DETAILED ACTION
This Office Action is in response to Applicants Application filed on March 10, 2025. Claims 1-22 have been canceled. Applicants newly add claims 23-31. Newly added claims 23-31 are pending and presented for examination.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification
The disclosure is objected to because of the following informalities: the status of the related applications in paragraph 0001 needs to be updated.
Appropriate correction is required.
Double Patenting
The nonstatutory 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 timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory 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); 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 23-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S Pat. No. 9,479,909; claims 1-25 of U.S. Patent No. 9,781,580; claims 1-24 of U.S. Pat. No. 9,961,520; claims 1-10 of U.S. Patent No. 10,362,457; claims 1-10 of U.S. Patent No. 10,779,134; claims 1-10 of U.S. Patent No. 11,350,250; claims 1-9 of U.S. Patent No. 11,671,798; claims 1-9 of U.S Patent No. 11,963,073 and claims 1-9 of U.S. Pub. No. 12,273,794. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 23-31 of the present application encompasses the subject matter already claimed in allowed of U.S Pat. No. 9,479,909; U.S. Patent No. 9,781,580; U.S. Pat. No. 9,961,520; U.S. Patent No. 10,362,457; U.S. Pat. No. 10,779,134; U.S. Pat. No. 11,350,250; U.S. Patent No. 11,671,798, U.S. Pat. No. 11,963,073 and U.S. Pat. No. 12,273,794.
Claim Rejections - 35 USC § 103
5. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
6. Claims 23-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robertson in view of Muntermann et al (hereinafter, “Muntermann”, U.S. Pub. No. 2008/0294735) and in further view of Ruff et al (U.S. Pub. No. 2014/0195626).
As per claim 23, Robertson discloses a system capable of receiving a message from a sending device executing a messaging application and capable of sending a message notification alert to a recipient, comprising:
a message server comprising a processor and memory that stores computer executable code instructing the processor to perform steps (paragraphs 0033, 0041 and 0043) comprising:
receiving the message from the sending device executing the messaging application, the message containing recipient address information provided by the sending device (paragraphs 0032, 0033 and 0037);
Although the system disclosed by Robertson shows substantial features of claimed invention, it does not explicitly disclose with substantial evidence:
determining, based on recipient contact information, whether the recipient is associated with a recipient device having the messaging application;
if the recipient is associated with a recipient device having the messaging application, then transmitting the message to be received via the messaging application; and
if the recipient is not associated with a recipient device having the messaging application, storing the recipient contact information in a database, then transmitting the message notification alert to the recipient via an alternate communications method other than via messaging application, the message notification alert comprising a link to a secure browsing session to view the message, wherein the link is to a web based interface supplied by the message server allowing the sending device and recipient to participate in a real-time conversation and wherein the conversation comprises a plurality of communications from the sending device or from the recipient.
Muntermann discloses a messaging service comprising:
determining, based on recipient contact information, whether the recipient is associated with a recipient device having the messaging application (paragraphs 0055 and 0060-0063, Muntermann discloses sending a message over a different communication channel if the recipient does not have the same messaging application as the sender);
if the recipient is associated with a recipient device having the messaging application, then transmitting the message to be received via the messaging application (paragraphs 0055 and 0060-0063); and
if the recipient is not associated with a recipient device having the messaging application, storing the recipient contact information in a database, then transmitting the message notification alert to the recipient via an alternate communications method other than via messaging application, the message notification alert comprising a link to a secure browsing session to view the message, wherein the link is to a web based interface supplied by the message server allowing the sending device and recipient to participate in a real-time conversation and wherein the conversation comprises a plurality of communications from the sending device or from the recipient (paragraphs 0055, 0060-0065 and 0085, Muntermann discloses sending a notification link to the recipient to view the content on the device over another communication channel in which real-time conversation can be performed).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Robertson by incorporating or implementing a messaging service that provides application agnostic and cross-platform messaging which allows a message server to send messages over different types of communications in a timely and efficient manner.
Although Robert in view of Muntermann discloses the invention substantially as claims discussed above. However, Robert in view of Muntermann do not explicitly disclose:
associating the recipient contact information with and making the recipient contact information visible to a user associated with the sending device.
Ruff discloses systems and methods for access-controlled interactions comprising:
associating the recipient contact information with and making the recipient contact information visible to a user associated with the sending device (paragraph 0031).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Robertson in view of Muntermann by incorporating or implementing making personal contact information or data to be visible to the sender for the purpose of allowing communications between a sender and recipient in a timely and efficient manner.
As per claim 24, Robertson further discloses:
receiving an authentication requirement, and restricting access by the recipient to the message until the authentication requirement is met by the recipient (paragraph 0047).
As per claim 25, Robertson discloses:
wherein the web-based interface further comprises an invitation to recipient to download the messaging application (paragraphs 0057-0060).
As per claim 26, Robertson discloses:
wherein the message notification alert further comprises a field of information relating to the message (paragraphs 0057-0060).
As per claim 27, Robertson discloses:
wherein the field comprises information relating to ephemeral limitations on reading the message (paragraphs 0057-0060).
As per claim 28, Robertson discloses:
wherein the field comprises one or more of a sender indicator and a recipient indicator (paragraphs 0032, 0033 and 0037).
As per claim 29, Robertson discloses:
wherein the sending device may send a second message in the conversation and wherein the second message notification alert, relating to the second message is sent via the alternate communication method (paragraphs 0057-0060).
As per claim 30, Robertson discloses:
wherein the alternate communications method is an SMS messaging method (paragraph 0035).
As per claim 31, Robertson discloses:
wherein the alternate communications method is an email messaging method (paragraph 0035).
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LASHONDA T JACOBS-BURTON whose telephone number is (571)272-4004. The examiner can normally be reached M-F 8:30 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ario Etienne can be reached on 571-272-4001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LASHONDA JACOBS-BURTON/Primary Examiner, Art Unit 2457
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June 9, 2026
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