DETAILED CORRESPONDANCE
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of claims
This final office action on merits is in response to the communication received on 05/14/2026. Claims 21-23 are new. Claims 3-5 are cancelled. Amendments to claims 1-2, 6, 8-11, 13, 15-17, 19-20 are acknowledged and have been carefully considered. Claims 1-2, 6-23 are pending and considered below.
Subject Matter Free of Art
Claims 1-2 and 6-23 include subject matter that is free of prior art. The cited prior art of record fails to expressly teach or suggest, either alone or in combination, the features found within independent claim 1. In particular, the cited prior art fails to expressly teach or suggest the specific combination of elements and ordered operations recited in these claims, including determining that a first communication path suitable for transmitting a message including a file is unavailable; identifying a second communication path that is unsuitable for transmitting the file; transmitting the first message without the first file via the second communication path; subsequently determining that the first communication path is available; and transmitting a second message including the file via the first communication path.
For claim 1, the cited prior art of record fails to expressly teach or suggest, either alone or in combination, a messaging workflow in which a message containing a file is intentionally transmitted over an alternate communication path without the file because the alternate path is unsuitable for transmitting the file, followed by subsequent transmission of a second message including the file after the originally preferred communication path becomes available.
The closest prior art of record includes 1) Rybkin (U.S. Patent Publication 2016/0004836 A1), referred to hereinafter as Rybkin, 2) Kim et al. (U.S. Patent No. 9467970 B1), referred to hereinafter as Kim, 3) Underwood et al. (U.S. Patent Publication 2010/0325470A1), referred to hereinafter as Underwood, and 4) Hartman et al. (U.S. Patent 9235547 B1), referred to hereinafter as Hartman.
Rybkin teaches a healthcare messaging system that dynamically routes messages to appropriate healthcare providers using an aggregator, determines recipients without requiring prior knowledge of the recipient, and delivers messages across healthcare communication networks. However, Rybkin fails to teach or suggest determining that an alternate communication path is unsuitable for transmitting a file, transmitting a message without the file via the alternate path, or subsequently transmitting a second message including the file when the originally preferred communication path becomes available.
Kim teaches determining that a preferred messaging provider or communication path is unavailable and selecting a fallback provider or alternate communication path for message delivery. However, Kim fails to teach or suggest evaluating whether the alternate communication path is unsuitable for transmitting an attached file, selectively omitting the file from the transmitted message, or later retransmitting the file after restoration of the preferred communication path.
Underwood teaches acknowledgements, alternate delivery channels, and notifying the originating device regarding message delivery status when a primary delivery channel is unavailable. However, Underwood fails to teach or suggest selectively transmitting a message without an attached file because an alternate communication path is unsuitable for transmitting the file, or subsequently transmitting a second message including the file after the preferred communication path becomes available.
Hartman teaches a server messaging architecture in which messages are received from a message originator, transmitted through a communication sever over a communication network, rerouted to alternative recipients or client interfaces when message delivery is unsuccessful, and delivery confirmation is provided to the message originator. However, Hartman fails to teach or suggest selectively transmitting a message without an attached file because an alternate communication path is unsuitable for transmitting the file, or subsequently transmitting a second message including the file after the preferred communication path becomes available.
Claim Rejections - 35 USC § 112
Claims 1-2, 6, 8-9, 13, 15-16, 19, 20, and 23 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.
Claims 1, 8, and 15 recite determining that a first path, suitable for transmitting the first message with the first file, to a target endpoint address is unavailable, identifying a second path that is unsuitable for transmission of the first file, subsequently determining that the first path is available, and determining that the first path is able to effectuate transmission of the second message together with the second file to the target endpoint address. The filed disclosure describes that, when an optimal path is not available, the manager identifies an alternate path and communicates only a notification of the message, rather than the message payload, over the alternate path because the payload contains clinical information. The specification further discloses that a push receipt may be transmitted to notify the source device that an alternate path was used. While the specification describes selecting an alternate communication path when an optimal path is unavailable, it does not describe evaluating whether individual communication paths are suitable or unsuitable for transmitting message files, determining that a first path is unavailable because it is capable of transmitting a file while a second path is unsuitable for transmitting that file, or later determining that the first path has become available and is capable of transmitting the message together with the file.
