent No. 10,257,137, and claims 1~18 of U.S. Patent No. 9,923,849. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims 1~20 are broader and thus, fully anticipated by the reference patents. Claim Rejections - 35 USC § 103 Claims 1~5, 7~15, and 17~20 are rejected under 35 U.S.C. 103 as being unpatentable over Joshi et al. hereinafter Joshi (U.S 2014/0163954) and Rieman et al. hereinafter Rieman (WO 2008/120033) in view of Bower et al. hereinafter Bower (U.S 2010/0161733). Regarding Claim 1, Joshi taught a method comprising: receiving user-defined rules associated with providing suggested content items [¶76, a user of a device can enter text to be banned by a banned text list (“rules”). The banned text list can include text that is banned for inclusion in a predicted-text suggestion and/or a text entry. For example, the words included in a banned text list can be words that are not desired by a user of the device to be suggested as options for predicted-text suggestions]; identifying one or more inputs to the composition interface, the one or more inputs indicating at least a portion of intended content of the message [¶20, the predicted-text suggestions are determined from text included in one or more text entries of the text suggestion dictionary that are associated with one or more of the context attributes of the communication context for the current communication]; retrieving one or more suggested content items based on a combination of the context of the message, the one or more inputs, and at least one of the user-defined rules [¶20, the one or more predicted-text suggestions can be displayed using formatting that indicates that the one or more predicted-text suggestions are personalized predicted-text suggestions determined based on one or more of the context attributes of the communication context for the current communication; ¶39; ¶75] and causing display, on the composition interface, of the one or more suggested content items for inclusion in the message [¶20, the one or more predicted-text suggestions can be displayed differently, in whole or in part, from one or more other predicted-text suggestions displayed in a display of the device]. Joshi did not specifically teach detecting that a user is composing, via a composition interface, a message to a plurality of recipients that are assigned to at least two different contexts; determining a single context for the message from the at least two contexts by evaluating the at least two different contexts assigned to the plurality of recipients of the message being composed by a user, via a composition interface. Rieman taught detecting that a user is composing, via a composition interface, a message to a plurality of recipients that are assigned to at least two different contexts (Pg. 6: 6~10, when conversing in a business context formal words and expressions are often used, when conversing with acquaintances, elderly and certain family members (grandmother, grandfather etc.) informal but polite and respectful words and expressions are used, while casual and sometimes even profound words may be used with close friends and the immediate family; Pg. 13: 13~19). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made, to combine, Rieman’s teaching with the teachings of Joshi, because the combination would provide a user friendly and efficient text prediction system based on an adaptive predictive text dictionary (Rieman: Pg. 2: 24~27). The combination of Joshi and Rieman did not specifically teach determining a single context for the message from the at least two contexts by evaluating the at least two different contexts assigned to the plurality of recipients of the message. Bower taught determining a single context for the message from the at least two contexts by evaluating the at least two different contexts assigned to the plurality of recipients of the message [¶23, web service 510 provides the context-specific word prediction functionality based lexicon data. The lexicon data represents associations among contacts of the user 102; ¶29, at 702, the associations among one or more recipients are accessed, at 704, a plurality of words is received from the text input prediction system; ¶30, web service 510 selects one or more of the received plurality of words based on the determined recipient of the message, and the accessed associations; Fig. 8, predict one or more words based on the received text input, select one or more of the predicted words (e.g., based on the recipients of the message, and the associations 808)]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made, to combine, Bower’s teaching with the teachings of Joshi and Rieman, because the combination would provide different word predictions when communicating with different people [¶2]. Regarding Claim 2, Joshi taught wherein the determining the single context from the at least two different contexts comprises determining the context to be work-related even if a majority of the recipients are assigned to a different context based on the at least one of the user-defined rules indicating that a work-related recipient results in a work-related context and one of the plurality of recipients being a work-related recipient [¶27, text attributes included in a context can be based on one or more categories for the one or more contacts. The classification information for the contact can indicate that the contact is