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 11/20/2025 has been entered. Claim(s) is/are 1-5, 7-12, 14-19 pending in the application. Further, the Applicant has not addressed the CRM claim in the 101 rejection which is now underlined to stand out.
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.
a. Claims 1-5, 7-12, 14-19 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) 8 is/are drawn to a system (i.e., a machine/manufacture), and claim(s) 15 is/are drawn to machine readable storage medium (i.e., a machine/manufacture). As such, claims 1, 8, and 15 is/are drawn to one of the statutory categories of invention.
Claims 1-5, 7-12, 14-19are directed to track and rank user messaging. Specifically, the claims recite tracking, by a messaging application executed on a client device, messaging interactions initiated by a user to a plurality of user groups over a predetermined period of time; assigning a score to each of the plurality of groups based on the messaging interactions initiated by the user; selecting a subset of the plurality of groups based on the score assigned to each of the plurality of groups, the subset of the plurality of groups including at least a user group; selecting a graphical icon from among a plurality of graphical icons based on a status of the user group, which is grouped within the Mathematical Concepts and is similar to the concept of (mathematical relationships OR mathematical formulas or equations OR mathematical calculations) OR 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 memory, machine readable storage medium, 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 memory, machine readable storage medium, and a processor perform(s) the steps or functions of causing display of an interface element that includes a presentation of the subset of the plurality of groups at the client device, the presentation of the subset of the plurality of user groups including a display of the user group that includes the graphical icon. 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 memory, machine readable storage medium, 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 track and rank user messaging. As discussed above, taking the claim elements separately, the memory, machine readable storage medium, and a processor perform(s) the steps or functions of causing display of an interface element that includes a presentation of the subset of the plurality of groups at the client device, the presentation of the subset of the plurality of user groups including a display of the user group that includes the graphical icon. 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 track and rank user messaging. 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 2-5, 7, 9-12, 14, 16-19 further describe the abstract idea of track and rank user messaging. 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 § 101
b. Claim(s) 15-20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Said claim discloses a machine-readable storage medium. Both said claim and the respective specification fail to disclose whether said machine-readable storage medium is limited to a non-transitory medium or transitory propagating signal. Reading said claim under the broadest reasonable interpretation machine-readable storage medium is considered to read on a transitory propagating signal. See the "Subject Matter Eligibility of Computer Readable Media" (1351 OG 212 - Feb. 23, 2010). A claim reciting only a musical composition, literary work, compilation of data, signal or legal document per se does not appear to be a process, machine, manufacture, or composition of matter. See MPEP § 2106. Thus, both said claim and said specification fail to define said machine-readable storage medium to be statutory media.
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) 1-5, 7-12, 14-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jain (U.S. Patent App Pub 20210044559).
Regarding claim 1,
Jain teaches a method comprising: tracking, by a messaging application executed on a client device, messaging interactions initiated by a user to a plurality of user groups over a predetermined period of time; (See paragraphs 81, 77, figure 5, Jain teaches person interacting with a bunch of groups)
assigning a score to each of the plurality of groups based on the messaging interactions initiated by the user; (See paragraphs 24-25, 45, 49, figure 3, Jain teaches ranking/scoring based on interaction with group)
selecting a subset of the plurality of groups based on the score assigned to each of the plurality of groups; and (See paragraphs 24-25, 45, 49, figure 3, Jain teaches ranking the groups higher above lower)
the subset of the plurality of groups including at least a user group; selecting a graphical icon from among a plurality of graphical icons based on a status of the user group; (See paragraphs 49-50, fig 6, Jain teaches boxing or lining a subset of different groups -this shows favored groups)
causing display of an interface element that includes a presentation of the subset of the plurality of groups at the client device, (See paragraphs 81, 77, figure 5, Jain teaches ranking the display of groups based on rank) the presentation of the subset of the plurality of user groups including a display of the user group that includes the graphical icon(See paragraphs 49-50, fig 6, Jain teaches boxing of lining different groups)
Regarding claim 2,
Jain teaches the method of claim 1, wherein the messaging interactions comprise at least one of: a sent image; a sent chat message; and a sent video message. (See paragraphs 20-21, Jain teaches chat messages)
Regarding claim 3,
Jain teaches the method of claim 1, wherein assigning the score comprises: assigning a numerical value to each messaging interaction initiated by the user based on an attribute of each messaging interaction; summing the numerical values assigned to each messaging interaction for each of the plurality of groups over the predetermined time period to generate the score. (See paragraphs 22, 27, 28, fig 3-4, Jain)
Regarding claim 4,
Jain teaches the method of claim 3, wherein the attribute includes a type of interaction. (See paragraphs 22, 27, 28, fig 3-4, Jain)
Regarding claim 5,
Jain teaches the method of claim 1, wherein the selecting the subset of the plurality of groups includes: determining a ranking of the plurality of groups based on the score assigned to each of the plurality of groups; and (See paragraphs 39, 44-45, Jain, fig 5)
selecting the subset of the plurality of groups based on the ranking.(See paragraphs 39-40, Jain, fig 5)
Regarding claim 7,
Jain teaches the method of claim 1, further comprising: receiving an input that assigns the graphical icon to the status. (See paragraphs 49-50, fig 6, Jain)
Claims 8-13 list all the same elements of claims 1-5, 7, but in system form rather than method form. Therefore, the supporting rationale of the rejection to claims 1-5, 7 applies equally as well to claims 8-13.
