DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 30 June 2026 has been entered.
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 and 12-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bawri et al. (US 2012/0124041)
1. (Currently Amended) An electronic device with one or more input devices and one or more displays, comprising:
Paragraph 31
one or more processors; and
Paragraph 31: Data Processing Unit
memory storing one or more programs configured to be executed by the one or more processors, the one or more programs including instructions for:
Paragraph 168
receiving, via the one or more input devices, a search query into a search input element, wherein the search query includes at least one search term for searching messages in a messaging application; and
Fig. 10: 1002
in response to receiving the search query, concurrently displaying, via the one or more displays, one or more messages including the at least one search term, wherein the one or more messages includes a first message containing the at least one search term;
Fig. 10: 1008
receiving, via the one or more input devices, a first input corresponding to selection of the first message of the one or more messages including the at least one search term; and
Paragraph 130: "the user selects an e-mail chain"
in response to receiving the first input, concurrently displaying, via the one or more displays:
the first message of the one or more messages including the at least one search term; and
Paragraph 130: "all the e-mails in the chain are displayed"
a second message, different from the first message, wherein the second message is not included in the one or more messages including the at least one search term.
All the emails in the chain would not necessarily be returned by the search, so therefore some of the chain emails would not have been included in the first results.
Regarding claims 12-13:
All elements positively recited have already been identified with respect to earlier rejections. No further elaboration is necessary.
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, 4-6, and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Perkowitz (US 9,069,862) in view of Bawri
Regarding claim 1:
This is an alternate rejection of this claim, necessary for some of the dependent claims.
Perkowitz discloses:
1. (Currently Amended) An electronic device with one or more input devices and one or more displays, comprising:
Fig. 2
one or more processors; and
Fig. 2: "Processor"
memory storing one or more programs configured to be executed by the one or more processors, the one or more programs including instructions for:
Fig. 2: "Memory"
receiving, via the one or more input devices, a search query into a search input element, wherein the search query includes at least one search term for searching messages in a messaging application; and
Fig. 10: 1002
in response to receiving the search query, concurrently displaying, via the one or more displays, one or more messages including the at least one search term, wherein the one or more messages includes a first message containing the at least one search term;
Fig. 5D
receiving, via the one or more input devices, a first input corresponding to selection of the first message of the one or more messages including the at least one search term; and
Not disclosed by Perkowitz
in response to receiving the first input, concurrently displaying, via the one or more displays:
the first message of the one or more messages including the at least one search term; and
a second message, different from the first message, wherein the second message is not included in the one or more messages including the at least one search term.
Therefore Perkowitz does not disclose:
"receiving, via the one or more input devices, a first input corresponding to selection of the first message of the one or more messages including the at least one search term; and in response to receiving the first input, concurrently displaying, via the one or more displays:the first message of the one or more messages including the at least one search term; anda second message, different from the first message, wherein the second message is not included in the one or more messages including the at least one search term"
Bawri discloses:
receiving, via the one or more input devices, a first input corresponding to selection of the first message of the one or more messages including the at least one search term; and
Paragraph 130: "the user selects an e-mail chain"
in response to receiving the first input, concurrently displaying, via the one or more displays:
the first message of the one or more messages including the at least one search term; and
Paragraph 130: "all the e-mails in the chain are displayed"
a second message, different from the first message, wherein the second message is not included in the one or more messages including the at least one search term.
All the emails in the chain would not necessarily be returned by the search, so therefore some of the chain emails would not have been included in the first results.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include in Perkowitz the elements taught by Bawri.
The rationale is as follows:
Perkowitz and Bawri are directed to the same field of art.
Perkowitz is directed to a method of searching different message location. But Perkowitz does not go into what happens when one of these messages is selected. Bawri shows a user-friendly option. This is a known improvement that one of ordinary skill in the art could have included with predictable results.
Regarding claim 4:
Perkowitz in view of Bawri discloses:
wherein concurrently displaying the one or more messages including the at least one search term via the one or more displays, a first header corresponding to a representation of a first message location; and displaying, via the one or more displays, the first message of the one or more messages including the at least one search term below the first header (Perkowitz Fig. 5D, where "sent by," "received by," etc. are message locations).
Regarding claim 5:
Perkowitz in view of Bawri discloses:
wherein concurrently displaying the one or more messages including the at least one search term includes displaying, via the one or more displays, the one or more messagesin a chronological order. (they are in this order in Perkowitz Fig. 5D).
Regarding claim 6:
Perkowitz in view of Bawri discloses:
wherein displaying the one or more messages in the chronological order is based on sent times and received times (Perkowtz Fig. 5D).
Regarding claim 11:
Perkowitz in view of Bawri discloses:
the one or more programs further including instructions for: while concurrently displaying the one or more messages including the at least one search term, displaying, via the one or more displays, a first affordance; receiving, via the one or more input devices, a fourth input at the first affordance; andi n response to receiving the fourth input at the first affordance, displaying, via the one or more displays, a first set of messages, wherein displaying the first set of messages includes concurrently displaying the first message and a third message, wherein: the third message includes the at least one search term; andt he third message was not displayed prior to receiving the fourth input at the first affordance (all this is just listing additional search results within a category in response to an input. Perkowitz discloses this: e.g., column 9, lines 25-35).
Regarding claims 12-13:
All elements positively recited have already been identified with respect to earlier rejection. No further elaboration is necessary.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Perkowitz in view of Bawri, and further in view of Buchheit et al. (US 2005/0222985)
Regarding claim 2:
Perkowitz, etc., discloses an electronic device as discussed above.
