Notice of Pre-AIA or AIA Status
1. 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
2. Claims 1-20 are pending. Claims 1 and 8 are amended.
3. This office action is in response to the RCE filed 03/13/2026.
4. Claims 1, 8 and 14 are independent claims.
5. The office action is made Non-Final.
Double Patenting
6. Applicant acknowledges the provisional rejection of claims 1-5, 7-18, and 20 on the ground of nonstatutory double patenting over claims 1-3 and 8 of U.S. Patent No. 12,204,573.
and respectfully requests that the rejection remain provisional until the claims are found to be otherwise allowable. At that time, the necessity and appropriateness of a terminal disclaimer can be determined. Therefore, the Double patenting rejection is still in effect.
Examiner Note
7. The Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the Applicant(s). Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the Applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
Claim Rejections - 35 USC § 102
8. 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.
9. 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;
10. Claims 1-5 and 8-18 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Brady et al (US 20090313343 A1) hereinafter as Brady.
11. Regarding claim 1, Brady teaches A method, comprising:
accessing a first conversation data structure comprising messages of a first conversation transmitted via a network to or from a first recipient (Fig 3, S1, [0039], “if the user 14 is entering text in a specific window 22 (a first conversation data structure), then the proposed recipient R (a first recipient) will be the user 14 who is associated with that respective window 22”);
receiving, via input to a user interface, a request to transmit a message via the network to the first recipient (Fig 3, S1, “At step S1, Sender enters message M. By default, message will go to recipient R (the first recipient), At step S2, the user 14 indicates that the message 24 is to be sent to the proposed recipient R (the first recipient).”, [0039], “The proposed recipient (the first recipient) may be specified directly by the user 14, or may be inferred by the processor 18. In the latter case, for example. In an instant messaging environment, then if the user 14 is entering text in a specific window 22 (a first conversation data structure), then the proposed recipient R will be the user 14 who is associated with that respective window 22. At step S2, the user 14 indicates that the message 24 is to be sent to the proposed recipient R.”), wherein:
a second recipient is not identified in the request to transmit the message (Fig 3, S1, “At step S1, Sender enters message M. By default, message will go to recipient R (the first recipient), At step S2, the user 14 indicates that the message 24 is to be sent to the proposed recipient R (the first recipient).”, [0039], “The proposed recipient (the first recipient) may be specified directly by the user 14, or may be inferred by the processor 18.”, Step S6, alternative recipient(s) (a second recipient)); and
the message corresponds to a message data structure (Fig 3, S1, [0039], “if the user 14 is entering text in a specific window 22 (a first conversation data structure), then the proposed recipient R (a first recipient) will be the user 14 who is associated with that respective window 22.”);
determining a first relevance score for the first recipient based on a comparison of the message data structure to the first conversation data structure (Fig 3, [0041], “determine if the proposed recipient R (the first recipient) is the most likely recipient for the message 24. A combination of different techniques can be used to determine which of the potential recipients, in the set S, is the most likely recipient. More detail of this processing is given below with reference to FIG. 5. At step S5, the processor 18 transmits the message 24 to the proposed recipient R if the proposed recipient R is the most likely recipient (a first relevance score)”, [0046-0048], “compute the likelihood Li. it is possible to use HLT (Human Language Technology) to compare the content of the message 24 (the message data structure) with the content of the active window 22 (the first conversation data structure) (optionally including transcript history with that user 14). Other methods include the use of simple word matching… use pattern matching… Data such as the frequency of key-presses can also be used to establish whether a prior window 22 may be more likely (with the gap in writing indicating separate messages).”); and
based at least in part on determining the first relevance score does not exceed a relevance threshold ([0042], “If the proposed recipient R is not the most likely recipient”, Fig 3, S4 (No), Fig 5, S13 (No) [0046-0048], “Once the likelihood Li is worked out for each member of the set S, then at step S12, a variable Lmax is set to the value of the highest Li. At step S13, a test is applied to see if LR=Lmax… If L.R (not equal)L.max, then the process moves to step S15, and the output of the process is "no", indicating that the message 24 should perhaps not be sent to the recipient R (the first recipient)”):
