DETAILED ACTION
The current office action is in response to the communication filed on 3/24/25.
The applicant cancelled claims 1-24 and added claims 25-44 in the Preliminary Amendment received on 5/29/25.
Claims 25-44 are pending.
The Examiner recommends filing a written authorization for Internet communication in response to the present action. Doing so permits the USPTO to communicate with Applicant using Internet email to schedule interviews or discuss other aspects of the application. Without a written authorization in place, the USPTO cannot respond to Internet correspondence received from Applicant. The preferred method of providing authorization is by filing form PTO/SB/439, available at: https://www.uspto.gov/patent/forms/forms. See MPEP § 502.03 for other methods of providing written authorization.
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 .
Paper Submitted
It is hereby acknowledged that the following papers have been received and placed of record in the file:
Information Disclosure Statement(s) as received on 5/5/25 are considered by the Examiner.
Specification
The disclosure is objected to because of the following informalities:
Typically abbreviations/acronyms are used after an expansion is provided to the abbreviations/acronyms. However, in the Specification, “MSFT” is used before it is expanded. It is suggested to use expansions before using their abbreviations/acronyms. Appropriate correction is required.
Claim Objections
Claims 25-44 are objected to because of the following informalities:
The limitation “…transmittal of messages…” in claim 25, lines 6-7, should be “…transmittal of the messages…” (emphasis added) in order to resolve the lack of antecedent basis in the limitations. Appropriate correction is required. Similar corrections are required in claim 33, line 7 and claim 39, lines 6-7.
The limitation “…a second section…” in claim 26, line 2, should be “…a second selection…” (emphasis added) in order to resolve the lack of antecedent basis in the limitations. Appropriate correction is required. Similar corrections are required in claim 34, line 2 and claim 40, line 3.
All dependent claims are objected to as having the same deficiencies as the claims they depend from.
Note: For examination purposes, the claims will be interpreted based on the claim language suggested by the Examiner.
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 claims at issue 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 25-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,261,808. Although the claims at issue are not identical, they are not patentably distinct from each other because both the patent and the instant application disclose providing a set of communication protocols used to transmit messages from a first device to a second device, receiving a first selection of a first communication protocol to delay transmittal of messages to the second device based on a status of the second device being unavailable, configuring the first communication protocol as a first priority communication protocol in a profile of the first device and executing, responsive to receiving a message from the first device for transmission to the second device, the first priority communication protocol. Claims of the instant application therefore are not patently distinct from the earlier patent claims and as such are unpatentable over obvious-type double patenting. A later patent/application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim. By this rationale, the claims of the instant application are rejected.
Claim Rejections - 35 USC § 102
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.
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.
Claims 25-26, 30, 33-34 and 39-40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Eidelson et al.” (US PGPUB 2013/0227030) (Hereinafter Eidelson).
With respect to claim 25, Eidelson teaches a system (system 100; Fig. 1, [0019]), comprising:
one or more processors, coupled with memory (at least one processor coupled directly or indirectly to memory elements; [0132]), to:
provide, for display on a graphical user interface (GUI) of a first device, a set of communication protocols used to transmit messages from the first device to a second device (user 125 can provide, via a group messaging application 107, user settings data to instruct the group messaging engine 103 to default to sending messages via a specific fallback messaging service and/or may define the order in which fallback messaging services should be selected by the group messaging application 107 and/or group messaging engine 103; Figs. 1-2, [0069]);
receive, from the first device, a first selection of a first communication protocol of the set of communication protocols (user 125 can provide, via a group messaging application 107, user settings data to instruct the group messaging engine 103 to default to sending messages via a specific fallback messaging service and/or may define the order in which fallback messaging services should be selected by the group messaging application 107 and/or group messaging engine 103; Figs. 1-2, [0069]), the first communication protocol configured to delay transmittal of messages to the second device (instructing the group messaging engine 103 to delay dispatch via a fallback messaging service; Figs. 1-2, [0069]) based on a status of the second device being unavailable (when a recipient’s user device 115 is described by the connection information as not being connected to the connection server 140, the messaging engine 204 may be coupled to the fallback messaging server and advantageously relay the message data to the fallback messaging server for dispatch to a user device 115 of each of the fallback recipients via the fallback data connection; Figs. 1-2, [0063]);
configure, responsive to receiving the first selection, the first communication protocol as a first priority communication protocol in a profile of the first device (user 125 can provide, via a group messaging application 107, user settings data to instruct the group messaging engine 103 to default to sending messages via a specific fallback messaging service and/or may define the order in which fallback messaging services should be selected by the group messaging application 107 and/or group messaging engine 103; Figs. 1-2, [0069]-[0070]); and
execute, responsive to receiving a message from the first device for transmission to the second device, the first priority communication protocol (when a recipient’s user device 115 is described by the connection information as not being connected to the connection server 140, the messaging engine 204 may be coupled to the fallback messaging server and advantageously relay the message data to the fallback messaging server for dispatch to a user device 115 of each of the fallback recipients via the fallback data connection; Figs. 1-2, [0063]).
