The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office action is in response to communications filed on 7/1/2024.
Claims 1-20 are pending.
DETAILED ACTION
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3-6, 8, 10-13, 15, and 17-20 is/are rejected under 35 U.S.C. 102(A)(1) as being anticipated by Gagnon et al. (US 91777293 B1, hereinafter Gagnon).
Regarding claim 1, Gagnon discloses a method, comprising:
receiving, by one or more processors, a message associated with a communication address of a party originating the message (col. 8, lines 12-13, "checking to see if there are new emails on the server 102"; abstract, "maintaining at least one database of permitted email addresses; automatically communicating with an email server, and selectively downloading and storing email not corresponding to entries in the database; automatically sending a challenge message in response to messages from non-permitted email addresses"; col. 9, lines 4-7, "The Friends list indicates a set of preauthorized senders. Upon installation of SpamMonster, the user can populate this list with the email addresses (or part thereof) of the people he wants to receive emails from"; col. 9, line 15, "Pre-approved subject list"; col. 9, lines 33-53, "Undesirable senders list [...] blocking emails from entries [...] including a full email addresses"; col. 9, line 54, "Undesirable subjects list"; col. 9, lines 62-65, "Autosenders list" (i.e. 5 lists, some including addresses to be checked with addresses of a received email); col. 9, lines 66-67, "The filtering rules are applied to each email on the next scheduled scan after it arrives on the server");
determining a class of service associated with the communication address (col. 8, lines 41-43, "If the email is from an email address on the “Friends” list (whitelist), it is delivered 120"; col. 10, lines 1-16, "Emails that do not have elements from one of the five lists are referred to as being from unknown senders. That will be the case of the majority of emails for the typical user. As seen in the flow chart, if an email is rejected for reasons other than being in a loop or having a blacklisted element, the email is saved locally and SpamMonster sends a “registration reply” also referred to as a challenge message, to the sender [...] The email [...] has been quarantined by my email filter (SpamMonster) [...] Your email has not been lost, but I won't see it until you reply");
responsive to validating the communication address, adjusting the class of service associated with the communication address (col. 10, lines 44-49, "SpamMonster scans all the subjects of incoming emails for the magic “Your last email to User Name needs confirmation” and the matching eight character code if one is being used. If the sender does as instructed and just replies to the registration email, SpamMonster will recognize this as a registration email and: Add the user to the friends list Restore all the previously saved emails from that sender by putting them back on the server"); and
identifying, among a plurality of message queues, a message queue associated with the adjusted class of service (col. 10, lines 44-49, "Restore all the previously saved emails from that sender by putting them back on the server"; col. 10, lines 55-67, establishes that SpamMonster runs locally on a client device and communicates with the server over a network such as the Internet (see also col. 7, lines 49-51), or alternatively, as a standalone application on a remote server (col. 12, lines 30-33) therefore, prior to communication with the server (i.e., to either delete or restore messages), SpamMonster inherently identifies the server - the server has been interpreted as the claimed "message queue", where other queues are present (see col. 12, lines 36-48, managing "each mailbox"));
assigning the message to the identified message queue (col. 10, lines 44-49, "Restore all the previously saved emails from that sender by putting them back on the server").
Regarding claim 3, Gagnon discloses the method of claim 1, further comprising: adjusting an aggression level of a spam filter with respect to messages originated from the communication addresses (col. 10, lines 44-52, "SpamMonster will recognize this as a registration email and: Add the user to the friends list [and] Restore all the previously saved emails from that sender by putting them back on the server").
Regarding claim 4, Gagnon discloses the method of claim 1, wherein determining the class of service is performed based on one or more attributes of the message (col. 10, lines 1-16, the determination is performed based on a sender address).
Regarding claim 5, Gagnon discloses the method of claim 1, wherein determining the class of service is performed based on one or more metrics of network traffic (col. 10, lines 39-43, "SpamMonster pays attention to emails received in short intervals with identical subject lines. That usually signifies that the automatic mode of SpamMonster is conversing with the automatic mode of some server, so SpamMonster stops sending registration emails").
Regarding claim 6, Gagnon discloses the method of claim 1, wherein determining the class of service further comprises: performing semantic pattern analysis of the message (col. 9, lines 15-32, "The Pre-Approved subjects list is a list of subjects that will make SpamMonster consider the email as friendly. One classic example of a word that can be used in this list is “order”. When an order for goods is placed on the Internet, the vendor usually emails a copy of the order. By telling SpamMonster to accept all the emails where the word “order” appears on the subject line, the emails from these stores will not be rejected. It is noted that this list can have undesirable effects, since it potentially permits all spam with the word “order” in the subject field to effectively bypass the SpamMonster filtering. In addition to the simple string matching technology, a more intelligent content-based or activity-based filtering protocol may be implemented. For example, a filtering component may match a cache of visited web-sites with email from corresponding domains, to thus “match” an email confirming an order with the Internet activity which generated the order. Likewise, other sorts of intelligent or adaptive learning filtering schemes may be implemented").
Regarding claims 8 and 3-6, Gagnon discloses a system, comprising: a memory; and one or more processors, coupled to the memory (col. 7, line 34, "The present invention is directed to a method and a system for use in a computing environment […] it can run on the email client computer, or any other system which is capable of interacting with the email server" - i.e. a computer. A memory and a processor coupled to the memory are inherent parts of a computer).
The remaining limitations of claims 8 and 10-13 are similar in scope to those of claims 1 and 3-6. Therefore, claims 8 and 10-13 are rejected for the same reasons as set forth in the rejection of claims 1 and 3-6, above.