Claims 15-19 list all the same elements of claims 1-5, but in medium form rather than method form. Therefore, the supporting rationale of the rejection to claims 1-5 applies equally as well to claims 15-19.
Response to Arguments
Applicant's arguments filed 11/20/2025 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 track and rank user messaging 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 track and rank user messaging does not add technical improvement to the abstract idea. The recitations to memory, machine readable storage medium, and a processor perform(s) the steps or functions of display of an interface element that includes a presentation of the subset of the plurality of groups at the client device, the presentation of the subset of the plurality of user groups including a display of the user group that includes the graphical icon. 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 track and rank user messaging 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 memory, machine readable storage medium, and a processor 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 track and rank user messaging. 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.
2. Further Applicant argues “As amended, the claims recite limitations that include "selecting a graphical icon from among a plurality of graphical icons based on a status of the user group." Applicant submits that Jain's general "color scheme to highlight recommended groups" does not teach or suggest this specific icon selection feature, as a color scheme for highlighting groups is different from selecting and assigning specific graphical icons based on status determinations.”
Examiner respectfully disagrees and points to at least paragraph 49 of Jain which teaches “[0049] Based on this data, the system can deduce the user effort required to locate a group conversation. Each group conversation category can have a negative weight that increases with the ordering of the group conversation. In other words, the longer a group goes without user activity, the further the group is de-prioritized by the system. The system can also deduce group conversations missing the user's attention based on a comparison of the original versus the new list order. Moreover, the system can deduce the usage distribution by group conversation based on the user activity data. For example, the system can deduce that the user spends 17% of his time in Group A, 10% of the user's sent messages are to Group B, and 22% of the user's read messages are from Group C. The usage distribution information can help the system answer questions such as whether an artificial focus boundary can be drawn for the user, such as a box enclosing recommended groups, a line separating recommended from non-recommended groups, or a color scheme to highlight recommended groups. The usage distribution information can also be used to determine whether premium visible space is being wasted in the original user interface by displaying non-recommended groups towards the top of the screen. In a scenario where a user opens a 6th or 7th ordered group with a similar affinity as the top 5 groups, the system can identify the 6th or 7th ordered group as deserving a high ranking.” This section teaches groups that are favored are boxed or lined. Boxing and lining are types of graphical icons are based on the status of the particular group. Therefore, the claim is taught by the Jain reference.
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.Deets, U.S. Patent App 20190138174, teaches the present disclosure is directed to systems and methods for identifying and providing highlight messages from a group messaging thread. For example, systems and methods described herein detect when a group messaging thread participant becomes absent from the group messaging thread, and identifies one or more highlight messages that were submitted to the group messaging thread while the participant was absent. Systems and methods described herein identify highlight messages that are specific to the absent participant, such that when the participant again accesses the group messaging thread, the participant can review the identified highlight messages in order to quickly “catch up” on the group messaging thread without having to read each electronic message submitted to the group messaging thread during the participant's absence.
2. Avital, U.S. Patent App 20190199672, teaches a method, apparatus and computer program product, the method comprising: receiving a communication message transmitted to a user associated with an organization; obtaining a user score for the communication message; applying one or more rules from a set of rules to the communication message to obtain an organization score for the communication message, wherein the rules reflect prioritization provided by the organization; and displaying to the user a set of communication messages in an order, wherein the communication messages comprise the communication message, and wherein the order is affected by the organization score of the communication message, thereby overriding an order determined in accordance with the user score.
THIS ACTION IS MADE FINAL. 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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