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 .
Response to Amendment
Applicant's submission filed on 5/22/2026 has been entered. Claim(s) 1-12, 18 is/are pending in the application.
Claim Rejections - 35 USC § 101
1. 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 1-12, 18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim(s) 1 is/are drawn to method (i.e., a process), claim(s) 12 is/are drawn to a system (i.e., a machine/manufacture). As such, claims 1, 12 is/are drawn to one of the statutory categories of invention.
Claims 1-12, 18 are directed to allowing customized emoticons. Specifically, the claims recite receiving first reaction custom information for a first chat room from a first terminal;generating a first reaction set including at least one reaction information item selected based on the first reaction custom information;in response to a second terminal entering the first chat room, providing the second terminal with at least one first content posted in the first chat room and a first reaction set corresponding to each of the at least one first content; and restricting, by the server, reaction selection by the second terminal to reaction information items included in the first reaction set based on the first reaction custom information, such that the second terminal is prevented from selecting reaction information items that are not included in the first reaction set; wherein the server provides the reaction set to the second terminal together with count information for at least one reaction information item included in the reaction set, and provides an extension interface that, upon interaction, causes the server to provide a reaction interface including all reaction information items included in the reaction set, which is grouped within the Methods Of Organizing Human Activity and is similar to the concept of (fundamental economic principles or practices including hedging insurance, mitigating risk) OR (commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors business relations) OR (managing personal behavior or relationships or interactions between people including social activities teaching, and following rules or instructions) OR Mental Processes and is similar to the concept of (concepts performed in the human mind (including an observation, evaluation, judgement, opinion) grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)). Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54-55 (January 7, 2019)), the additional element(s) of the claim(s) such as server, memory, and a processor merely use(s) a computer as a tool to perform an abstract idea and/or generally link(s) the use of a judicial exception to a particular technological environment. Specifically, the server, memory, and a processor perform(s) the steps or functions of receiving, from the second terminal, selection information indicating selection of one reaction information item of the reaction information items included in the first reaction set. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the additional element(s) of using a server, memory, and a processor to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of allowing customized emoticons. As discussed above, taking the claim elements separately, the server, memory, and a processor perform(s) the steps or functions of receiving, from the second terminal, selection information indicating selection of one reaction information item of the reaction information items included in the first reaction set. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of customized allowing customized emoticons. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 2-11, 18 further describe the abstract idea of customized allowing customized emoticons. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (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 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) 1-6, 9-10, 12, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over in Slack “Add custom emoji and aliases to your workspace” herein referred to as Slack view of Milvaney (U.S. Patent App Pub 20170147185) in view of Borst (U.S. Patent App Pub 20100293473).
Regarding claim 1,
Slack teaches a method for providing a reaction set for content by a workspace, the method comprising: receiving first reaction custom information from a first terminal; (See pages 1-4, Slack teaches custom emoticons being uploaded into a slack workspace)
generating a first reaction set including at least one reaction information item selected based on the first reaction custom information; (See pages 1-4, Slack teaches custom themed emoticons pack are installed)
in response to a second terminal entering the first chat room, providing the second terminal with at least one first content posted in the first chat room and a first reaction set corresponding to each of the at least one first content; and (See pages 1-4, Slack teaches other users enter the workspace/channels can use the customized emoticons)
receiving selection information on a reaction information item included in the first reaction set from the second terminal. (See pages 1-4, Slack teaches other users enter the workspace/channels can use the customized emoticons and can use the custom emojis11 in the workspace/channels)
Slack does not explicitly teach but Milvaney teaches a method for providing a reaction set for content by a server. (See figures 2-3, paragraphs 22, 28, 29, Milvaney), receiving, from the second terminal, selection information indicating selection of one reaction information item of the reaction information items included in the first reaction set (See paragraphs 22, 25, Milvaney)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have known to combine the teachings of Milvaney with Slack because both deal with extending emojis. The advantage of incorporating the above limitation(s) of Milvaney into Slack is that Milvaney teaches system for extending emoji reactions into file specific content, therefore making the overall system more robust and efficient. (See paragraphs [0001] - [0003], Milvaney)