With respect to claim 26, Eidelson teaches the system of claim 25, wherein the one or more processors are further configured to: receive, from the first device, a second section of a second communication protocol of the set of communication protocols; and configure, responsive to receiving the second selection, the second communication protocol as a second priority communication protocol in the profile of the first device (user 125 can provide, via a group messaging application 107, user settings data to instruct the group messaging engine 103 to default to sending messages via a specific fallback messaging service and/or may define the order in which fallback messaging services should be selected by the group messaging application 107 and/or group messaging engine 103; Figs. 1-2, [0069]-[0070]).
With respect to claim 30, Eidelson teaches the system of claim 26, wherein the second priority communication protocol comprises at least one of: transmitting the messages in an email; delaying transmittal of the messages; or transmitting the messages in a text message (A fallback messaging protocol is a communication protocol used by the fallback messaging server/service for sending and receiving the message data and includes any standard messaging protocols such as SMS, MMS, XMS, WAP, Simple Mail Transfer Protocol (SMTP), Extensible Messaging and Presence Protocol (XMPP), Session Initial Protocol (SIP), Internet Relay Chat (IRC) protocol, HTTP, HTTPS, etc.; Figs. 1-2, [0034], [0069]).
The limitations of claims 33-34 are rejected in the analysis of claims 25-26 respectively and these claims are rejected on that basis.
The limitations of claims 39-40 are rejected in the analysis of claims 25-26 respectively and these claims are rejected on that basis.
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.
Claims 27, 35 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Eidelson in view of “Wheeler, Jr. et al.” (US 8,316,095) (Hereinafter Wheeler).
With respect to claim 27, Eidelson teaches the system of claim 26. Eidelson does not teach wherein the one or more processors are further configured to: receive, responsive to executing the first priority communication protocol, an application programming interface (API) status; and execute, responsive to the API status indicating an endpoint associated with the first priority communication protocol is unresponsive, the second communication protocol.
However, Wheeler teaches wherein the one or more processors are further configured to: receive, responsive to executing the first priority communication protocol, an application programming interface (API) status; and execute, responsive to the API status indicating an endpoint associated with the first priority communication protocol is unresponsive, the second communication protocol (when message delivery fails, the message delivery is handled by selecting the next handling rule and specifying an alternate messaging format. A subscriber generally has a set of handling rules in place that specify alternate means of message delivery, should a communications device or messaging channel be unavailable or unsuccessful; Figs. 2 and 6, col. 5, line 54 – col. 6, line 18, col. 9, lines 13-60).
It would have been obvious to a person with ordinary skill in the art before the effective filing date of the claimed invention to incorporate executing a second protocol when an endpoint is unresponsive to Eidelson because Eidelson discloses delivering messages via fallback connections ([0063]) and Wheeler suggests executing a second protocol when an endpoint is unresponsive (col. 9, lines 13-60).
One of ordinary skill in the art would be motivated to utilize the teachings of Wheeler in the Eidelson system in order to ensure message delivery.
The limitations of claims 35 and 41 are rejected in the analysis of claim 27 above and these claims are rejected on that basis.
Claims 28, 31, 36 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Eidelson in view of “Beadle et al.” (US PGPUB 2006/0210034) (Hereinafter Beadle).
With respect to claim 28, Eidelson teaches the system of claim 26. Eidelson does not teach wherein the one or more processors are further configured to: execute, based on the status of the second device being available, the second priority communication protocol.
However, Beadle teaches wherein the one or more processors are further configured to: execute, based on the status of the second device being available, the second priority communication protocol (monitoring whether a buddy presence changes to indicate the buddy is “available.” If the buddy presence changes, then sending the previously entered message entry; [0084], [0095]).
It would have been obvious to a person with ordinary skill in the art before the effective filing date of the claimed invention to incorporate executing a second protocol based on device status to Eidelson because Eidelson discloses monitoring device connection status ([0063]) and Beadle suggests executing a second protocol based on device status ([0084]).
One of ordinary skill in the art would be motivated to utilize the teachings of Beadle in the Eidelson system in order to ensure message delivery.
With respect to claim 31, Eidelson teaches the system of claim 25. Eidelson does not teach wherein executing the first priority communication protocol comprises storing the message in a message queue.
