DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
This action is in response to communications filed on 10/14/2024.
Claims 1-20 have been examined and are rejected.
Priority
This application is a continuation of 18/448,094, now US12,120,084, which is a continuation of 17/875,817, now US11,765,122, which is a continuation of PCT/CN/2021/086062 filed 4/9/2021, and claims priority to foreign applications CN202010366951.6 filed 4/30/2020 and CN202010366968.1 filed 4/30/2020.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper time wise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over Claims 1-23 of U.S. Patent No. 12,120,084 and Claims 1-28 of U.S. Patent No. 11,765,122. Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter. Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See MPEP § 804.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 1/14/2025, 5/27/2025, and 6/11/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Rejections – 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4, 6-9, 11, 13-15, & 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dong et al. (US 2016/0337277 A1).
With regard to Claim 1, Dong teaches:
An information sharing method, comprising:
in response to detecting a mail sharing operation triggered by a sharer for a first mail, determining a target mail information currently to be shared; (a user may select a button as a start event for acquiring a first keyword, wherein stored mails are searched to return a mail index list of messages matching the first keyword, and wherein the user may select one or more mail messages from the mail index list to be shared with a user on the opposite side [Dong: 0019-26; Fig. 1]);
and acquiring sharee information and sharing, according to the sharee information, the target mail information with a sharee corresponding to the sharee information to display the target mail information on a client interface corresponding to the sharee; (extracting predetermined information from the mail message and encapsulating the extracted information into an instant communication message, wherein the instant communication message is transmitted to the client terminal of the user on the opposite side for display in an interface of an instant messaging application [Dong: 0027-36; Fig. 4]);
wherein the sharee information comprises sharee instant messaging (IM) information; (predetermined information is extracted from the mail message and encapsulated into an instant communication message, wherein the instant communication message is transmitted to the client terminal of the user on the opposite side for display in an interface of an instant messaging application [Dong: 0027-36; Fig. 4]).
With regard to Claim 4, Dong teaches:
The method of claim 1, wherein the client interface corresponding to the sharee comprises an IM client interface of the sharee; (the instant communication message is transmitted to the client terminal of the user on the opposite side for display in an interface of an instant messaging application [Dong: 0027-36; Fig. 4]).
With regard to Claim 6, Dong teaches:
The method of claim 2, further comprising: generating a mail card according to the target mail information to be displayed on the client interface corresponding to the sharee; (predetermined information is extracted from the mail message and encapsulated into an instant communication message, wherein the instant communication message is transmitted to the client terminal of the user on the opposite side for display in an interface of an instant messaging application [Dong: 0027-36; Fig. 4]).
With regard to Claim 7, Dong teaches:
The method of claim 6, further comprising: in response to detecting a mail viewing operation triggered for the mail card, generating mail content of the target mail information to be displayed; (predetermined information is extracted from the mail message and encapsulated into an instant communication message, wherein the instant communication message is transmitted to the client terminal of the user on the opposite side for display in an interface of an instant messaging application [Dong: 0027-36; Fig. 4]).
With regard to Claim 8, Dong teaches:
The method of claim 7, wherein card display content of the mail card comprises at least one of the following: subject information of the target mail information, text summary information of the target mail information, or sharer information of the sharer; (methods for extracting predetermined information may include copying, extracting, combining content of a mail, etc., wherein the subject of a mail is copied to form the predetermined information, or the date of sending, date of reception, and keyword of description content of the mail are extracted and combined together to form the predetermined information [Dong: 0030; 0074]).
With regard to Claim 9, Dong teaches:
The method of claim 6, further comprising: in response to receiving a message forwarding operation triggered by the sharer for the mail card from the IM client of the sharer, sending the mail card to at least one of an IM user or an IM user group selected by the sharer; (encapsulating the predetermined information into an instant communication message that has an action button, wherein the action button includes a browse button, a forward button, and a reply button, and wherein by using the forward button, users may conveniently forward the content of the instant communication message to a third party [Dong: 0075-76]).
With regard to Claim 11, Dong teaches:
The method of claim 1, wherein after sharing the target mail information with the sharee corresponding to the sharee information to display the target mail information on the client interface corresponding to the sharee, the method further comprises: in response to detecting a sharee adding operation triggered by the sharer, acquiring information of a sharee to be added and sharing, according to the information of the sharee to be added, the target mail information with the sharee corresponding to the information of the sharee to be added; (encapsulating the predetermined information into an instant communication message that has an action button, wherein the action button includes a browse button, a forward button, and a reply button, and wherein by using the forward button, users may conveniently forward the content of the instant communication message to a third party [Dong: 0075-76]).
