Application No. 16/178,331
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`Attorney Docket Number 19487.33.1.1.1.1
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`Responsive to Office Action mailed February 26, 2019
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`REMARKS
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`The Ofiice Action considered and rejected claims 1-20. Applicant hereby amends
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`independent claims 1, l3, and 18 and various dependent claims. Applicant respectfully requests
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`reconsideration of claims l-20 in view of the foregoing amendments and the following remarks.
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`Interview Summary
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`Applicant and Applicant’s Attorney thank the Examiner for the phone interview granted
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`on April 25, 2019. During the interview, the Examiner and the Applicant’s undersigned attorney
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`discussed proposed amendments to the claims. The Examiner indicated that the proposed
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`amendments appeared to overcome the rejections of record pending an updated search and further
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`consideration.
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`Double Patenting Rejections
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`The Ofiice Action rejected claims 1-20 under the judicially created doctrine of obviousness-
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`type double patenting as being unpatentable over claims
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`l-20 of US. Patent No.
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`9,667,585. Applicant respectfully disagrees with this double patenting rejection. Nonetheless, in
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`an effort to advance this case to allowance, Applicant submits herewith a Terminal Disclaimer
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`over US. Patent No. 9,667,585. Accordingly, the obviousness-type double patenting rejections
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`over US. Patent No. 9,667,585 are now moot.
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`The Ofiice Action rejected claims 1-20 under the judicially created doctrine of obviousness-
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`type double patenting as being unpatentable over claims
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`l-20 of US. Patent No.
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`9,774,560. Applicant respectfully disagrees with this double patenting rejection. Nonetheless, in
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`an effort to advance this case to allowance, Applicant submits herewith a Terminal Disclaimer
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`Application No. 16/178,331
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`Attorney Docket Number 19487.33.1.1.1.1
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`Responsive to Office Action mailed February 26, 2019
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`over US. Patent No. 9,774,560. Accordingly, the obviousness-type double patenting rejections
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`over US. Patent No. 9,774,560 are now moot.
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`The Ofice Action rejected claims 1-20 under the judicially created doctrine of obviousness-
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`type double patenting as being unpatentable over claims
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`l-20 of US. Patent No.
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`8,224,916. Applicant respectfully disagrees with this double patenting rejection. Nonetheless, in
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`an effort to advance this case to allowance, Applicant submits herewith a Terminal Disclaimer
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`over US. Patent No. 8,224,916. Accordingly, the obviousness-type double patenting rejections
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`over US. Patent No. 8,224,916 are now moot.
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`The Ofice Action rejected claims 1-20 under the judicially created doctrine of obviousness-
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`type double patenting as being unpatentable over claims
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`l-26 of US. Patent No.
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`7,908,327. Applicant respectfully disagrees with this double patenting rejection. Nonetheless, in
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`an effort to advance this case to allowance, Applicant submits herewith a Terminal Disclaimer
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`over US. Patent No. 7,908,327. Accordingly, the obviousness-type double patenting rejections
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`over US. Patent No. 7,908,327 are now moot.
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`Objections to the Claim
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`The Ofice Action rejected claims 2 and 14 as being dependent upon a rejected base claim,
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`but would be allowable if rewritten in independent form including all of the limitations of the base
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`claim and any intervening claims. As discussed in the interview,
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`the currently amended
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`independent claims incorporate a portion of the subject matter of dependent claim 2 to overcome
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`the current rejections. Accordingly, and as the Examiner appeared to agree in the interview
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`pending additional consideration, independent claims are allowable in view of the cited prior art.
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`Application No. 16/178,331
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`Attorney Docket Number 19487.33.1.1.1.1
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`Responsive to Office Action mailed February 26, 2019
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`Rejections Under 35 U.S.C. § 101
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`The Ofiice Action rejected claims 1-20 under 35 U.S.C. § 101 as being directed to the
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`abstract idea of a mental process similar to the claims directed to “collecting, analyzing, and
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`displaying known information” in Electric Power Group. Applicant respectfully traverses this
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`rejection and requests reconsideration of the rejection in light of the above amendments and The
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`2019 Revised Patent Subject Matter Eligibility Guidance issued on January 7, 2019 (hereinafter
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`Revised Eligibility Guidelines).
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`As the Supreme Court has noted, "at some level, all inventions embody, use, reflect, rest
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`upon, or apply" abstract ideas or other judicial exceptions. Alice Corp. Pty. v. CLS Bank Int'l, 134
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`S. Ct. 2347, 189 L. Ed. 2d 296 (2014). Further, the Revised Eligibility Guidelines clarify that a
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`claim is not directed to a judicial exception merely because it recites the judicial exception.
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`Revised Eligibility Guidelines at 16-17.