However, Beadle teaches wherein executing the first priority communication protocol comprises storing the message in a message queue (when a buddy’s presence changes to “unavailable,” automatically storing undelivered message entries in previously entered message storage; [0070], [0077]).
It would have been obvious to a person with ordinary skill in the art before the effective filing date of the claimed invention to incorporate storing undelivered messages to Eidelson because Eidelson discloses storing message data ([0061]) and Beadle suggests storing undelivered messages ([0070]).
One of ordinary skill in the art would be motivated to utilize the teachings of Beadle in the Eidelson system in order to avoid losing undelivered messages.
The limitations of claims 36 and 42 are rejected in the analysis of claim 28 above and these claims are rejected on that basis.
Claims 29, 37 and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Eidelson in view of “Appelman” (US PGPUB 2015/0373515).
With respect to claim 29, Eidelson teaches the system of claim 26. Eidelson does not teach wherein the one or more processors are further configured to: determine, responsive to configuring the first communication protocol as the first priority communication protocol, that no telephone number is set in a profile of the second device; and execute, responsive to determining that no telephone number is set in the profile of the second device, the second priority communication protocol.
However, Appelman teaches wherein the one or more processors are further configured to: determine, responsive to configuring the first communication protocol as the first priority communication protocol, that no telephone number is set in a profile of the second device; and execute, responsive to determining that no telephone number is set in the profile of the second device, the second priority communication protocol (when the identity associated with the screen name is not available to receive an instant message, the instant messaging system determines whether a mobile telephone number is known by the sender to be associated with the identity associated with the screen name. When the instant message system determines that a mobile telephone number is not known by the sender to be associated with the identity associated with the screen name, the instant message system does not send the instant message to the intended recipient; [0071]-[0072]).
It would have been obvious to a person with ordinary skill in the art before the effective filing date of the claimed invention to incorporate determining if a user profile lacks a telephone number to Eidelson because Eidelson discloses determining user/device unavailability ([0063]) and Appelman suggests determining if a user profile lacks a telephone number ([0072]).
One of ordinary skill in the art would be motivated to utilize the teachings of Appelman in the Eidelson system in order to extend the real-time awareness aspect of synchronous messaging.
The limitations of claims 37 and 43 are rejected in the analysis of claim 29 above and these claims are rejected on that basis.
Claims 32, 38 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Eidelson in view of “Cherifi et al.” (US PGPUB 2015/0341290) (Hereinafter Cherifi).
With respect to claim 32, Eidelson teaches the system of claim 25. Eidelson does not teach wherein the one or more processors are further configured to: provide, for display on the GUI of the first device, a prompt indicating the status of the second device; and execute, responsive to receiving a second selection of the prompt from the first device, the first priority communication protocol.
However, Cherifi teaches wherein the one or more processors are further configured to: provide, for display on the GUI of the first device, a prompt indicating the status of the second device; and execute, responsive to receiving a second selection of the prompt from the first device, the first priority communication protocol (receiving a request to deliver a message from a sending device to a receiving device, detecting an activity status of a receiving user associated with the receiving device, presenting at least one delivery option for the message at the sending device to a sending user based on the detection and processing the message based on the at least one delivery option selected by the sending user; [0056]-[0057]).
It would have been obvious to a person with ordinary skill in the art before the effective filing date of the claimed invention to incorporate executing a communication protocol in response to user selection to Eidelson because Eidelson discloses delivering messages via fallback connections ([0063]) and Cherifi suggests executing a communication protocol in response to user selection ([0057]).
One of ordinary skill in the art would be motivated to utilize the teachings of Cherifi in the Eidelson system in order to ensure message delivery.
The limitations of claims 38 and 44 are rejected in the analysis of claim 32 above and these claims are rejected on that basis.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
Cudak et al. US 2018/0054407. Discloses sending/storing messages for an unavailable device.
Knauerhase. US 2007/0299927. Discloses routing messages using presence information.
Ogle et al. US 2002/0087634. Discloses enabling messaging systems to use alternative message delivery mechanisms.
Haynes et al. US 2009/0313336. Discloses transmission of instant messages according to availability.
Fellenstein et al. US 2004/0019695. Discloses enabling instant messaging systems to use alternative message delivery mechanisms.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Johnny B Aguiar whose telephone number is (571)272-3563. The examiner can normally be reached on Monday to Friday 7:30 am - 5:30 pm EST.
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, Joon Hwang can be reached on (571) 272-4036. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHNNY B AGUIAR/
Primary Examiner, Art Unit 2447
June 10, 2026
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