Slack and Milvaney do not explicitly teach restricting, by the server, reaction selection by the second terminal to reaction information items included in the first reaction set based on the first reaction custom information, such that the second terminal is prevented from selecting reaction information items that are not included in the first reaction set; and (See paragraphs 38-41, figures 7-9, Borst teaches accessing new reactions only when they have been approved and restrict otherwise)
wherein the server provides the reaction set to the second terminal together with count information for at least one reaction information item included in the reaction set, and provides an extension interface that, upon interaction, causes the server to provide a reaction interface including all reaction information items included in the reaction set. (See paragraphs 38-41, figures 7-9, Borst teaches a set providing a number of different emojis based on the purchase)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have known to combine the teachings of Borst with Slack and Milvaney because both deal with extending emojis. The advantage of incorporating the above limitation(s) of Borst into Slack and Milvaney is that Borst teaches a method allows efficiently granting an access to a graphical icon that is presented to a user by another user in response to registration of a code associated with a product, therefore making the overall system more robust and efficient. (See paragraphs [0003] - [0006], Borst)
Regarding claim 2,
Slack, Milvaney, and Borst teach the method of claim 1, further comprising: receiving second reaction custom information for a second chat room from the first terminal; generating a second reaction set including at least one reaction information item selected based on the second reaction custom information, where each of the first and second reaction sets includes a distinct combination of reaction information items; in response to the second terminal entering the second chat room, providing the second terminal with at least one second content posted in the second chat room and a second reaction set corresponding to each of the at least one second content; and receiving selection information on a reaction information item included in the second reaction set from the second terminal. (See pages 1-4, Slack teaches distinct emoji custom sets for different workspaces)
Regarding claim 3,
Slack, Milvaney, and Borst teach the method of claim 1, further comprising, in response to the second terminal entering a third chat room when no separate reaction custom information for the third chat room is received from the first terminal, providing the second terminal with at least one third content posted in the third chat room and a default reaction set corresponding to each of the at least one third content. (See pages 1-4, Slack teaches distinct custom emojis for a number of different workspace/channels)
Regarding claim 4,
Slack, Milvaney, and Borst teach the method of claim 1.
Milvaney further teaches wherein providing the first or second reaction set comprises: providing the second terminal with count information and an extension interface for at least one reaction information item included in the first or second reaction set, wherein the count information indicates information on a number of times a user has selected the reaction information item; and in response to receiving an interaction with the extension interface from the second terminal, providing a reaction interface including entire reaction information items included in the first or second reaction set. (See abstract, fig 3, paragraphs 44-46, Milvaney) See motivation to combine for claim 1.
Regarding claim 5,
Slack, Milvaney, and Borst teach the method of claim 4.
Milvaney further teaches wherein the count information is provided only for a reaction information item of which a count satisfies a predetermined criterion among the reaction information items included in the first or second reaction set. (See paragraphs 46, 47, fig. 2, Milvaney) See motivation to combine for claim 1.
Regarding claim 6,
Slack, Milvaney, and Borst teach the method of claim 4, wherein the selection information is generated in response to an interaction received by the second terminal with at least one of the count information and the reaction interface. (See pages 1-4, Slack teaches distinct custom emojis available to other users in the chat and channels)
Regarding claim 9,
Slack, Milvaney, and Borst teach the method of claim 1, wherein at least one of the reaction information items included in the first and second reaction sets is generated based on graphic information received by the server from the first terminal. (See pages 1-4, Slack teaches distinct custom emojis are graphics )
Regarding claim 10,
Slack, Milvaney, and Borst teach the method of claim 1, wherein: the first and second chat rooms belong to a same chat room group, and the first terminal corresponds to an administrator terminal for the chat room group. (See pages 1-4, Slack teaches channels all belong to a workspace/channels)
Regarding claim 12,
Claim 12 list all the same elements of claim 1, but in system form rather than method form. Therefore, the supporting rationale of the rejection to claim 1 applies equally as well to claim 12. Furthermore with regards to the limitation of Slack and Milvaney teach a server for providing a reaction set for content, the server comprising: a memory storing instructions, and a processor configured to execute the instructions to: (See paragraphs 18-20, Milvaney)
Regarding claim 18,
Slack, Milvaney, and Borst method of claim 1.
Borst further teaches further comprising generating a second reaction set including a subset of the reaction information items included in the first reaction set, wherein the server provides the first reaction set or the second reaction set to the second terminal based on a path through which the second terminal enters the first chat room. (See paragraphs 38-41, Borst teaches when a purchase is made mor emoticons are available) See motivation to combine for claim 1.
Claim(s) 7-8, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over in Slack “Add custom emoji and aliases to your workspace” herein referred to as Slack view of Milvaney (U.S. Patent App Pub 20170147185) in view of Borst (U.S. Patent App Pub 20100293473) further in view of Weaver (U.S. Patent App Pub 20130080927).
Regarding claim 7,
Slack, Milvaney, and Borst teach the method of claim 1.