accessing a second conversation data structure comprising messages of a second conversation transmitted via the network to or from the second recipient (Fig 4, “Switch context to the IM chat window with T (a second conversation data structure)” step S9, [0045], “at step S9, the processor 18 controls the instant messaging client being run by the local device 12 to switch the current context to the chat window 22 associated with that recipient T (a second conversation data structure). This will cause the message 24 to be moved from the window 22 (a first conversation data structure) where it was entered by the user 14 to the new window 22 associated with that recipient T (a second conversation data structure). the instant messaging client will be configured to open a new window 22 that shows the message 24, and also, if any previous chat transcripts are available, restores any previous conversation between the user 14 and the recipient T.”) (Fig 5, [0046], “the step S11, whereby a likelihood Li is calculated for each person i within the set S.”, [0047-0049]);
determining a second relevance score for the second recipient based on a comparison of the message data structure to the second conversation data structure (Fig 5, [0046], “the step S11, whereby a likelihood Li is calculated for each person i within the set S.”, [0047-0049], [0052]); and
based at least in part on determining, based on comparing the first relevance score to the second relevance score, that the first relevance score exceeds the second relevance score, allowing transmission via the network of the message to the first recipient (Fig 5, steps S13-S14, [0049], “recipient R (the recipient witch ranked first in the set S) relevance score LR (the first relevance score) which is equal to the maximum value of Li (Lmax) exceeds all other relevance score of the remaining person in the set S (the second relevance score)”), “the proposed recipient R is the most likely recipient of the message 24, and at step S14, the return of this process is the result "yes", indicating that the message 24 is safe to send to the proposed recipient R.”.
12. Regarding claim 2, Brady teaches the invention as claimed in claim 1 above and further teaches wherein: the first conversation data structure further comprises first conversation time data and the second conversation data structure further comprises second conversation time data; the first relevance score is further determined based on a first time gap between the message and a latest entry in the first conversation data structure; and the second relevance score is further determined based on a second time gap between the message and a latest entry in the second conversation data structure ([0030-0032], [0037], “If the focus of the messaging client has recently switched from one window 22 to another window 22, then more weighting could be assigned to the previous window 22, fading with time spent in the current messaging window 22.” [0047], [0048], “Data such as the frequency of key-presses can also be used to establish whether a prior window 22 may be more likely (with the gap in writing indicating separate messages).”, [0048], “pattern and/or word matching with pre-defined list of sensitive words and/or phrases can be used. The time since specific windows 22 were last used, with more recent conversations having a higher priority then older conversations, can be used in determining the likelihood Li.”).
13. Regarding claim 3, Brady teaches the invention as claimed in claim 2 above and further teaches wherein the first relevance score is inversely proportional to the first time gap and the second relevance score is inversely proportional to the second time gap ([0048], “The time since specific windows 22 were last used, with more recent conversations having a higher priority then older conversations, can be used in determining the likelihood L.i. Data such as the frequency of key-presses can also be used to establish whether a prior window 22 may be more likely (with the gap in writing indicating separate messages).”).
14. Regarding claim 4, Brady teaches the invention as claimed in claim 2 above and further teaches wherein: determining the first relevance score further comprises weighting based on a comparison of the first conversation time data and message time data; and/or determining the second relevance score further comprises weighting based on a comparison of the second conversation time data and message time data ([0030-0032], [0037], “If the focus of the messaging client has recently switched from one window 22 to another window 22, then more weighting could be assigned to the previous window 22, fading with time spent in the current messaging window 22.” [0047], [0048], “Data such as the frequency of key-presses can also be used to establish whether a prior window 22 may be more likely (with the gap in writing indicating separate messages).”, [0048], “pattern and/or word matching with pre-defined list of sensitive words and/or phrases can be used. The time since specific windows 22 were last used, with more recent conversations having a higher priority then older conversations, can be used in determining the likelihood Li.”).
15. Regarding claim 5, Brady teaches the invention as claimed in claim 1 above and further teaches wherein allowing transmission via the network of the message to the first recipient is based at least in part on determining that the first relevance score exceeds the second relevance score (Fig 4, S4 and S5, Fig 5, S13 and S14).
