Detailed Action
1. This Office Action is in response to the Applicant’s communication filed on 06/17/2024. In virtue of this communication, claims 1-19 are currently pending in this Office Action.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
3. Claim 10 is objected to because of the following informalities: in line 3 of the claim, there is full stop “ … storage. transmitting ..”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
4. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
5. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4.Considering objective evidence present in the application indicating obviousness or nonobviousness.
6. Claims 1-3 and 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over Liberty et al. Pub. No.: US 2017/0195274 A1 in view of Ghafourifar et al. Patent No.: 11,494,421 B1.
Claim 1
Liberty discloses a method (fig. 1-8 for masking the message) for protecting a message, performed by a transmitting terminal (mobile device 102 of fig. 1), the method comprising:
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acquiring a protection message (message 400 in fig. 4B and par. 0095, display of the message 400);
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configuring message data for transmission by excluding at least a portion of a text of the protection message (604 in fig. 6 for masking input a selected message portion to be masked in par. 0113 and see 408 & 404 in fig. 4B and par. 0095); and
transmitting the message data to a receiving terminal of the protection message (614 in fig. 6 and par. 0113 for sending the modified message to the recipient over the network).
Although Liberty does not explicitly show: “receiving a text request for the protection message from the receiving terminal; and transmitting the text of the protection message to the receiving terminal in response to the text request”, the claim limitations are considered obvious by the following rationales.
Firstly, to consider the obviousness of the claim limitation “receiving a text request for the protection message from the receiving terminal”, recall that Liberty discloses one of the servers in fig. 1 with content protection engine 300 of fig. 3 for receiving unmask input form the recipient to unmask the message portion associated with the displayed masking identifier (704 in fig. 7 and see par. 0115-0117). Herein, it’s to note that claim does not specifically define what are involved in a text request. Hence, fig. 1, 3 & 7 of Liberty would have rendered the addressing claim limitation obvious. To advance the prosecution, further evidence is provided herein. In particular, Ghafourifar teaches one of the servers (fig. 1A-B) for receiving query (425 in fig. 4 and 530 in fig. 5C, 550 in fig. 5D, and see fig. 6 & 8) from a particular user’s client device to retrieve the protected message or information or data (see steps 430-450 in fig. 4). Additionally, Ghafourifar teaches receiving search request for encrypted data or protected data or document (824 in fig. 8 and 910 in fig. 9; masked the message portion of Liberty is encrypted data of Ghafourifar unless claim further specifically exclude that, see MPEP 2111).
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Secondly, to address the obviousness of the claim limitation “transmitting the text of the protection message to the receiving terminal in response to the text request”, recall that Liberty discloses retrieving the unmasked message portion and displaying the retrieve message (fig. 7 and par. 0119-0120). It means that in fig. 4-5 of Liberty, the server will be transmitting the recipient device the masked portion to be displaying. Further evidence could be seen in Ghafourifar. In particular, Ghafourifar teaches server for returning the protected data searched by the query from the client (step 6 in fig. 6 and 828 in fig. 8).
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Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify security features to the message’s content of Liberty by providing an encrypted information retrieval as taught in Ghafourifar. Such a modification would have provided a user device a server to store the encrypted context at a database for retrieval later so that a user would have the reliable and trusted server side search capability for truly private information as suggested in lines 30-60 of col. 2 of Ghafourifar.
Claim 2
Liberty, in view of Ghafourifar, discloses the method of claim 1, wherein the protection message is a message in which a protection function is set by a user of the transmitting terminal and wherein the configuring message data includes configuring the message data only with metadata except for the text of the protection message (Liberty, masking content to protect the context of the message portion via application such as EasyChair with masking identifier KDD pass 404 in fig. 4B and par. 0100-0102; Ghafourifar, encrypting credential information and content in fig. 4, encrypting files in fig 5-9 upon decrypting after credentials are authenticated; for these reasons, the combined prior art renders the claim obvious).
Claim 3
Liberty, in view of Ghafourifar, discloses the method of claim 1, wherein policy setting information on the protection message includes setting information on a minimum text exposed to a user of the receiving terminal (Liberty, fig. 4B, masking the selected message portion with a masking identifier in fig. 6), and
the configuring message data includes configuring the message data to include a portion of the text of the protection message, which is set as a minimum text (Liberty, fig. 6-8; Ghafourifar; retrieving encrypted data, document metadata in fig. 9; accordingly, one of ordinary skill in the art would have expected the combined prior art to perform equally to the claim as minimum text could be considered as finding optimum value and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 CCPA 1980).