Perkowitz, etc., does not disclose:
“wherein displaying the first message of the one or more messages includes displaying, via the one or more displays, the at least one search term included in the first message visually distinguished from other portions of the first message.”
Buchheit discloses:
wherein displaying the first message of the one or more messages includes displaying, via the one or more displays, the at least one search term included in the first message of the one or more messages visually distinguished from other portions of the first message (paragraph 122).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include in Perkowitz, etc., the elements taught by Buchheit.
The rationale is as follows:
Perkowitz, etc., and Buchheit are directed to the same field of art.
Buchheit teaches a way of showing search results that can help the user understand the results. This is a known improvement that one of ordinary skill in the art could have included with predictable results.
Regarding claim 3:
Perkowitz, etc., discloses:
wherein displaying the at least one search term included in the first message of the one or more messages visually distinguished from the other portions of the first message includes: displaying, via the one or more displays, the at least one search term in one or more of: a bold font; and a black color; and displaying, via the one or more displays, the other portions of the first message in one or more of: a regular font; and a greyed-out color (Buchheit paragraph 122).
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Perkowitz in view of Bawri, and further in view of Chaudhri (US 2010/0231533)
Regarding claim 7:
Perkowitz, etc., discloses an electronic device as discussed above.
Perkowitz, etc., does not disclose:
“the one or more programs further including instructions for: prior to receiving the search query into the search input element and while the search input element is not displayed, displaying, via the one or more displays, a plurality of messages; while displaying the plurality of messages, receiving, via the one or more input devices, a second input; and in response to receiving the second input, displaying, via the one or more displays, the search input element.”
Chaudhri discloses:
the one or more programs further including instructions for: prior to receiving the search query into the search input element and while the search input element is not displayed, receiving, via the one or more input devices, a second input; and in response to receiving the second input, displaying, via the one or more displays, the search input element (paragraph 155).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include in Perkowitz, etc., the one or more programs further including instructions for: prior to receiving the search query into the search input element and while the search input element is not displayed, displaying, via the one or more displays, a plurality of messages; while displaying the plurality of messages, receiving, via the one or more input devices, a first input; and in response to receiving the first input, displaying, via the one or more displays, the search input element, as suggested by Chaudhri.
The rationale is as follows:
Perkowitz, etc., and Chaudhri are directed to the same field of art.
Chaudhri discloses not displaying a search input area until the user uses a swipe gesture to call for it. While in Chaudhri this is when a list of icons is displayed, the extension to the situation in Perkowitz where messages are being displayed certainly follows. This can, e.g., show more on the screen or be more aesthetically pleasing. This is a known improvement that one of ordinary skill in the art could have included with predictable results.
Regarding claim 8:
Perkowitz, etc., in view of Chaudhri discloses:
wherein the first input includes a swipe in a first direction (Chaudhri paragraph 155).
Regarding claim 9:
Perkowitz, etc., in view of Chaudhri discloses:
wherein the plurality of messages includes one or more messages that do not include the at least one search term (if the search has not yet been performed, then it will).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Perkowitz in view of Bawri, and further in view of Kruzeniski et al. (US 2010/0105370).
Regarding claim 10:
Perkowitz in view of Bawri discloses an electronic device as discussed above.
Perkowitz in view of Bawri does not disclose:
“while concurrently displaying the one or more messages including the at least one search term, receiving, via the one or more input devices, a third input; and
“in response to receiving the third input, displaying, via the one or more displays, one or more new messages containing the at least one search term.”
Kruzeniski dscloses:
while concurrently displaying the one or more messages including the at least one search term, receiving, via the one or more input devices, a third input; and in response to receiving the third input, displaying, via the one or more displays, one or more new messages containing the at least one search term (paragraphs 72-73).
It would hae been obvious to one of ordinary skill in the art at the time the application was filed to include in Perkowitz, etc., the elements taught by Kruzeniski.
The rationale is as follows:
Perkowitz, Bawri, and Kruzeniski are directed to the same field of art.
Kruzeniski discloses a way the user can see additional search categories and results. This is a known improvement that one of ordinary skill in the art could have included with predictable results.
Response to Arguments
Applicant's arguments filed 30 June 2026 have been fully considered but they are not persuasive.
Applicant first argues (starting page 5) that their amendment has overcome the 112 rejections. Applicant points to various elements in the specification, including Figs. 33A-33E, and Figs. 29A-29B, for support.
The Examiner has decided to withdraw these rejections. The claims now consist of two parts, the search results of Figs. 33A-33E and the result of clicking on an email thread in some of Figs. 29. It should be noted that these are never tied together in the specification and it never explicitly says that clicking on one of the search results in Figs. 33A-33E will result in the thread display of Figs. 29. But they are both separately in the specification and performed by the same device so it is probably reasonable to conclude they could function together. For this reason the 112 rejections have been withdrawn.
Applicant next argues (starting page 10) with the art rejections. The Examiner agrees that Perkowitz, either alone or in combination with the other previously cited references, does not appear to teach the new language of the claims.
But Bawri does disclose this. All the new language amounts to is after the search result, clicking on an individual email causes it to show the thread it came from. Bawri teaches exactly this. Therefore applicant's arguments are not persuasive in view of the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER RAY LAMB whose telephone number is (571)272-5264. The examiner can normally be reached 8:30-5:00 PM.
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/CHRISTOPHER R LAMB/Primary Examiner, Art Unit 2622
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