With regard to Claim 13, Dong teaches:
An information display method, comprising:
in response to receiving a target mail information shared by a sharer based on a mail sharing operation; (a user may select a button as a start event for acquiring a first keyword, wherein stored mails are searched to return a mail index list of messages matching the first keyword, and wherein the user may select one or more mail messages from the mail index list to be shared with a user on the opposite side [Dong: 0019-26; Fig. 1]);
acquiring sharer information of the sharer; and displaying the target mail information and the sharer information on a client interface of a sharee; (extracting predetermined information from the mail message and encapsulating the extracted information into an instant communication message, wherein the instant communication message is transmitted to the client terminal of the user on the opposite side for display in an interface of an instant messaging application [Dong: 0027-36; Fig. 4], and wherein the encapsulated information comprises subject, description content, keyword of description content, mail address, name of sender, name of recipient, date of reception, and date of sending [Dong: 0029]);
wherein the sharer information comprises sharer instant messaging (IM) information; (predetermined information is extracted from the mail message and encapsulated into an instant communication message, wherein the instant communication message is transmitted to the client terminal of the user on the opposite side for display in an interface of an instant messaging application [Dong: 0027-36; Fig. 4]).
With regard to Claim 14, Dong teaches:
The method of claim 13, wherein the client interface of the sharee comprises an IM client interface of the sharee; (the instant communication message is transmitted to the client terminal of the user on the opposite side for display in an interface of an instant messaging application [Dong: 0027-36; Fig. 4]).
With regard to Claim 15, Dong teaches:
The method of claim 13, further comprising: in response to detecting a mail viewing operation, displaying mail content of the target mail information; (predetermined information is extracted from the mail message and encapsulated into an instant communication message, wherein the instant communication message is transmitted to the client terminal of the user on the opposite side for display in an interface of an instant messaging application [Dong: 0027-36; Fig. 4]).
With regard to Claims 18-20, they appear substantially similar to the limitations recited by claims 1 & 13 and consequently do not appear to teach or further define over the citations provided for said claims. Accordingly, claims 18-20 are rejected for the same reasons as set forth in claims 1 & 13.
Claim Rejections – 35 USC § 103
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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Dong et al. (US 2016/0337277 A1) in view of Agarwal et al. (US 2018/0341927 A1).
With regard to Claim 2, Dong teaches:
The method of claim 1, wherein determining the target mail information currently to be shared comprises: wherein the first mail comprises a mail being edited, a received mail in an inbox, a sent mail in an outbox, or an edited mail stored in a draft box; (the mail selected to be shared may be mail previously received by the selecting user [Dong: 0020]).
However, Dong does not teach (where underlining indicates the portion of each limitation not taught):
wherein determining the target mail information currently to be shared comprises: determining, from a second mail matching the first mail, the target mail information currently to be shared.
In a similar field of endeavor involving forwarding email communications, Agarwal discloses:
wherein determining the target mail information currently to be shared comprises: determining, from a second mail matching the first mail, the target mail information currently to be shared; (identifying an e-mail thread based on similarity in titles and/or content, as well as explicit continuation hints such as forward or response signifiers, and forwarding the identified thread to a delegate [Agarwal: 0014-15; Fig. 1]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Dong in view of Agarwal in order to determine the target mail to be shared from a second mail matching the first mail in the system of Dong.
One of ordinary skill in the art would have been motivated to combine Dong with Agarwal as doing so would allow related email messages to be identified and forwarded thereby providing the recipient with additional context and information so that the recipient can follow-up and/or take any necessary action [Agarwal: 0015].
With regard to Claim 3, Dong-Agarwal teaches:
The method of claim 2, wherein the second mail comprises the first mail; (the mail selected to be shared may be mail previously received by the selecting user [Dong: 0020]. Agarwal teaches identifying an e-mail thread based on similarity in titles and/or content, as well as explicit continuation hints such as forward or response signifiers, and forwarding the identified thread to a delegate [Agarwal: 0014-15; Fig. 1]. Thus the combination would yield a system in which a user can select to share a previously received mail, and in response an email thread of similar messages as well as the selected previously received message will be identified and forwarded).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Dong et al. (US 2016/0337277 A1) in view of UWMadisonDoITPTE (https://www.youtube.com/watch?v=Pb3UD3Mpj6w).