16. Regarding claim 8, Brady teaches A method, comprising:
accessing a first conversation data structure comprising messages of a first conversation transmitted via a network to or from a first recipient (Fig 3, S1, [0039], “if the user 14 is entering text in a specific window 22 (a first conversation data structure), then the proposed recipient R (a first recipient) will be the user 14 who is associated with that respective window 22”);
receiving, via input to a user interface, a request to transmit a message via the network to the first recipient (Fig 3, S1, “At step S1, Sender enters message M. By default, message will go to recipient R (the first recipient), At step S2, the user 14 indicates that the message 24 is to be sent to the proposed recipient R (the first recipient).”, [0039], “The proposed recipient (the first recipient) may be specified directly by the user 14, or may be inferred by the processor 18. In the latter case, for example. In an instant messaging environment, then if the user 14 is entering text in a specific window 22 (a first conversation data structure), then the proposed recipient R will be the user 14 who is associated with that respective window 22. At step S2, the user 14 indicates that the message 24 is to be sent to the proposed recipient R.”), wherein:
a second recipient is not identified in the request to transmit the message (Fig 3, S1, “At step S1, Sender enters message M. By default, message will go to recipient R (the first recipient), At step S2, the user 14 indicates that the message 24 is to be sent to the proposed recipient R (the first recipient).”, [0039], “The proposed recipient (the first recipient) may be specified directly by the user 14, or may be inferred by the processor 18.”, Step S6, alternative recipient(s) (a second recipient)); and the message corresponds to a message data structure (Fig 3, S1, [0039], “if the user 14 is entering text in a specific window 22 (a first conversation data structure), then the proposed recipient R (a first recipient) will be the user 14 who is associated with that respective window 22.”);
determining a first relevance score for the first recipient based on a comparison of the message data structure to the first conversation data structure (Fig 3, [0041], “determine if the proposed recipient R (the first recipient) is the most likely recipient for the message 24. A combination of different techniques can be used to determine which of the potential recipients, in the set S, is the most likely recipient. More detail of this processing is given below with reference to FIG. 5. At step S5, the processor 18 transmits the message 24 to the proposed recipient R if the proposed recipient R is the most likely recipient (a first relevance score)”, [0046-0048], “compute the likelihood Li. it is possible to use HLT (Human Language Technology) to compare the content of the message 24 (the message data structure) with the content of the active window 22 (the first conversation data structure) (optionally including transcript history with that user 14). Other methods include the use of simple word matching… use pattern matching… Data such as the frequency of key-presses can also be used to establish whether a prior window 22 may be more likely (with the gap in writing indicating separate messages).”); and
based at least in part on determining the first relevance score does not exceed a relevance threshold ([0042], “If the proposed recipient R is not the most likely recipient”, Fig 3, S4 (No), Fig 5, S13 (No) [0046-0048], “Once the likelihood Li is worked out for each member of the set S, then at step S12, a variable Lmax is set to the value of the highest Li. At step S13, a test is applied to see if LR=Lmax… If L.R (not equal)L.max, then the process moves to step S15, and the output of the process is "no", indicating that the message 24 should perhaps not be sent to the recipient R (the first recipient)”):
accessing a second conversation data structure comprising messages of a second conversation transmitted via the network to or from the second recipient (Fig 4, “Switch context to the IM chat window with T (a second conversation data structure)” step S9, [0045], “at step S9, the processor 18 controls the instant messaging client being run by the local device 12 to switch the current context to the chat window 22 associated with that recipient T (a second conversation data structure). This will cause the message 24 to be moved from the window 22 (a first conversation data structure) where it was entered by the user 14 to the new window 22 associated with that recipient T (a second conversation data structure). the instant messaging client will be configured to open a new window 22 that shows the message 24, and also, if any previous chat transcripts are available, restores any previous conversation between the user 14 and the recipient T.”) (Fig 5, [0046], “the step S11, whereby a likelihood Li is calculated for each person i within the set S.”, [0047-0049]);
determining a second relevance score for the second recipient based on a comparison of the message data structure to the second conversation data structure (Fig 5, [0046], “the step S11, whereby a likelihood Li is calculated for each person i within the set S.”, [0047-0049], [0052]); and
based at least in part on determining, based on comparing the first relevance score to the second relevance score, that the first relevance score does not exceed the second relevance score, preventing transmission via the network of the message to the first recipient (Fig 5, steps S13-S15, [0049], “LR (the first relevance score) of the first recipient is not exceed (No) Lmax (max relevance scores in the set S “the second relevance score”), meaning one of the other person in the set S has his relevance score equal or exceeding Lmax), “the output of the process S13 is "no", indicating that the message 24 should perhaps not be sent to the recipient R (the first recipient)”.
