UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`16/178,331
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`11/01/2018
`
`Valerie Kucharewski
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`19487.33.1.1.1.1
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`5172
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`Keller Jolley Preece/Facebook
`1010 North 500 East
`Suite 210
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`North Salt Lake, UT 84054
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`HUQ'FARZANAB
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`2455
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`09/06/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`docketing @kjpip.com
`gjolley@kjpip.com
`ljohnson@kjpip.com
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`PTOL-90A (Rev. 04/07)
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`

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`0,7709 A0170” Summary
`
`Application No.
`16/178,331
`Examiner
`FARZANA B HUQ
`
`Applicant(s)
`Kucharewski et al.
`Art Unit
`AIA (FITF) Status
`2455
`No
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 05/28/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`1,3—13 and 15—20 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s) _ is/are allowed.
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`Claim(s) 1,3—13 and 15—20 is/are rejected.
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`Claim(s) 2 and 14 is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10):] The specification is objected to by the Examiner.
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`11):] The drawing(s) filed on
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`is/are: a)C] accepted or b)Ej objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12)C] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)C] All
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`b)C] Some**
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`c)C] None of the:
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`1C] Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
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`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190902
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`

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`Application/Control Number: 16/178,331
`Art Unit: 2455
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`Page 2
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`DETAILED ACTION
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`Notice ofPre-AIA 0r AIA Status
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`The present application is being examined under the pre—AIA first to invent provisions.
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`1.
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`This office correspondence is in response to the application filed on May 28, 2019.
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`Examiner withdraws Double Patenting rejection as Terminal Disclaimers were filed and
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`approved. Examiner further withdraws 35 USC 101 rejection.
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`Claims 1, 3—13, and 15—20 are pending.
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`Response to Arguments
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`2.
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`Applicant’s arguments with respect to claims 1, 3—13, and 15—20 have been considered
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`but are moot because in new grounds of rejection.
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`Examiner respectfully agrees that the combined teachings of Roskind and Bates discloses
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`the newly amended claimed limitation of where the people list is accessible to different
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`applications. Roskind discloses list of participant identities from a session (1M) can be
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`maintained or customized beyond the just IM session. The created group list can be accessible by
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`different devices and by other services (applications). Examiner further provides Creswell prior
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`art to discloses the newly claimed limitation.
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`Furthermore, the allowable subject matter mentioned in the prior office action dated
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`02/26/2019, remains objected to and will be allowable if incorporating all the limitations
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`including, the plurality of users comprises maintaining the people in a central repository, into its
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`respective independent claims.
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`Furthermore, as it is Applicant's right to continue to claim as broadly as possible their
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`invention, it is also the Examiner's right to continue to interpret the claim language as broadly as
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`possible. It is the Examiner's position that the detailed functionality that allows for Applicant's
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`

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`Application/Control Number: 16/178,331
`Art Unit: 2455
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`Page 3
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`invention to overcome the prior art used in the rejection, fails to differentiate in detail how these
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`features are unique. By the rejection above, the applicant must submit amendments to the claims
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`in order to distinguish over the prior art use in the rejection that discloses different features of
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`Applicant's claimed invention.
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`It is the Examiner's position that Applicant has not yet submitted claims drawn to
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`limitations, which define the Applicant's disclosed invention in manner which distinguishes over
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`the prior art. Failure for Applicant to significantly narrow definition/scope of the claims and
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`supply arguments commensurate in scope with the claims implies the Applicant intends broad
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`interpretation be given to the claims. The Examiner has interpreted the claims with scope parallel
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`to the Applicant in the response and reiterates the need for the Applicant to more clearly and
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`distinctly define the claimed invention.
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`Claim Rejections - 35 US C § 103
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre—AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`The following is a quotation of pre—AIA 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102, 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.
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`3.
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`Claims 1, 3—13, and 15—20 are rejected under pre—AIA 35 U.S.C. 103(a) as being
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`unpatentable over James A Roskind (US Publication 2003/0065721) hereafter Roskind, in view
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`

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`Application/Control Number: 16/178,331
`Art Unit: 2455
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`Page 4
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`of Bates et al. (US Patent 6,247,043) hereafter Bates, in further view of Creswell et al. (US
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`Publication 2004/0024892) hereafter Creswell.
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`4.
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`As per claim 1, Roskind disclose a computer—implemented method comprising:
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`maintaining a people list referencing a plurality of users where each user of the plurality of users
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`is associated with a plurality of user identifier types, wherein the people list is accessible to a
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`plurality of different applications; enabling, by at least one processor, a first application to access
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`the people list to share a first type of electronic message corresponding to the first application to
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`a plurality of client devices associated with the plurality of users, wherein the first type of
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`electronic message uses a first type of user identifier from the plurality of user identifier types
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`(paragraphs 0039—40, 0045, 0075—78, 0120—121); and enabling a second application to access the
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`people list to share a second type of electronic message corresponding to the second application
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`to the plurality of client devices associated with the plurality of users, wherein the second type of
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`electronic message uses a second type of user identifier from the plurality of user identifier types
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`(paragraphs 0041—42, 0059). Although Roskind discloses accessing the people list, in the same
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`field of endeavor Bates further expressly discloses the claimed limitation of maintaining a people
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`list referencing a plurality of users where each user of the plurality of users is associated with a
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`plurality of user identifier types (4:12—34, 8:15—22, 9:5—30, 19:48-57).
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`Accordingly, it would have been obvious to one of ordinary skill in the art at the time of
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`invention was made to have incorporated teaching of Roskind with Bates. One would be
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`motivated to maintain a current contact list and update recipients in to the contact list as
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`necessary into the messaging group list and make use of that updated contact list for future
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`communication with different applications.
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`