associated with and/or classified as being within one or more categories. Relationship types can include employer, employee, business, customer, vendor, supervisor, co-worker, family, friend]. Regarding Claim 3, Joshi taught wherein the single context is determined based on a context to which a majority of the plurality of recipients are assigned [¶25~¶27; ¶36]. Regarding Claim 4, Joshi taught further comprising: excluding an available content item from being suggested based on a user-defined rule of the user-defined rules [¶76, the banned text list can include text that is banned for inclusion]. Regarding Claim 5, Joshi taught wherein the one or more inputs to the composition interface indicating at least the portion of intended content are not included in the message being composed [¶20, the one or more predicted-text suggestions can be displayed differently, from one or more other predicted-text suggestions displayed in a display of the device]. Regarding Claim 7, Joshi taught receiving a confirmation input, via the composition interface, to include at least one of the one or more suggested content items in the message; and in response to receiving the confirmation input, including the at least one of the one or more suggested content items in the message [¶20, the one or more predicted-text suggestions can be provided as options for selection by a user in a display of the device. After a selection is received that selects a predicted-text suggestion, the text included in the predicted-text suggestion is included in the current communication]. Regarding Claim 8, Joshi taught wherein causing display of the one or more suggested content items for inclusion in the message comprises causing display of the message having the one or more suggested content items automatically included within the message [¶20, after a selection is received that selects a predicted-text suggestion, the text included in the predicted-text suggestion is included in the current communication]. Regarding Claim 9, Joshi-Rieman-Bower taught wherein the causing display of the message having the one or more suggested content items automatically included within the message is based at least on a geographical location of the user and a rate at which the geographical location of the user is changing [¶24, words are predicted based on a current location of the computing device 504 relative to a location of the computing device 504 when the words were previously typed by the user 102 and/or sent in a previous message]. The rationale to combine as discussed in claim 1, applies here as well. AIA motivation Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention was made, to combine, B’s teaching of limitations with the teachings of A, because the combination would motivation. Regarding Claim 10, Joshi taught wherein retrieving the one or more suggested content items is further based on a location of the user, a change in location of the user, an account type, a time of day, or an application used to generate the message [¶25]. Regarding Claims 11~15 and 17~ 20, the claims are similar in scope to claims 1~5 and 7~10 respectively and therefore, rejected under the same rationale. Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Joshi, Rieman, and Bower in view of Wang et al. hereinafter Wang (U.S 2012/0173222). Regarding Claim 6, Joshi-Rieman-Bower-Wang taught wherein the retrieving the one or more suggested content items is further based on a proficiency of a recipient of the plurality of recipients in a human-readable language [¶38, the text parser first determines the language of the input string. For example, if the input string is a string of characters “ PNG media_image1.png 37 54 media_image1.png Greyscale ”, the text parser may determine that it is in Chinese. In the case of a Chinese input, as it is very likely that the user who is unfamiliar with English words is requesting for the corresponding English word of this Chinese text; ¶32, the list of predicted words can be presented with their basic meanings]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made, to combine, Wang’s teaching with the teachings of Joshi, Rieman, and Bower, because the combination would provide different word predictions when communicating with different people [¶2]. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEE SOO KIM whose telephone number is (571)270-3229. The examiner can normally be reached M-F 9AM-5PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Taylor can be reached on (571) 272-3889. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /H.K/Primary Examiner, Art Unit 2443 /HEE SOO KIM/Primary Examiner, Art Unit 2443
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Prosecution Timeline

Show 6 earlier events
Dec 08, 2025
Final Rejection mailed — §103
Jan 06, 2026
Interview Requested
Feb 06, 2026
Response after Non-Final Action
Mar 06, 2026
Request for Continued Examination
Mar 17, 2026
Response after Non-Final Action
May 14, 2026
Non-Final Rejection mailed — §103
Jul 14, 2026
Examiner Interview Summary
Jul 14, 2026
Applicant Interview (Telephonic)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
79%
Grant Probability
79%
With Interview (-0.5%)
2y 11m (~9m remaining)
Median Time to Grant
High
PTA Risk
Based on 554 resolved cases by this examiner. Grant probability derived from career allowance rate.

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