Claim 8
Liberty discloses a method (fig. 1-8 for masking the message portion) for protecting a message, performed by a message server (messaging server 120 in fig. 1 having database of fig. 3), the method comprising:
receiving message data for a protection message from a transmitting terminal (mobile device 102, 103 & 104 in fig. 1), the message data for not including at least a portion of a text of the protection (message 604 in fig. 6 for masking input a selected message portion to be masked in par. 0113 and see 408 & 404 in fig. 4B and par. 0095); and
transmitting the message data to a receiving terminal of the protection message (614 in fig. 6 and par. 0113 for sending the modified message to the recipient over the network).
Although Liberty does not explicitly show: “receiving a text request for the protection message from the receiving terminal and forwarding the text request to the transmitting terminal; and receiving the text of the protection message from the transmitting terminal and forwarding the text to the receiving terminal”, the claim limitations are considered obvious by the following rationales.
Firstly, to consider the obviousness of the claim limitations “receiving a text request for the protection message from the receiving terminal and receiving the text of the protection message from the transmitting terminal”, recall that Liberty discloses one of the servers in fig. 1 with content protection engine 300 of fig. 3 for receiving unmask input form the recipient to unmask the message portion associated with the displayed masking identifier (704 in fig. 7 and see par. 0115-0117). Herein, it’s to note that claim does not specifically define what are involved in a text request. Hence, fig. 1, 3 & 7 of Liberty would have rendered the addressing claim limitation obvious. To advance the prosecution, further evidence is provided herein. In particular, Ghafourifar teaches one of the servers (fig. 1A-B) for receiving query (425 in fig. 4 and 530 in fig. 5C, 550 in fig. 5D, and see fig. 6 & 8) from a particular user’s client device to retrieve the protected message or information or data (see steps 430-450 in fig. 4). Additionally, Ghafourifar teaches receiving search request for encrypted data or protected data or document (824 in fig. 8 and 910 in fig. 9; masked the message portion of Liberty is encrypted data of Ghafourifar unless claim further specifically exclude that, see MPEP 2111).
Secondly, to address the obviousness of the claim limitations “forwarding the text request to the transmitting terminal; and forwarding the text to the receiving terminal”, recall that Liberty discloses retrieving the unmasked message portion and displaying the retrieve message (fig. 7 and par. 0119-0120) and a messaging server (120 in fig. 1) for forwarding message to the transmitting terminal and the receiving terminal (a messaging server typically forwards the messages from sender to recipient). It means that in fig. 4-5 of Liberty, the server will be transmitting the recipient device the masked portion to be displaying. Further evidence could be seen in Ghafourifar. In particular, Ghafourifar teaches server for returning the protected data searched by the query from the client (step 6 in fig. 6 and 828 in fig. 8; forward in lines 25-40 of col 10).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify security features to the message’s content of Liberty by providing an encrypted information retrieval as taught in Ghafourifar. Such a modification would have provided a user device a server to store the encrypted context at a database for retrieval later so that a user would have the reliable and trusted server side search capability for truly private information as suggested in lines 30-60 of col. 2 of Ghafourifar.
Claim 9
Liberty, in view of Ghafourifar, discloses the method of claim 8, wherein the text of the protection message is temporarily stored in a storage of the message server and is deleted from the storage as a temporary storage period set in the protection message elapses (Liberty, database in fig. 3 and 612 in fig. 6 for storing and deleting message in par. 0118 and fig. 7; Ghafourifar, delete certain message from a particular sender in fig. 3 and lines 25-40 of col. 10, the encrypted document are kept up to date over time in lines 1-7 of col. 22; accordingly, the combined prior art renders the claim obvious; see MPEP 2111.4).
Claim 10
Liberty, in view of Ghafourifar, discloses the method of claim 9, further comprising:
re-receiving the text request for the protection message from the receiving terminal (Liberty, 704 of fig. 7, see reset features in fig. 5; Ghafourifar, search query in fig. 6, 8-9);
when there is a text temporarily stored in the storage, transmitting the temporarily stored text to the receiving terminal (Liberty, 710-712 in fig. 7; Ghafourifar, returning search query in fig. 6-9); and
re-acquiring the text of the protection message through the transmitting terminal and transmitting the text to the receiving terminal when there is no text temporarily stored in the storage (see MPEP 2111.4, II Contingent limitation, as Liberty and Ghafourifar discloses for receiving message from transmitting and forwarding it to recipient upon authorization and message stored up to a certain, one of ordinary skill in the art would have expected these claim limitations to perform equally well with the combined prior art; see evidence for removing the mask after a predetermined laps of time in Ghassabian Pub. No.: US 2017/0068448 A1).