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`Application/Control Number: 16/178,331
`Art Unit: 2455
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`Page 5
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`Creswell further expressly discloses the claimed limitation of wherein the people list is
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`accessible to a plurality of different applications comprising a first application and a second
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`application (paragraphs 0021, 0024—25, 0028, 0036).
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`Accordingly, it would have been obvious to one of ordinary skill in the art at the time of
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`invention was made to have incorporated teaching of Bates—Roskind with Creswell. One would
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`be motivated to access and communicate with the members within the same group or contact list
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`from different applications, thus enhancing the continuous accessibility of communication
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`without recreation of the group list.
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`5.
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`As per claim 3, Roskind disclose the computer—implemented method wherein: the central
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`repository is available to the plurality of different applications via electronic communication; and
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`the plurality of different applications comprises a plurality of different application types where
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`each of the different applications use a corresponding user identifier type from the plurality of
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`user identifier types (paragraphs 0039—40, 0045, 0075—78, 0120—121).
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`6.
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`As per claim 4, Roskind disclose the computer—implemented method wherein maintaining
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`the people list in the central repository comprises maintaining a filtered version of a single list of
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`contacts (paragraphs 0039—40, 0075—78, 0120—121).
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`7.
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`As per claim 5, Roskind disclose the computer—implemented method wherein maintaining
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`the people list in the central repository comprises maintaining the people list in an address book
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`(paragraphs 0039—40, 0059, 0075—78).
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`8.
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`As per claim 6, Roskind disclose the computer—implemented method wherein the first
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`application comprises an email application, an instant messaging application, a digital image
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`sharing application, a contact information sharing application, or an application for sending alerts
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`and reminders (paragraphs 0039—40, 0059, 0075—79, 0091).
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`

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`Application/Control Number: 16/178,331
`Art Unit: 2455
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`Page 6
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`9.
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`As per claim 7, Roskind disclose the computer—implemented method wherein the first
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`application differs from the second application (paragraphs 0075—79, 0091).
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`10.
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`As per claim 8, Roskind disclose the computer—implemented method wherein the first
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`application comprises an e—mail filtering application, an application for applying parental
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`controls to an account, or an electronic journaling application (paragraphs 0009—10, 0045, 0075—
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`79).
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`11.
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`As per claim 9, Roskind disclose the computer—implemented method wherein the first
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`type of user identifier is an email identifier and the second type of user identifier is an instant
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`message identifier (paragraphs 0039—40, 0045, 0059, 0075—79).
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`12.
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`As per claim 10, Roskind disclose the computer—implemented method wherein the people
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`list specifies an access control list for the first type of electronic message (paragraphs 0039—40,
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`0059, 0075—78).
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`13.
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`As per claim 11, Roskind disclose the computer—implemented method wherein enabling
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`the first application to access the people list to share the first type of electronic message to the
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`plurality of client devices associated with the plurality of users comprises enabling a digital
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`image sharing program to access the people list to share a digital image (paragraphs 0039—40,
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`0045, 0075—78).
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`14.
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`As per claim 12, Roskind disclose the computer—implemented method wherein enabling
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`the first application to access the people list to share the first type of electronic message to the
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`plurality of client devices associated with the plurality of users comprises enabling an electronic
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`journaling application to access the people list to share a portion of an electronic journal
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`(paragraphs 0039—40, 0075—79, 0091, 0120—121).
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`

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`Application/Control Number: 16/ 178,331
`Art Unit: 2455
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`Page 7
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`15.
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`Claim 13 is an Independent claim with similar limitation but different in preamble and
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`hence are rejected based on the rejection provided in claim 1.
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`16.
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`Claims 15—17 are listed all the same elements of claims 3—5 respectively. Therefore, the
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`supporting rationales of the rejection to claims 3—5 apply equally as well to claims 15 — 17,
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`respectively.
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`17.
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`Claim 18 is an Independent claim with similar limitation but different in preamble and
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`hence are rejected based on the rejection provided in claim 1.
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`18.
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`Claim 19 is listed all the same elements of claims 6 and 7. Therefore, the supporting
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`rationales of the rejection to claims 6 and 7 apply equally as well to claims 19.
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`19.
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`Claim 20 is listed all the same elements of claim 11. Therefore, the supporting rationales
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`of the rejection to claim 11 apply equally as well to claims 20.
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`Allowable Subject Matter
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`20.
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`Claims 2, and 14 are objected to as being dependent upon a rejected base claim, but
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`would be allowable if the subject matter of claim 2 is incorporated into independent claim 1, and
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`the subject matter of claim 14 is incorporated into independent claim 13, including all of the
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`limitations of the base claim and any intervening claims. The same subject matter of 2 or 14
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`should be presented in the independent claim 18 respectively.
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`Conclusion
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`21.
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
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`Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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`

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`Application/Control Number: 16/178,331
`Art Unit: 2455
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`Page 8
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action. In the event a first reply is filed within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE—MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the date of this
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`final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to FARZANA B HUQ whose telephone number is (571)270—3223.
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`The examiner can normally be reached on Monday — Friday: 8:30—5:30 ET.
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`Examiner interviews are available via telephone, in—person, and video conferencing using
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`a USPTO supplied web—based collaboration tool. To schedule an interview, applicant is
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`encouraged to use the USPTO Automated Interview Request (AIR) at
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`http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Emmanuel L Moise can be reached on 571—272—3865. The fax phone number for the
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`organization where this application or proceeding is assigned is 571—273—8300.
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
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`Application/Control Number: 16/178,331
`Art Unit: 2455
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`Page 9
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`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
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`
`/FARZANA B HUQ/
`Primary Examiner, Art Unit 2455
`
`