Additionally, although the specification discloses routing tables, domain lookup tables, and routing decisions performed by the manager, those disclosures are directed to identifying destinations and routing messages across messaging domains. The specification does not reasonably convey possession of the claimed routing capability determinations that evaluate whether a particular communication path is capable of transmitting an attached file or that distinguish between path availability and path suitability for file transmission. Accordingly, the originally filed disclosure does not reasonably convey possession of the presently claimed subject matter. Therefore, claims 1, 8, and 15 lack adequate written description support under 35 U.S.C. 112a.
Claims 2, 9, and 16 recite that the request receipt element is configured to indicate use of the identified second path by the control server to send the first message, without the first file, to the target endpoint address. While the originally filed specification discloses that a push receipt may notify the source device that an alternate path was used, the specification does not reasonably convey possession of transmitting the first message after selectively omitting only the first file. Rather, the specification teaches that, when an alternate path is used, the actual payload itself is not communicated and a notification of the message, not the message itself, is routed through the alternate path. Accordingly, the originally filed disclosure does not provide written description support for the claimed limitation requiring transmission of the first message, without the first file, via the second path. Therefore, claims 2, 9, and 16 lack adequate written description support under 35 U.S.C. 112a.
Claims 6, 13, and 19 recite that the request receipt element comprises delivery information with respect to the target endpoint address and with respect to the second message. While the filed specification discloses that a push receipt may notify the source device that an alternate path was used, the specification does not reasonably convey possession of a request receipt element comprising delivery information with respect to a second message. Instead, the specification describes the push receipt in connection with the original message transmitted using an alternate path and does not describe generating or providing delivery information for a subsequently transmitted second message. Therefore, claims 6, 13, and 19 lack adequate written description support under 35 U.S.C. 112a.
Claim 20 recites that the request receipt element corresponds to a push receipt configured to identify the second path and that the control server utilized the second path to send the first message, without the first file, to the target endpoint address in connection with responding to the first request to transmit. While the filed specification discloses that a push receipt may notify the source device that an alternate path was used, the specification does not reasonably convey possession of transmitting the first message after selectively omitting only the first file. Instead, the specification teaches that, when an alternate path is used, the actual payload itself is not communicated and a notification of the message, not the message itself, is routed through the alternate path. Accordingly, the originally filed disclosure does not provide written description support for the claimed limitation requiring the first message, without the first file, to be transmitted via the second path. Therefore, claim 20 lacks adequate written description support under 35 U.S.C. 112a.
Claim 23 recites receiving an acknowledgement message from the target endpoint address of receipt of the second message and second file, and transmitting a response element to the source device based on the acknowledgement message. While the filed specification discloses receiving device level acknowledgements and user level acknowledgements indicating receipt of a message and communicating acknowledgements to the source device, the specification does not reasonably convey possession of receiving an acknowledgement corresponding to a second message and second file transmitted after determining that the first communication path is available. Accordingly, the originally filed disclosure does not provide adequate written description support for the claimed acknowledgement of the second message and second file. Therefore, claim 23 lacks adequate written description support under 35 U.S.C. 112a.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2, and 6-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Under step 1, the analysis is based on MPEP 2106.03, and claims 1-2, and 6-7 are drawn to a computer-implemented method, claims 8-14, and 21-23 are drawn to one or more non-transitory media, and claims 15-20 are drawn to a system. Thus, each claim, on its face, is directed to one of the statutory categories (i.e., useful process, machine, manufacture, or composition of matter) of 35 U.S.C. §101.