Claim 11
Liberty, in view of Ghafourifar, discloses the method of claim 8, further comprising:
temporarily storing the text of the protection message in a storage (Liberty, 612 in fig. 6 and see database 300 in fig. 3); and
deleting the temporarily stored text regardless of a temporary storage period set in the protection message when receiving a reading notification for the text of the protection message from the receiving terminal (Liberty, deleting the message in par. 0118 and 708 in fig. 7; Ghafourifar, delete certain message from a particular sender in lines 25-40 of col. 10; accordingly, one of ordinary skill in the art would have expected the combined prior art to perform equally well to the claim, see MPEP 2143, KSR Exemplary Rationale F).
Claim 12
Liberty, in view of Ghafourifar, discloses the method of claim 8, wherein the message data is further transmitted to another receiving terminal other than the receiving terminal (Liberty, it’s typical in SMS or instant messaging or chat room to send the message to more than one recipient, see fig. 6-8; Ghafourifar, fig. 3D, if it’s in the group stage, the message can be seen by the group for message in fig. 6-9),
the forwarding the text request includes forwarding the text to only the receiving terminal when the text request for the protection message is not received from another receiving terminal (Liberty, forward message feature in par. 0122 ; Ghafourifar, forward feature in lines 25-40 of col. 10; accordingly, the combined prior art would have been expected to perform equally well to the claim as forwarding message such SMS are intrinsic feature of mobile communication).
Claim 13
Liberty discloses a method for protecting a message (fig. 1-8 for masking message portion), performed by a receiving terminal (mobile device 103 or 104 in fig. 1), the method comprising:
receiving message data for a protection message (message 400 in fig. 4B and par. 0095, display of the message 400) from a transmitting terminal (102 in fig. 1), the message data for not including at least a portion of a text of the protection message (604 in fig. 6 for masking input a selected message portion to be masked in par. 0113 and see 408 & 404 in fig. 4B and par. 0095);
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receiving a user input (704 in fig. 7) for requesting the text of the protection message from a user of the receiving terminal (704 in fig. 7 and par. 0116-0117).
Although Liberty does not explicitly show: “transmitting a text request for the protection message to the transmitting terminal in response to the user input; and receiving the text of the protection message from the transmitting terminal and processing the received text to be exposed to the user”, the claim limitations are considered obvious by the following rationales.
Firstly, to consider the obviousness of the claim limitation “transmitting a text request for the protection message to the transmitting terminal in response to the user input”, recall that Liberty discloses one of the servers in fig. 1 with content protection engine 300 of fig. 3 for receiving unmask input form the recipient to unmask the message portion associated with the displayed masking identifier (704 in fig. 7 and see par. 0115-0117). Herein, it’s to note that claim does not specifically define what are involved in a text request. Hence, fig. 1, 3 & 7 of Liberty would have rendered the addressing claim limitation obvious. To advance the prosecution, further evidence is provided herein. In particular, Ghafourifar teaches one of the servers (fig. 1A-B) for receiving query (425 in fig. 4 and 530 in fig. 5C, 550 in fig. 5D, and see fig. 6 & 8) from a particular user’s client device to retrieve the protected message or information or data (see steps 430-450 in fig. 4). Additionally, Ghafourifar teaches receiving search request for encrypted data or protected data or document (824 in fig. 8 and 910 in fig. 9; masked the message portion of Liberty is encrypted data of Ghafourifar unless claim further specifically exclude that, see MPEP 2111).
Secondly, to address the obviousness of the claim limitation “receiving the text of the protection message from the transmitting terminal and processing the received text to be exposed to the user”, recall that Liberty discloses retrieving the unmasked message portion and displaying the retrieve message (fig. 7 and par. 0119-0120). It means that in fig. 4-5 of Liberty, the server will be transmitting the recipient device the masked portion to be displaying. Further evidence could be seen in Ghafourifar. In particular, Ghafourifar teaches server for returning the protected data searched by the query from the client (step 6 in fig. 6 and 828 in fig. 8).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify security features to the message’s content of Liberty by providing an encrypted information retrieval as taught in Ghafourifar. Such a modification would have provided a user device a server to store the encrypted context at a database for retrieval later so that a user would have the reliable and trusted server side search capability for truly private information as suggested in lines 30-60 of col. 2 of Ghafourifar.