Slack, Milvaney, and Borst do not explicitly teach but Weaver teaches further comprising generating a 1a-th reaction set including at least one of the reaction information items included in the first reaction set, wherein the server provides the second terminal with first and second paths to enter the first chat room, and wherein in providing the first reaction set, the first reaction set is provided to the second terminal when the second terminal enters the first chat room through the first path, and the 1a-th reaction set instead of the first reaction set is provided to the second terminal when the second terminal enters the first chat room through the second path.(See paragraphs 244-246, Weaver)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have known to combine the teachings of Weaver with Slack, Milvaney, and Borst because both deal with extending emojis. The advantage of incorporating the above limitation(s) of Weaver into Slack, Milvaney, and Borst is that Weaver teaches the same user is able to project different personalities while visiting different chat rooms. The personalities are tailored to the chat room being visited while providing different personalization items (e.g., icon or avatar, wallpaper, sounds, smiley set, and text style) based upon the chat room that the user is visiting., therefore making the overall system more robust and efficient. (See paragraphs [0004] - [0007], Weaver)
Regarding claim 8,
Slack, Milvaney, and Borst and Weaver teach the method of claim 7, wherein the first and second paths correspond to entries via different applications installed on the second terminal. (See Slack pages 1-4) and paragraphs 244-245, Weaver) See motivation o combine for claim 7
Regarding claim 11,
Slack, Milvaney, and Borst teach the method of claim 10.
Slack, Milvaney, and Borst do not explicitly teach but Weaver teaches further comprising, immediately after receiving the selection information, providing second terminal with guidance information on joining the chat room group when the second terminal belongs to a user who has not joined the chat room group.(See 88-90, 244, Weaver)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have known to combine the teachings of Weaver with Slack, Milvaney, and Borst because both deal with extending emojis. The advantage of incorporating the above limitation(s) of Weaver into Slack, Milvaney, and Borst is that Weaver teaches the same user is able to project different personalities while visiting different chat rooms. The personalities are tailored to the chat room being visited while providing different personalization items (e.g., icon or avatar, wallpaper, sounds, smiley set, and text style) based upon the chat room that the user is visiting., therefore making the overall system more robust and efficient. (See paragraphs [0004] - [0007], Weaver)
Response to Arguments
Applicant's arguments filed 5/22/2026 have been fully considered but they are not persuasive.
A. Applicant argues that the claims are not directed to a judicial exception under Step 2A Prong One. As for Step 2A Prong One, of the Abstract idea is directed towards the abstract idea of allowing customized emoticons which is grouped within the Methods Of Organizing Human Activity and is similar to the concept of (fundamental economic principles or practices including hedging insurance, mitigating risk) OR (commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors business relations) OR (managing personal behavior or relationships or interactions between people including social activities teaching, and following rules or instructions) OR Mental Processes and is similar to the concept of (concepts performed in the human mind (including an observation, evaluation, judgement, opinion) grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)). Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
B. Applicant argues that the claims are not directed to a judicial exception under Step 2A Prong Two. As for Step 2A Prong Two, the claim limitations do not include additional elements in the claim that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, and the claim is not more than a drafting effort designed to monopolize the judicial exception and the claim limitation simply describe the abstract idea. The limitation directed to allowing customized emoticons does not add technical improvement to the abstract idea. The recitations to “promotion server” and “display device” perform(s) the steps or functions of receiving, from the second terminal, selection information indicating selection of one reaction information item of the reaction information items included in the first reaction set. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
C. Applicant argues that the claims are not directed to a judicial exception under Step 2B.
As for Step 2B, The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the limitation directed to ABSTRACT IDEA does not add significantly more to the abstract idea. Furthermore, using well-known computer functions to execute an abstract idea does not constitute significantly more. The recitations to “promotion server” and “display device” are generically recited computer structure. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of ABSTRACT IDEA. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and located in the PTO-892 form.
1.Park, U.S. Patent App 20230376199, teaches a method for recommending emoticons by a user terminal is proposed. The method may include receiving, from a server, a keyword database comprising information on keywords matched with emoticons and storing the received keyword database, and displaying conversation information in a chat room. The method may also include selecting at least some of conversation information as base conversation information according to a predetermined criterion, and selecting at least one keyword included in the keyword database as a basic keyword based on the base conversation information. The method may further include displaying a basic keyword interface corresponding to the basic keyword, receiving an input of selecting the basic keyword interface from a user, and displaying information on at least one emoticon matched with a basic keyword corresponding to the selected basic keyword interface.
2. Aldrich, U.S. Patent 11769113, teaches a social networking system which provides personal pages for users and enables other users to modify the personal page of a given user. Generally, a given webpage is enabled to be collaboratively modified and edited by multiple users. In some embodiments, the owner of the personal page approves the trusted users and may define one or more rules that automatically define a trusted user. In some embodiments, rules for modifying/editing a social webpage may specify the type of operations users can perform on the page and may specify one or more potential target actions.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/NINOS DONABED/Primary Examiner, Art Unit 2444
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