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 .
DETAILED ACTION
Response to Arguments
In communications filed on 3/20/2026, claims 1-3, 5 are presented for examination. Claim 1 is independent.
Amended claim(s): 1, 2, 5.
Applicants’ arguments, see Applicant Arguments/Remarks filed 3/20/2026, with respect to claim(s) rejected under prior art have been fully considered and are persuasive in so far as the amendments are concerned. Newly cited art Khouri (US 20100100370 A1) teaches modifying the first email to include the first tag; and (Khouri: Figs. 4-5C, ¶28-¶33, ¶38, modifying the email subject line with the associated topic tag).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20160014151 A1 (hereinafter ‘Prakash’) in view of US 20180219823 A1 (hereinafter ‘Mohan’) in view of US 20100100370 A1 (hereinafter ‘Khouri’).
As regards claim 1, Prakash (US 20160014151 A1) discloses: A method comprising (Prakash: Abstract, ¶55, i.e., system/method for detecting phishing in emails): intercepting a first email addressed to a target recipient within an organization, the first email received from a first sender at a first email address comprising a first email domain; (Prakash: ¶11, ¶25, i.e., the received message is intercepted at a proxy server for analysis from a sender to a recipient)
extracting a set of features from the first email; (Prakash: Figs 5A, 520a, 5B, 8, 13, 15, ¶55-¶57, ¶71, ¶99, ¶250)
calculating a risk score for the first email based on the set of features; (Prakash: Figs 5A, 520a, 5B, 8, 13, 15, ¶55-¶57, ¶71, ¶99, ¶196, ¶250)
in response to the risk score falling below a threshold risk score (Prakash: Figs 5A, 520a, 5B, 8, 13, 15, ¶55-¶57, ¶71-74, ¶99, ¶137, ¶196, ¶250, i.e., calculating the threshold porbability)
However Prakash does not but in analogous art, Mohan (US 20180219823 A1) teaches: querying a rules engine, administered by the organization, for tags associated with elements of the first email address; (Mohan: Figs. 2-4, ¶22-¶29, ¶38, i.e., rule manager applies rules based on keywords associated with the incoming messages to categorize the messages)
receiving a first tag, associated with the first email address, from the rules engine; and (Mohan: Figs. 2-4, ¶22-¶29, ¶38, i.e., rule manager applies rules based on keywords associated with the incoming messages to categorize the messages, wherein, based on the keywords the message is categorized i.e., annotated)
in response to receiving the first tag, associated with the first email address, from the rules engine: (Mohan: Figs. 2-4, ¶22-¶29, ¶38, i.e., rule manager applies rules based on keywords associated with the incoming messages to categorize the messages, wherein, based on the keywords the message is categorized i.e., annotated)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Prakash to include generating rules based on keywords in incoming emails to categorize and file the messages to appropriate folders for a recipient as taught by Mohan with the motivation to improve productivity and efficiency in managing emails (Mohan: ¶1)
However, Prakash et al do not but in analogous art, Khouri (US 20100100370 A1) teaches: modifying the first email to include the first tag; and (Khouri: Figs. 4-5C, ¶28-¶33, ¶38, modifying the email subject line with the associated topic tag)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Prakash et al to include modifying an email with associated topic tag in the subject line of the email as taught by Khouri with the motivation to maintain and track header information in emails (Khouri: ¶1)
Prakash et al combination further teaches: transmitting the first email with the first tag presented with the first email to an email client of the target recipient. (Mohan: Figs. 2-4, 7, ¶22-¶29, ¶38, i.e., rule manager applies rules based on keywords associated with the incoming messages to categorize the messages, wherein, based on the keywords the message is categorized i.e., annotated, and filing the email message to a particular folder for the recipient. See also, Khouri: Figs. 4-5C, ¶28-¶33, ¶38)
As regards claim 2, Prakash et al combination teaches the method of Claim 1, wherein modifying the first email to include the first tag comprises prepending a subject line of the first email with the first tag; and (Khouri: Figs. 4-5C, ¶28-¶33, ¶38)
wherein transmitting the first email comprises transmitting the first email to the target recipient with the first tag contained within the subject line of the first email rendered within an email client of the target recipient. (Mohan: Figs. 2-4, ¶22-¶29, ¶38. See also, Khouri: Figs. 4-5C, ¶28-¶33, ¶38)
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Prakash in view of Mohan in view of Khouri in view of US 20080141346 A1 (hereinafter ‘Kay’).