Step 2A Prong One
Claim 1 recites the limitations of determining that a first path, suitable for transmitting the first message with the first file, to a target endpoint address associated with the target device is unavailable; in response to determining that the first path to the target endpoint address associated with the target device is unavailable identifying a second path to the target endpoint address associated with the target device, the second path being unsuitable for transmission of the first file; determining that the first path, suitable for transmitting the second message with the second file, to the target endpoint address associated with the target device is available, wherein determining that the first path to the target endpoint address associated with the target device is available; (ii) comprises identifying that the first path is able to effectuate, and can be used for, transmitting of the second message along with the second file to the target endpoint address associated with the target device. These limitations, as drafted, are processes that, under their broadest reasonable interpretation, cover performance of the limitations in the mind or by using a pen and paper. Even when considering the “via at least one hardware processor associated with a control server and further associated with a computing environment” language, the claim encompasses a person evaluating communication path availability, identifying an alternative communication path, determining suitability of a communication path for transmitting a file, and determining whether a communication path can be used to transmit a message in their mind or by using a pen and paper. The mere nominal recitation of at least one hardware processor associated with a control server and further associated with a computing environment does not take the claim limitation out of the mental processes grouping. Thus, the claim recites a mental process which is an abstract idea.
Independent claims 8 and 15 recites identical or nearly identical steps with respect to claim 1 (and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and these claims are therefore determined to recite an abstract idea under the same analysis.
Under Step 2A Prong Two
The claimed limitations, as per claim 1, include:
detecting, via at least one hardware processor associated with a control server and further associated with a computing environment, a first request from a source device to transmit a first message including a first file to a destination associated with a target device, wherein the control server and the destination are in separate domains associated with the computing environment the first file comprising one or more of a video, an image, or a stored wave form;
determining that a first path, suitable for transmitting the first message with the first file, to a target endpoint address associated with the target device is unavailable;
in response to determining that the first path to the target endpoint address associated with the target device is unavailable identifying a second path to the target endpoint address associated with the target device, the second path being unsuitable for transmission of the first file;
transmitting the first message, without the first file, via the second path to the target endpoint address associated with the target device; and
pushing, to the source device via one or both of the at least one hardware processor and the control server, a request receipt element configured to notify the source device that the second path was used to transmit the first message to the destination;
detecting, via the at least one hardware processor associated with the control server, a second request from the source device to transmit a second message including a second file to the destination associated with the target device;
determining that the first path, suitable for transmitting the second message with the second file, to the target endpoint address associated with the target device is available,
wherein determining that the first path to the target endpoint address associated with the target device is available:
(i) is performed at an electronic message manager that stores at least partially, and accesses, a message routing table, and
(ii) comprises identifying that the first path is able to effectuate, and can be used for, transmitting of the second message along with the second file to the target endpoint address associated with the target device; and
in response to determining that the first path to the target endpoint address associated with the target device is available: transmitting the second message, with the second file, via the first path to the target endpoint address associated with the target device.
Examiner Note: underlined elements indicate additional elements of the claimed invention identified as performing the steps of the claimed invention.
The judicial exception expressed in claim 1 is not integrated into a practical application. The claim as a whole merely describes how to generally “apply” the concept of determining communication path availability, identifying an alternative communication path, and routing messages based on determination in a computer environment. The claimed computer components (i.e., via at least one hardware processor associated with a control server and further associated with a computing environment, from a source device, via one or both of the at least one hardware processor and the control server, (i) is performed at an electronic message manager that stores at least partially, and accesses, a message routing table) are recited at a high level of generality and are merely invoked as tools to perform an existing process of evaluating communication path availability, selecting a communication path, and transmitting messages based on the routing determinations. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. Accordingly, alone and in combination, these additional elements do not integrate the abstract idea into a practical application.