17. Regarding claims 9-11, those claims recite a method performs the method of claims 2-4 respectively and are rejected under the same rationale.
18. Regarding claim 12, Brady teaches the invention as claimed in claim 8 above and further teaches wherein: preventing transmission via the network of the message to the first recipient is based at least in part on determining that the first relevance score does not exceed the second relevance score; and the method further comprises, based at least in part on determining that the first relevance score does not exceed the second relevance score, providing an alert via the user interface indicating that the message may not be intended for the first conversation (Fig 5, steps S13-S15, [0049], “the output of the process S13 is "no", indicating that the message 24 should perhaps not be sent to the recipient R./ and there is supplied an ordered list of the population of the set S, showing the most likely recipient (Li=Lmax) at the top, with the remainder ordered by descending value of Li. ”, “LR (the first relevance score) (not equal (No)) Lmax (second relevance score) maximum value of Li”).
19. Regarding claim 13, Brady teaches the invention as claimed in claim 10 above and further teaches wherein: the preventing transmission via the network of the message to the first recipient is further based on determining the second relevance score does not exceed the relevance threshold; and the method further comprises, based at least in part on the preventing transmission via the network of the message to the first recipient: accessing a third conversation data structure comprising messages of a third conversation transmitted via the network to or from a third recipient; determining a third relevance score for the third recipient based on a comparison of the message data structure to the third conversation data structure; and based at least in part on comparing the first relevance score to the third relevance score, allowing transmission via the network of the message to the third recipient (Fig 5, steps S13-S15, [0049], “the output of the process S13 is "no", indicating that the message 24 should perhaps not be sent to the recipient R, and there is supplied an ordered list of the population of the set S, showing the most likely recipient (Li=Lmax) at the top (third recipient), with the remainder ordered by descending value of Li. ”, “LR (the first relevance score) (not equal (No)) Lmax (second relevance score) maximum value of Li”).
20. Regarding claims 14 and 16-18, those claims recite a system performs the method of claims 1-4 respectively and are rejected under the same rationale.
21. Regarding claim 15, Brady teaches the invention as claimed in claim 14 above and further teaches wherein the control circuitry is further configured to based at least in part on determining the first relevance score does not exceed the second relevance score, prevent transmission via the network of the message to the first recipient (Fig 5, steps S13-S15, [0049], “the output of the process S13 is "no", indicating that the message 24 should perhaps not be sent to the recipient R, and there is supplied an ordered list of the population of the set S, showing the most likely recipient (Li=Lmax) at the top, with the remainder ordered by descending value of Li. ”, “LR (the first relevance score) (not equal (No)) Lmax (second relevance score) maximum value of Li”).
Claim Rejections - 35 USC § 103
22. 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.
23. 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) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
24. Claims 6 and 19 are rejected under 35 U.S.C.103 as being unpatentable over Brady et al (US 20090313343 A1) hereinafter as Brady in view of Fujii et al (US 20130218553 A1)
hereinafter as Fujii.
25. Regarding claim 6, Brady teaches the invention as claimed in claim 1 above and further implicitly teaches wherein the comparison of the message data structure to the first conversation data structure comprises comparing a message type of the message to message types of the messages of the first conversation ([0035], “confine the scope of the context evaluation to the sum text of the current messaging conversations. saved chat transcripts between the same parties as well as emails or documents on the user's computer. Any semantic analysis could be extremely simple: even simple word matching or it could use advanced semantic analysis techniques.”, [0040], [0047], [0048], “External sources such as emails and documents on the user's computer 12 may also be used to establish likelihood levels.”).