Regarding claims 15 and 17-20, Gagnon discloses a non-transitory computer-readable storage medium comprising executable instructions which, when executed by one or more processors, cause the one or more processors to (col. 7, line 34, "The present invention is directed to a method and a system for use in a computing environment […] it can run on the email client computer, or any other system which is capable of interacting with the email server" - i.e. a computer. A memory including instructions and a processor coupled to the memory to perform the instructions are inherent parts of a computer configured to perform functions):
The remaining limitations of claims 15 and 17-20 are similar in scope to those of claims 1 and 3-6. Therefore, claims 15 and 17-20 are rejected for the same reasons as set forth in the rejection of claims 1 and 3-6, above.
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) 7 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gagnon (US 91777293 B1) in view of Jakobsson (US 2017/0230323 A1).
Regarding claim 7, Gagnon discloses the method of claim 1.
Gagnon does not disclose that determining a class of service further comprises: comparing the message with another message received from a verified communication address.
Jakobsson discloses that determining a class of service further comprises: comparing the message with another message received from a verified communication address (¶[0082], "a first set of data including at least one of an email address and a display name associated with the not-trusted sender of the email message is compared with a second set of data including at least one of an email address and a display name associated with a trusted sender that is trusted with respect to the recipient"; ¶[0083], "based at least in part on the comparison, it is determined that a risk associated with delivery of the email message to the recipient exceeds a threshold. At 298, an action is performed in response to determining that the risk associated with delivery of the email message to the recipient exceeds the threshold. Examples of such actions include quarantining the email message, including a portion of the email message in a request, modifying the email message, and marking the email message with a warning").
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 Gagnon in view of Jakobsson so that determining a class of service further comprises: comparing the message with another message received from a verified communication address.
One of ordinary skill in the art would have been motivated because it would "mitigate the threat associated with Business Email Compromise and associated scams" (Jakobsson, ¶[0034]).
Regarding claim 14, Gagnon discloses the system of claim 8.
The remaining limitations of claim 14 are similar in scope to those of claim 7. Therefore, claim 14 is rejected for the same reasons as set forth in the rejection of claim 7, above (i.e., in view of the combination of Gagnon and Jakobsson).
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,695,701 B2 in view of Gagnon (US 91777293 B1). For example:
Regarding claim 1,
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Claim 1 of US Patent No. 11,695,701 B2 does not recite identifying, among a plurality of message queues, a message queue associated with the adjusted class of service; assigning the message to the identified message queue.
Gagnon discloses identifying, among a plurality of message queues, a message queue associated with the adjusted class of service (col. 10, lines 44-49, "Restore all the previously saved emails from that sender by putting them back on the server"; col. 10, lines 55-67, establishes that SpamMonster runs locally on a client device and communicates with the server over a network such as the Internet (see also col. 7, lines 49-51), or alternatively, as a standalone application on a remote server (col. 12, lines 30-33) therefore, prior to communication with the server (i.e., to either delete or restore messages), SpamMonster inherently identifies the server - the server has been interpreted as the claimed "message queue", where other queues are present (see col. 12, lines 36-48, managing "each mailbox")); and
assigning the message to the identified message queue (col. 10, lines 44-49, "Restore all the previously saved emails from that sender by putting them back on the server").
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 US Patent No. 11,695,701 B2 in view of Gagnon for identifying, among a plurality of message queues, a message queue associated with the adjusted class of service; assigning the message to the identified message queue.
One of ordinary skill in the art would have been motivated because it would enable a user to "quickly and easily configuring and controlling the spam filter while still enabling the user to personalize the spam filter if they so desire, to further facilitate appropriately-restrictive filtering criteria while permitting appropriate and/or authorized e-mail to be delivered" (Gagnon, col. 7, lines 14-18).
Claims 2-15 and 18-19 are similarly disclosed by claims 1-18 of U.S. Patent No. 11,695,701 B2 in view of Gagnon (US 91777293 B1).
Claims 17 and 20 contain subject matter disclosed by claims 4 and 7 of US Patent No. 11,695,701 B2. While claims 17 and 20 of the present application are directed towards “a non-transitory computer-readable storage medium comprising executable instructions which, when executed by one or more processors” to execute the claimed functions but claims 4 and 7 of US Patent No. 11,695,701 B2 are method claims, the examiner recognizes that the method claims would be performed by general purpose computing devices. General purpose computing devices inherently include memory including instructions to be executed by processors in order to perform assigned functions. Therefore, claims 17 and 20 are rejected in light of claims 4 and 7 of US Patent No. 11,695,701 B2 in view of Gagnon (US 91777293 B1).
Allowable Subject Matter
Claims 2, 9, and 16 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and by overcoming all double patenting rejections.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20160285804 A1, which discloses "it is determined if an automated reply to the received Email/Other is automatically generated and sent back to Sender and/or CC'ed to others, and if yes, what the nature of the automated reply is. Generally in a case where an automated reply will be sent and/or topic related instructions will be automatically delegated to others to follows up on the sender's (e.g., S1) communication, it is determined that the targeted recipient (the current User) should not be deleted from the list of targeted recipients in step 240 of FIG. 2" (¶[0061]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BORIS D GRIJALVA LOBOS whose telephone number is (571)272-0767. The examiner can normally be reached M-F 10:30AM to 6:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Gillis can be reached at 571-272-7952. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BORIS D GRIJALVA LOBOS/ Primary Patent Examiner, Art Unit 2446