The judicial exception expressed in claim 1 is not integrated into a practical application. The abstract idea is merely carried out in a technical environment or field (i.e., a computing environment including a control server, source device, target device, and separate communication domains), however fails to contain meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment (see MPEP 2106.05(h)). The additional element that is carried out in a technical environment includes wherein the control server and the destination are in separate domains associated with the computing environment. Accordingly, alone and in combination, this additional element does not integrate the abstract idea into a practical application.
The judicial exception expressed in claim 1 is not integrated into a practical application. The claim recites the additional elements of detecting a first request to transmit a first message including a first file to a destination associated with a target device, the first file comprising one or more of a video, an image, or a stored wave form; transmitting the first message, without the first file, via the second path to the target endpoint address associated with the target device; detecting a second request to transmit a second message including a second file to the destination associated with the target device; and in response to determining that the first path to the target endpoint address associated with the target device is available: transmitting the second message, with the second file, via the first path to the target endpoint address associated with the target device. These limitations are recited at a high level of generality (i.e., as a general means of receiving information, transmitting information, and communicating results), and amounts to merely data gathering, outputting information, and insignificant application, which are forms of insignificant extra-solution activities. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application. The claim is directed to an abstract idea.
Therefore, under step 2A, the claims are directed to the abstract idea, and require further analysis under Step 2B.
Under step 2B
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed with respect to Step 2A, the claim as a whole merely describes how to generally “apply” the concept determining communication path availability, identifying an alternative communication path, and routing messages based on determination in a computer environment. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed with respect to Step 2A, the abstract idea is merely carried out in a technical environment or field, however fails to contain meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea.
For claim 1, under step 2B, the additional elements of detecting a first request to transmit a first message including a first file to a destination associated with a target device, the first file comprising one or more of a video, an image, or a stored wave form; transmitting the first message, without the first file, via the second path to the target endpoint address associated with the target device; detecting a second request to transmit a second message including a second file to the destination associated with the target device; and in response to determining that the first path to the target endpoint address associated with the target device is available: transmitting the second message, with the second file, via the first path to the target endpoint address associated with the target device have been evaluated. The computer-implemented method comprising at least one hardware processor performs a general function of receiving messages and associated files for transmission, which represents a well-understood, routine, and conventional activity in the field of computer networking and electronic messaging. The specification discloses that the processor is used in its ordinary capacity as a generic processor performing conventional functions and does not describe any improvement to the computer itself or to the functioning of the overall computer system (see page 4-5). Also noted in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016), merely collecting information for analysis without a technological improvement does not add significantly more to an abstract idea. The use of the computer-implemented method is no more than collecting information before performing the routing determinations and transmitting the resulting messages and does not integrate the abstract idea into a practical application. Additionally, as noted in In re Brown, 645 Fed. App'x 1014, 1016-1017 (Fed. Cir. 2016), merely providing a notification represents an insignificant application of the underlying mental process, as the notification does not impose any meaningful limitation or add any technological improvement. Therefore, the claim does not recite an inventive concept and is not patent eligible.
Claims 6, 12-13, 19, 21, and 23 recite no further additional elements, and only further narrow the abstract idea. The previously identified additional elements, individually and as a combination, do not integrate the narrowed abstract idea into a practical application for reasons similar to those explained above, and do not amount to significantly more than the narrowed abstract idea for reasons similar to those explained above.
Claim 2, 7, 9-11, 14, 16-18, 20, 22 recite the additional element of by the control server (claims 2, 9, 16, 20, and 22), via the control server (claims 7 and 14), by the source device (claims 10 and 17), via the source device (claims 11 and 18). However, this additional element amounts to implementing an abstract idea on a generic computing device. As such, these additional elements, when considered individually or in combination with the previously identified additional elements, do not integrate the abstract idea into a practical application or amount to significantly more than the abstract idea.
Thus, as the dependent claims remain directed to a judicial exception, and as the additional elements of the claims do not amount to significantly more, the dependent claims are not patent eligible.
