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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1:
The claim recites:
“in response to receiving the search query, concurrently displaying, via the one or more displays,
“a representation of a first message location that includes a first message containing the at least one search term:
“a representation of a second message location that includes a second message containing the at least one search term:
“the first message containing the at least one search term: and
“the second message containing the at least one search term;
“receiving a first input corresponding to selection of the first message location; and
“in response to receiving the first input, ceasing display of the second message containing the at least one search term.”
This combination of subject matter does not appear to have been described in the specification at the time the application was filed.
Applicant points to paragraphs 274-281 of their specification as support, without specifically identifying any individual element or figure. This section of the specification (which are paragraphs 324-331 in applicant’s patent application publication) is directed to Figs. 33A-34.
This part of the specification and these figures do not show the claimed subject matter.
It should be noted that the specification uses the term “location” to mean the location of the search text within the message – e.g., to or from, etc. That doesn’t appear to be what applicant is trying to claim here as these are not “a first message location that includes a first message containing the at least one search term,” etc.
Some of these figures – e.g., Fig. 33B – show what possibly could be considered message locations by the claim’s apparent meaning that includes messages in section 3330. These are “All Mailboxes” or “Current Mailbox” as shown in the figures.
But these are not representations of message locations that contain the search term, because judging by the specification the message location is selected before the search is run. See paragraph 275: “the select-mailbox option 3330 allows the user to select between searching all mailboxes of the email application and searching only the current mailbox.”
Because this is the order the operations happen, there is no subsequent step of “receiving a first input corresponding to selection of the first message location; and in response to receiving the first input, ceasing display of the second message containing the at least one search term.” No second message from a second location was ever shown because the search is run after the location is selected. Search results from multiple mailboxes are never shown at the same time, except when“All Mailboxes” is selected, but the specification never shows that messages from multiple mailboxes are shown and selected in the claimed way. If the locations are mailboxes, it never shows a message from a second location, and it can’t cease displaying something that it never displayed.
Note that applicant does show (e.g., Fig. 33D) different messages where the search text was in different locations (“From,” “To/CC,” etc.) and when a message is selected might cease displaying the messages where they were in a different location, but this is not what is claimed here.
Therefore this combination of subject matter was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 2-13:
They are dependent on claim 1 or contain similar language. Note that claim 5 and other claims have language such as “concurrently displaying the representation of the first message location, the representation of the second message location, the first message, and the second message.” This is not shown in the specification. If the locations are mailboxes it never shows messages from multiple mailboxes at the same time. If the locations are the location within the message (e.g., “To”), then the rest of the claim language doesn’t make sense. This same language is repeated in claims 6, 10, and 11.
Claims 1-13 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding these claims:
As just discussed above, the specification does not describe or show in the figures the claimed subject matter as a whole.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding these claims:
As just discussed above, the specification does not describe or show in the figures the claimed subject matter as a whole.
Specifically regarding claims 2-3:
Claim 2 recites “the at least one search term includes in the first visually distinguished.” This should probably be “in the first message visually distinguished.” Otherwise there is a lack of antecedent basis for “the first,” and because claim 3 refers to “the first message,” the overall claim language does not make sense.
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 et al. (US 9,069,862) in view of Keohane et al. (US 2004/0199590)
Regarding claim 1:
Perkowitz discloses:
Claim 1
Perkowitz
1. 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 plurality of message locations of a messaging application; and
Shown in, e.g., Fig. 5A: search box 502, where, e.g., Fig. 5B shows a search query being entered. Perkowitz does not show that these messages are “in a plurality of message locations of a messaging application.”
in response to receiving the search query, concurrently displaying, via the one or more displays,
E.g., Fig. 5D
a representation of a first message location that includes a first message containing the at least one search term:
E.g., Fig. 5C: 522. Each category here is a “message location”
a representation of a second message location that includes a second message containing the at least one search term:
Fig. 5C: 522
the first message containing the at least one search term: and
As seen in Fig. 5D
the second message containing the at least one search term;
As seem in Fig. 5D
receiving a first input corresponding to selection of the first message location; and
Fig. 4: step 480 – except this appears to be selection of a message in the context of Fig. 5D, not a message location
in response to receiving the first input, ceasing display of the second message containing the at least one search term.
Fig. 4: step 490
Perkowitz does not disclose:
That the search is performed “in a plurality of message locations of a messaging application,” where the results are organized by “a representation of a first message location” and “a representative of a second message location,” and where the first input selects “the first message location.”
Keohane discloses:
That the search is performed in a plurality of message locations of a messaging application (e.g., Fig. 7, where each mailbox is a different “message location”), where the results are organized by a representation of a first message location and a representative of a second message location (as seen in Fig. 7).
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 Keohane.
The rationale is as follows:
Perkowitz and Keohane are directed to the same field of art.