However, Fujii teaches wherein the comparison of the message data structure to the first conversation data structure comprises comparing a message type of the message to message types of the messages of the first conversation (Fig 4, [0048], [0052-0053]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to incorporate the concept of teachings suggested in Fujii’s system into Brady’s and by incorporating Fujii into Brady because both systems are related to an information notification supporting device would notify the user of the message at an appropriate time (Fujii, [0006]).
26. Regarding claim 19, this claim recites a system performs the method of claim 6 and is rejected under the same rationale.
27. Claims 7 and 20 are rejected under 35 U.S.C.103 as being unpatentable over Brady et al (US 20090313343 A1) hereinafter as Brady in view of Abou Mahmoud et al (US 20160366088 A1) hereinafter as Abou Mahmoud.
28. Regarding claim 7, Brady teaches the invention as claimed in claim 1 above and further implicitly teaches wherein the comparison of the message data structure to the first conversation data structure comprises comparing a message topic of the message-to-message topics of the messages of the first conversation (Fig 6, [0031], [0033-0035], “the context evaluator”, [0045]).
However, Abou Mahmoud explicitly teaches wherein the comparison of the message data structure to the first conversation data structure comprises comparing a message topic of the message to message topics of the messages of the first conversation ([0005], “The method additionally comprises analyzing the composed message to identify one or more of the following characteristics: a topic, a greeting, a dialect, a conversation pattern and a language pattern.”, [0056], Fig 5, [0064], “generates a score based on the consistency between the characteristics of the analyzed message with the characteristics of the current conversation thread”, Fig 8, [0072]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to incorporate the concept of teachings suggested in Abou Mahmoud’s system into Brady’s and by incorporating Abou Mahmoud into Brady because both systems are related generally to communications would ensuring that a composed message is being sent to the appropriate recipient.
29. Regarding claim 20, this claim recites a system performs the method of claim 7 and is rejected under the same rationale.
Respond to Amendments and Arguments
30. In the remarks received 01/29/2026, the Applicant's attorney respectfully submits that “Applicant's claims recite "determining a first relevance score for the first recipient based on a comparison of the message data structure to the first conversation data structure, “determining a second relevance score for the second recipient based on a comparison of the message data structure to the second conversation data structure," and "based at least in part on determining, based on comparing the first relevance score to the second relevance score, that the first relevance score exceeds the second relevance score, allowing transmission via the network of the message to the first recipient." Applicant's claims thus compare the scores of two different potential recipients to each other to determine which recipient should receive the message.”.
FIG. 5 and the corresponding descriptions at [0049] of Brady. Applicant respectfully disagrees. At Step S13, Brady teaches comparison of the computed likelihood that a message is intended for recipient R (LR) to a predetermined maximum likelihood value (Lmax). If LR is equal to Lmax then, at Step S14, Brady returns "Yes" and the message will be sent to R. If LRisnot equal to Lmax then, at Step S15, Brady returns a list of potential recipients ordered by descending likelihood. Importantly, nothing in Brady teaches or suggests comparing the computed likelihood value of one recipient to the computed likelihood value of a different recipient, as required by Applicant's claims. At best, Brady generates a list of people ordered by likelihood that each respective person is the intended recipient of the message and from which the user may manually select the intended recipient. Thus, Brady fails to anticipate Applicant's independent claims.
31. Applicant's arguments received on 01/29/2026 have been fully considered but they are not persuasive. Referring to the previous Office action, Examiner has cited relevant portions of the references as a means to illustrate the systems as taught by the prior art. As a means of providing further clarification as to what is taught by the references used in the first Office action, Examiner has expanded the teachings for comprehensibility while maintaining the same grounds of rejection of the claims, except as noted above in the section labeled “Status of Claims.” This information is intended to assist in illuminating the teachings of the references while providing evidence that establishes further support for the rejections of the claims.
It is noted that, Brady teaches "determining a first relevance score for the first recipient based on a comparison of the message data structure to the first conversation data structure, “determining a second relevance score for the second recipient based on a comparison of the message data structure to the second conversation data structure," and "based at least in part on determining, based on comparing the first relevance score to the second relevance score, that the first relevance score exceeds the second relevance score, allowing transmission via the network of the message to the first recipient.". Thus, Brady anticipate Applicant's independent claims.
CONCLUSION
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/HICHAM SKHOUN/Primary Examiner, Art Unit 2164