As regards claim 3, Prakash et al combination teaches the method of Claim 2. However, Prakash et al do not but in analogous art, Kay (US 20080141346 A1) teaches: further comprising, for a second email sent by the target recipient addressed to the first sender in response to the first email: detecting the first tag in a second subject line of the second email; (Kay: Fig. 4, ¶15, checking for metadata in the header and removing it based on recipient/sender information in the header)
removing the first tag from the second subject line of the second email; and (Kay: Fig. 4, ¶15, checking for metadata in the header and removing it based on recipient/sender information in the header)
transmitting the second email, absent the first tag in the second subject line of the second email, to the first sender. (Kay: Fig. 4, ¶15, checking for metadata in the header and removing it based on recipient/sender information in the header based on authorization)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Prakash et al to include removing/modifying header metadata from sending/receiving emails as taught by Kay with the motivation to provide authorization information (Kay: Fig. 4, ¶15)
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Prakash in view of Mohan in view of Khouri in view of US 20050144245 A1 (hereinafter ‘Lowe’).
As regards claim 5, Prakash et al in combination with Lowe (US 20050144245 A1) teaches the method of Claim 1, wherein modifying the first email to include the first tag comprises: in response to detecting an association between the first email domain and a valid contracted external legal organization, appending a subject line of the first email with "[LEGAL]"; (Prakash: ¶17. Mohan: Fig. 4. See also, Khouri: Figs. 4-5C, ¶28-¶33, ¶38, modifying the email subject line with the associated topic tag. See also, Lowe: Figs. 10-12, ¶66, i.e., tagging the email header with specific categories of the type of email such as legal, finance, client, and so forth)
in response to detecting an association between the first email address and a financial contact within a valid external contract, appending the subject line of the first email with "[FINANCE]"; (Prakash: ¶17. Mohan: Fig. 4. Khouri: Figs. 4-5C, ¶28-¶33, ¶38, modifying the email subject line with the associated topic tag. See also, Lowe: Figs. 10-12, ¶66, i.e., tagging the email header with specific categories of the type of email such as legal, finance, client, and so forth)
in response to detecting an association between the first email domain and a valid contracted external vendor, appending the subject line of the first email with "[VENDOR]"; and (Prakash: ¶17. Mohan: Fig. 4. Khouri: Figs. 4-5C, ¶28-¶33, ¶38, modifying the email subject line with the associated topic tag. See also, Lowe: Figs. 10-12, ¶66, i.e., tagging the email header with specific categories of the type of email such as legal, finance, client, and so forth)
in response to detecting an association between the first email domain and a valid external client, appending the subject line of the first email with "[CLIENT]". (Prakash: ¶17. Mohan: Fig. 4. Khouri: Figs. 4-5C, ¶28-¶33, ¶38, modifying the email subject line with the associated topic tag. See also, Lowe: Figs. 10-12, ¶66, i.e., tagging the email header with specific categories of the type of email such as legal, finance, client, and so forth)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Prakash et al to include tagging the email header with specific categories of the type of email such as legal, finance, client, and so forth as taught by Lowe with the motivation to assist in classifying emails with appropriate categories (Lowe: Figs. 10-12, ¶66)
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SYED A ZAIDI whose telephone number is (571)270-5995. The examiner can normally be reached Monday-Thursday: 5:30AM-5:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Nickerson can be reached at (469) 295-9235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SYED A ZAIDI/Primary Examiner, Art Unit 2432