Perkowitz already shows categories where the search terms can be found (e.g., Fig. 5C: 522). Keohane suggests another kind of category that could be useful to the user – different mailboxes. One of ordinary skill in the art could have included this with predictable results.
Perkowitz in view of Keohane discloses:
where the first input selects the first message location (the mailboxes suggested by Keohane could be one of the categories shown in Perkowitz – see in, e.g., area 522 in Fig. 5C. In that case a user input is used to select the category.
Regarding claim 4:
Perkowitz in view of Keohane discloses:
wherein concurrently displaying the representation of the first message location, the representation of the second message location, the first message, and the second message includes:
displaying, via the one of more displays, a first header corresponding to the representation of the first message location (this is as per Perkowitz Fig. 5D, where “Messages,” is selected, but from the teaching of Keohane each of these could be a separate mailbox), and
displaying, via the one or more displays, the first message below the first header (Perkowitz Fig. 5D).
Regarding claim 5:
Perkowitz in view of Keohane discloses:
wherein concurrently displaying the representation of the first message location, the representation of the second message location, the first message, and the second message, includes displaying, via the one or more display, the first message and the second message in a chronological order (in Perkowitz, e.g., Fig. 5D, messages are shown in chronological order)
Regarding claim 6:
Perkowitz in view of Keohane discloses:
wherein displaying the first message and the second message is based on sent times and received times (Perkowitz calls this “date fields for an email message” in column 5, lines 35-50).
Regarding claim 11:
Perkowitz in view of Keohane discloses:
the one or more programs further including instructions for: while concurrently displaying the representation of the first message location, the representation of the second message location, the first message, and the second message, 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; and
in 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; and the 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 rejections. 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 Keohane, and further in view of Buchheit et al. (US 2005/0222985)
Regarding claim 2:
Perkowitz in view of Keohane discloses an electronic device as discussed above.
Perkowitz in view of Keohane does not disclose:
“wherein displaying the first message includes displaying, via the one or more displays, the at least one search term included in the first visually distinguished from other portions of the first message.”
Buchheit discloses:
wherein displaying the first message includes displaying, via the one or more displays, the at least one search term included in the first 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 in view of Keohane the elements taught by Buchheit.
The rationale is as follows”
Perkowitz, Keohane 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 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 Keohane, and further in view of Chaudhri (US 2010/0231533)
Regarding claim 7:
Perkowitz in view of Keohane discloses an electronic device as discussed above.
Perkowitz in view of Keohane 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 in view of Kehane 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, as suggested by Chaudhri.
The rationale is as follows:
Perkowitz, Keohane 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., discloses:
wherein the second input includes a swipe in a first direction (Chaudhri paragraph 155).
Regarding claim 9:
Perkowitz, etc., 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 Keohane and further in view of Kruzeniski et al. (US 2010/0105370)
Regarding claim 10:
Perkowitz in view of Keohane discloses an electronic device as discussed above.
Perkowitz in view of Keohane does not disclose:
“the one or more programs further including instructions for: while concurrently displaying the representation of the first message location, the representation of the second message location, the first message, and the second message, 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 discloses:
the one or more programs further including instructions for: while concurrently displaying the representation of the first message location, the representation of the second message location, the first message, and the second message, 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 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 Kruzeniski.
The rationale is as follows:
Perkowitz, Keohane, and Kruzeniski are directed to the same field of art.
Kruzeniski discloses a way the user can see additional search categories (“locations”) 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 December 2025 have been fully considered but they are not persuasive.
Applicant first argues (Starting page 8) applicant argues that they have amended the claims to remove “query result groups” and to “clarify ‘message locations.’”
These amendments did not clarify the claims. If anything, they are less understandable. The specification does not appear to show the claimed subject matter at all. It does not help that the claims do not use the same terminology as the specification, and applicant did not specifically point to any figures or elements that they believe support these changes – only generically citing a block of eight paragraphs.
The Examiner is unable to understand what exactly in the specification, if anything, is being claimed. The claim language does not appear to be supported as best it can be understood. Note that the art rejections above are a best-faith effort to reject the claims as best they can be understood.
Next (starting page 9) applicant argues that Perkowitz does not disclose parts of the new language such as “selection of the first message location” and then causing the device to “cease display of the second message.”
As per the 112 rejections it is not clear what any of this means. But Perkowitz does have locations: see, e.g., Fig. 5C: 522. In Perkowitz these are not “message” locations, but Keohane is now relied upon to teach separately displaying elements from different mailboxes, which are message locations. In the combination the claim language follows.
Applicant goes on (page 10) to argue Perkowitz doesn’t describe selection of a message location. Well, Perkowitz does describe selection of a location (again, Fig. 5C: 522) and in the combination this would be selection of a message location. As shown in Perkowitz search results relating to that location are shown.
Applicant then argues the dependent claims are allowable for the same reasons. This is no more persuasive with respect to these claims.
Conclusion
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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/CHRISTOPHER R LAMB/Primary Examiner, Art Unit 2622