Therefore, the claims here fail to contain any additional element(s) or combination of additional elements that can be considered as significantly more and the claims are rejected under 35 U.S.C. 101 for lacking eligible subject matter.
Claim Rejections - 35 USC § 103
The rejection of claims 1-2 and 6-23 under 35 U.S.C. 103 is withdrawn because Applicant’s amendments and arguments have been fully considered and are persuasive.
Response to Arguments
Applicant’s arguments and amendments, see Remarks/Amendments submitted on 05/24/2026 with respect to the rejection of the claims have been carefully considered and is addressed below.
Double Patenting
The nonstatutory obvious type double patenting rejection is withdrawn in view of terminal disclaimer filed on 5/14/2026.
Claim Rejections - 35 USC § 112
Applicant's arguments have been fully considered but are not persuasive. The previously presented written description rejections are superseded by Applicant's claim amendments. The amended claims have been reviewed, and new written description rejections are set forth for claims 1-2, 6, 8-9, 13, 15-16, 19, 20, and 23. Accordingly, the rejection under 35 U.S.C. 112(a) is maintained.
Claim Rejections - 35 USC § 101
Applicant's arguments have been fully considered but are not persuasive. Applicant states that the eligibility of the claims is self evident because the claims recite transmitting messages, transmitting files, and pushing a request receipt element. However, the claims remain directed to the abstract idea of evaluating communication path availability, identifying an alternate communication path, determining the suitability of a communication path for transmitting a file, and routing messages based on those determinations. The transmitting and notification limitations merely implements the results of the abstract idea using generic computer components and therefore do not render the claims patent eligible.
Applicant further states that the claims are not directed to a mental process because they recite hardware processors, communication devices, an electronic message manager, and a message routing table. This argument is not persuasive. The Examiner's rejection identifies the claimed determining and identifying limitations as the recited mental processes, not the transmitting or notification limitations. Under their broadest reasonable interpretation, the claimed determinations regarding communication path availability, selection of an alternate communication path, determination of path suitability, and identification that a communication path can be used for message transmission are evaluations and judgments that can practically be performed in the human mind or with the aid of pen and paper. The recited computer components merely perform these determinations using generic computer technology and do not remove the claims from the mental processes grouping.
Applicant also states that the claims do not recite certain methods of organizing human activity because they recite electronic components rather than humans. However, the Examiner's rejection is based on the recited mental processes, and not on organizing human activity. Accordingly, Applicant's arguments directed to the certain methods of organizing human activity grouping are not persuasive because the rejection is maintained based on the mental processes grouping of abstract ideas.
Finally, Applicant states that the amendments improve electronic communications by reducing network bandwidth, memory usage, and processor resources, and therefore integrate the alleged judicial exception into a practical application. However, the claims do not recite any specific improvement to the functioning of a computer, network, processor, or message routing technology. Instead, the claims recite functional results of determining communication path availability, selecting communication paths, and transmitting messages using generic computing components operating in their ordinary capacities. Accordingly, the claims remain directed to an abstract idea that is not integrated into a practical application and do not recite significantly more than the judicial exception for the reasons set forth in the rejection.
Claim Rejections - 35 USC § 103
The rejection of claims 1-2 and 6-23 under 35 U.S.C. 103 is withdrawn because Applicant’s amendments and arguments have been fully considered and are persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
Hartman et al. (U.S. Patent 9235547 B1) teaches hierarchical messaging system that prioritizes messages, routes them through a hierarchy of target recipients using timers and acknowledgements, and automatically forwards messages to additional recipients when a recipient fails to respond within a predetermined time.
Vesto et al. (U.S. Publication No. 2016/0063191 A1) teaches a healthcare integration platform that uses reusable interface definitions, machine learning analysis of messaging traffic, and graph based connection metadata to predict communication needs and automatically suggest provision data exchange between source and target systems.
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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/K.R.L./Examiner, Art Unit 3685
/KAMBIZ ABDI/Supervisory Patent Examiner, Art Unit 3685
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