With regard to Claim 5, Dong teaches the method of claim 1, but does not teach:
wherein after sharing the target mail information with the sharee corresponding to the sharee information to display the target mail information on the client interface corresponding to the sharee, the method further comprises: displaying a prompt identifier at a preset position of a first cell in a mailing list comprising a target mail, wherein the first cell is configured to display abbreviated information of the target mail information.
In a similar field of endeavor involving sending email messages, UWMadisonDoITPTE discloses:
wherein after sharing the target mail information with the sharee corresponding to the sharee information to display the target mail information on the client interface corresponding to the sharee, the method further comprises: displaying a prompt identifier at a preset position of a first cell in a mailing list comprising a target mail, wherein the first cell is configured to display abbreviated information of the target mail information; (in response to a user clicking the “send” icon for a draft forward message, displaying an icon indicating that the message was successfully forwarded in the message preview window [UWMadisonDoITPTE: 0:51]).
[AltContent: oval]
PNG
media_image1.png
1153
1323
media_image1.png
Greyscale
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Dong in view of UWMadisonDoITPTE in order to display a sharing success prompt identifier at a preset position of a first cell in the system of Dong.
One of ordinary skill in the art would have been motivated to combine Dong with UWMadisonDoITPTE as doing so would display a convenient and recognizable symbol to the sender indicating that the message was successfully forwarded to one or more recipients.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Dong et al. (US 2016/0337277 A1) in view of Lemay et al. (US 8,020,105 B1).
With regard to Claim 10, Dong teaches the method of claim 2, but does not teach:
wherein after sharing the target mail information with the sharee corresponding to the sharee IM information to display the target mail information on the client interface corresponding to the sharee, the method further comprises:
acquiring state information of a target message in an IM session, wherein the target message comprises a message sent by the sharer for the target mail information or a message sent by the sharee for the target mail information; and displaying, based on the state information of the target message, the state information on at least one of a mailbox client interface of the sharer or the mailbox client interface of the sharee; and wherein acquiring the state information of the target message in the IM session comprises: acquiring the state information of the target message based on whether the target message in the IM session is read by an information receiver; and wherein displaying, based on the state information of the target message, the state information on the at least one of the mailbox client interface of the sharer or the mailbox client interface of the sharee comprises: displaying the state information of the target message on the at least one of the mailbox client interface of the sharer or the mailbox client interface of the sharee.
In a similar field of endeavor involving a unified email and instant messaging platform, Lemay discloses:
acquiring state information of a target message in an IM session, wherein the target message comprises a message sent by the sharer for the target mail information or a message sent by the sharee for the target mail information; and displaying, based on the state information of the target message, the state information on at least one of a mailbox client interface of the sharer or the mailbox client interface of the sharee; and wherein acquiring the state information of the target message in the IM session comprises: acquiring the state information of the target message based on whether the target message in the IM session is read by an information receiver; and wherein displaying, based on the state information of the target message, the state information on the at least one of the mailbox client interface of the sharer or the mailbox client interface of the sharee comprises: displaying the state information of the target message on the at least one of the mailbox client interface of the sharer or the mailbox client interface of the sharee; (displaying a TOC 202 which lists received email messaging records and displays the name of the user from which the record originated, the subject of the corresponding record, the date and time of the record, and a preview pane 216 comprising the content of the selected record and corresponding metadata, wherein TOC 202 comprises columns contain information for each record including column 204 which indicates the status of a record reflecting whether the corresponding record has content which has not yet been viewed [Lemay: 5:16-65; Fig. 2A]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Dong in view of Lemay in order to display state information on at least one of a mailbox client interface of the sharer or the mailbox client interface of the sharee in the system of Dong.
One of ordinary skill in the art would have been motivated to combine Dong with Lemay as doing so would provide a simple interface indicator to allow a user to quickly identify new unviewed messages.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Dong et al. (US 2016/0337277 A1) in view of Gui (WO 2017/166663 A1).
With regard to Claim 12, Dong teaches the method of claim 1, but does not teach:
wherein mail content of the target mail information displayed on the client interface corresponding to the sharee comprises an attachment download link; and wherein the method further comprises: in response to receiving an attachment download request sent by a client corresponding to the sharee, performing identity authentication according to requester information of the attachment download request; and in response to detecting that the requester information satisfies a preset condition, allowing an attachment download operation.