Claim 14
Liberty, in view of Ghafourifar, discloses the method of claim 13, wherein the received text is processed to be non-exposed as a preset time elapses (Liberty, database in fig. 3 and 612 in fig. 6 for storing and deleting message in par. 0118 and fig. 7; Ghafourifar, delete certain message from a particular sender in fig. 3 and lines 25-40 of col. 10, the encrypted document are kept up to date over time in lines 1-7 of col. 22; accordingly, one of ordinary skill in the art would have expected the combined prior art to perform equally well to the claim, see MPEP 2143, KSR Exemplary Rationale F).
Claim 15
Liberty discloses a transmitting terminal (transmitting terminal in fig. 1-9 and see fig. 1) comprising:
one or more processors (CPU 222 in fig. 2);
a communication interface (network interface 250 in fig. 2); and
a memory (RAM 232 and ROM 234 in fig. 2) storing a computer program (operation system 241, application 242 in fig. 2)) executed by one or more processors (executing instructions in fig. 4-8), wherein the computer program includes instructions to perform:
an operation of acquiring a protection message (message 400 in fig. 4B and par. 0095, display of the message 400);
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an operation of configuring message data for transmission by excluding at least a portion of a text of the protection message (604 in fig. 6 for masking input a selected message portion to be masked in par. 0113 and see 408 & 404 in fig. 4B and par. 0095); and
an operation of transmitting the message data to a receiving terminal of the protection message (614 in fig. 6 and par. 0113 for sending the modified message to the recipient over the network).
Although Liberty does not explicitly show: “an operation of receiving a text request for the protection message from the receiving terminal; and an operation of transmitting the text of the protection message to the receiving terminal in response to the text request”, the claim limitations are considered obvious by the following rationales.
Firstly, to consider the obviousness of the claim limitation an operation of receiving a text request for the protection message from the receiving terminal”, recall that Liberty discloses one of the servers in fig. 1 with content protection engine 300 of fig. 3 for receiving unmask input form the recipient to unmask the message portion associated with the displayed masking identifier (704 in fig. 7 and see par. 0115-0117). Herein, it’s to note that claim does not specifically define what are involved in a text request. Hence, fig. 1, 3 & 7 of Liberty would have rendered the addressing claim limitation obvious. To advance the prosecution, further evidence is provided herein. In particular, Ghafourifar teaches one of the servers (fig. 1A-B) for receiving query (425 in fig. 4 and 530 in fig. 5C, 550 in fig. 5D, and see fig. 6 & 8) from a particular user’s client device to retrieve the protected message or information or data (see steps 430-450 in fig. 4). Additionally, Ghafourifar teaches receiving search request for encrypted data or protected data or document (824 in fig. 8 and 910 in fig. 9; masked the message portion of Liberty is encrypted data of Ghafourifar unless claim further specifically exclude that, see MPEP 2111).
Secondly, to address the obviousness of the claim limitation “an operation of transmitting the text of the protection message to the receiving terminal in response to the text request”, recall that Liberty discloses retrieving the unmasked message portion and displaying the retrieve message (fig. 7 and par. 0119-0120). It means that in fig. 4-5 of Liberty, the server will be transmitting the recipient device the masked portion to be displaying. Further evidence could be seen in Ghafourifar. In particular, Ghafourifar teaches server for returning the protected data searched by the query from the client (step 6 in fig. 6 and 828 in fig. 8).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify security features to the message’s content of Liberty by providing an encrypted information retrieval as taught in Ghafourifar. Such a modification would have provided a user device a server to store the encrypted context at a database for retrieval later so that a user would have the reliable and trusted server side search capability for truly private information as suggested in lines 30-60 of col. 2 of Ghafourifar.
Allowable Subject Matter
7. Claims 1-3 and 8-15 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Contact Information
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAN HTUN whose telephone number is (571)270-3190. The examiner can normally be reached Monday - Thursday 7 AM - 5 PM.
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/SAN HTUN/
Primary Examiner, Art Unit 2643
Prosecution Insights