In a similar field of endeavor involving sending mail with attachments, Gui discloses:
wherein mail content of the target mail information displayed on the client interface corresponding to the sharee comprises an attachment download link; and wherein the method further comprises: in response to receiving an attachment download request sent by a client corresponding to the sharee, performing identity authentication according to requester information of the attachment download request; and in response to detecting that the requester information satisfies a preset condition, allowing an attachment download operation; (after the attachment is uploaded to a cloud disk, the email system obtains the public download link of the cloud disk through the cloud disk API interface, combines the link with attribute information of the attachment, and adds the text into the email body [Gui: ll. 415-450], wherein the public download link is a password-protected public download link requiring the recipient to authenticate using the password provided in the attachment attribute information of the email message [Gui: ll. 536-549]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Dong in view of Gui in order to utilize attachment download links in the system of Dong.
One of ordinary skill in the art would have been motivated to combine Dong with Gui as doing so would allow users to download large-capacity attachments through a link, making it quick and effective to send emails with large attachments [Gui: ll. 449-50].
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Dong et al. (US 2016/0337277 A1) in view of Fong (US 2011/0202859 A1).
With regard to Claim 16, Dong teaches:
The method of claim 15, wherein displaying the mail content of the target mail information comprises: in response to the mail content of the target mail information comprising the sharer information, displaying the sharer information; (predetermined information is extracted from the mail message and encapsulated into an instant communication message, wherein the instant communication message is transmitted to the client terminal of the user on the opposite side for display in an interface of an instant messaging application [Dong: 0027-36; Fig. 4], wherein the encapsulated information comprises subject, description content, keyword of description content, mail address, name of sender, name of recipient, date of reception, and date of sending [Dong: 0029]).
However, Dong-Agarwal does not explicitly teach:
in response to the mail content of the target mail information comprising the sharer information, displaying the sharer information at a preset relative position of a position where subject information of the target mail information is located.
In a similar field of endeavor involving displaying a listing of messages sent between users, Fong discloses:
in response to the mail content of the target mail information comprising the sharer information, displaying the sharer information at a preset relative position of a position where subject information of the target mail information is located; (list elements 340-344 indicate messages, with a contact name (e.g., "Ruth B.") displayed in larger text above a subject line (e.g., "Briefs due") in smaller text, wherein list elements 320 and 340-344 can act as links which direct the user to further information (e.g., the full message) when activated [Fong: 0039]).
PNG
media_image2.png
642
952
media_image2.png
Greyscale
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Dong in view of Fong in order to display the sharer information at a preset relative position of a position where subject information of the target mail is located in the system of Dong.
One of ordinary skill in the art would have been motivated to combine Dong with Fong as doing so would allow the recipient to view at a glance abbreviated message information indicating the sending user and a subject of the message which can allow the recipient to easily distinguish received messages.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Dong et al. (US 2016/0337277 A1) in view of cloudHQ (https://www.youtube.com/watch?v=5FXiVPxk0JQ).
With regard to Claim 17, Dong teaches the method of claim 13, but does not teach:
displaying a second sharing identifier on a client interface of the sharee, wherein the second sharing identifier is configured to characterize that the target mail information is shared from another client.
In a similar field of endeavor involving sharing an email via chat, cloudHQ discloses:
displaying a second sharing identifier on a client interface of the sharee, wherein the second sharing identifier is used for characterizing that the target mail is shared from another client, and the second sharing identifier has a different display style from a first sharing identifier displayed by a client of the sharer; (displaying an image of an email message in a chat application, wherein the image of the email is accompanied by a notice that the image is a shared email by cloudHQ (i.e. second sharing identifier), and wherein the notice is displayed in a larger bolded font different from other chat text [cloudHQ: 0:41]).
PNG
media_image3.png
1037
1615
media_image3.png
Greyscale
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Dong in view of cloudHQ in order to display a second sharing identifier for characterizing that the target mail is shared from another client in the system of Dong.
One of ordinary skill in the art would have been motivated to combine Dong with cloudHQ as doing so would inform the recipient that the received image message is an email while simultaneously advertising services for performing such conversion.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
LoBuono et al. (US 2006/0031331 A1) which teaches monitoring e-mail activity for e-mail exchange threads, wherein selected threads are identified and a prompt to switch to an IM session is sent to a local e-mail recipient, wherein if the recipient elects to continue the exchange in an instant messaging (IM) session, the substance of the thread is copied to the IM session and the exchange continues [LoBuono: 0010].
In the case of amendments, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and support, for ascertaining the metes and bounds of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN J MOREAU whose telephone number is (571) 272-5179. The examiner can normally be reached Monday-Friday 9:00 - 6:00 ET.
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, Rebecca Song can be reached on 571-270-3667. 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.
/AUSTIN J MOREAU/Primary Examiner, Art Unit 2446
Prosecution Insights