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`Instead, a claim that “integrates the recited judicial
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`exception into a practical application” is not directed toward the judicial exception.
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`Id. at 18.
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`Further, a claim is not directed to a judicial exception if it “imposes a meaningful limit on the
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`judicial exception, such that the claim is more than a drafting effort to monopolize the judicial
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`exception.” Id.
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`Accordingly, the currently amended independent claims are directed to patent-eligible
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`subject matter because they “integrate the recited judicial exception into a practical application.”
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`For example, currently amended independent claims 1, 13, and 18 recite “a people list referencing
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`a plurality of users” that are each “associated with a plurality of user identifier types” and where
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`the people list “is accessible to a plurality of different applications.’ The currently amended
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`independent claims also recite “enabling” a first application and a second application “to access
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`the people list to share” a first type of electronic message and second type of electronic message,
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`Application No. 16/178,331
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`Attorney Docket Number 19487.33.1.1.1.1
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`Responsive to Office Action mailed February 26, 2019
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`respectively. These claim limitations clearly indicated that the currently amended claims are
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`directed to the specific improvement to communication technology, and that the claims do not
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`broadly attempt to monopolize the alleged abstract idea of analyzing and displaying data.
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`35 U.S.C. §103 Rejections
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`The Ofice Action rejects claims 1, 3-13, and 15-20 under 35 U.S.C. § 103(a) as being
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`unpatentable over US. Patent Publication No. 2003/0065721 to Roskind (hereinafter Roskind) in
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`view of US. Patent No. 6,247,043 to Bates et a1. (hereinafter Bales).
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`Roskind, whether considered singly or in combination with the other cited prior art, fails to
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`describe, teach, or otherwise suggest each limitation recited by independent claims 1, l3, and 18.
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`For example, Roskind, whether considered singly or in combination with the other cited prior art,
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`fails to describe, teach, or otherwise suggest “maintaining a people list referencing a plurality of
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`users where each user of the plurality of users is associated with a plurality of user identifier types,
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`wherein the people list is accessible to a plurality of different applications comprising a first
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`application and a second application,” as recited by currently amended independent claim 1, and
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`as similarly recited by currently amended independent claims 13 and 18.
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`Roskind relates to a “buddy list” for use with 1M communications. Roskind,
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`[0075].
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`Bates relates to a global contact list for a communications system that can add contacts from a
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`global list to a local contact list. Bates, 7: 16-40. However, neither Roskind nor Bales disclose a
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`“people list” that “is accessible to a plurality of different applications.” Though Bales (at 1:66-
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`2:4) teaches that a global contact list can be accessible by multiple m, this is not the same as
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`maintaining a “people list” that “is accessible to a plurality of different applications.”
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`Application No. 16/178,331
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`Attorney Docket Number 19487.33.1.1.1.1
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`Responsive to Office Action mailed February 26, 2019
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`Further, Roskind, whether considered singly or in combination with the other cited prior
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`art, fails to describe, teach, or otherwise suggest “enabling the first application to access the people
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`list to share a first type of electronic message” and “enabling the second application to access the
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`people list to share a second type of electronic message” as recited by currently amended
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`independent claim 1, and as similarly recited by currently amended independent claims 13 and 18.
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`Thus, currently amended independent claims 1, l3, and 18 are allowable over Roskind in
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`view of the other cited prior art for at least these reasons. Claims 3-12, 15-17, 19, and 20 depend
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`from amended independent claims 1, l3, and 18, and incorporate the limitations recited therein.
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`Accordingly, dependent claims 3-12, 15-17, 19, and 20 are allowable over Roskind, whether
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`considered singly or in combination with the other cited prior art, and the 35 U. S.C. § 103 rejection
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`of dependent claims 3-12, 15-17, 19, and 20 is moot.
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`In view of the foregoing, Applicant respectfully submits that the other rejections to the
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`claims are now moot and do not, therefore, need to be addressed individually at this time. It will
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`be appreciated, however, that this should not be construed as Applicant acquiescing to any of the
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`purported teachings or assertions made in the Ofice Action regarding the cited art or the pending
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`application, including any official notice. Instead, Applicant reserves the right to challenge any of
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`the purported teachings or assertions made in the Ofice Action at any appropriate time in the
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`future, should the need arise. Furthermore, to the extent that the Examiner has relied on any
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`Official Notice, explicitly or implicitly, Applicant specifically requests that the Examiner provide
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`references supporting the teachings officially noticed, as well as the required motivation or
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`suggestion to combine the relied upon notice with the other art of record.
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`The Commissioner is hereby authorized to charge payment of any of the following fees
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`that may be applicable to this communication, or credit any overpayment, to Deposit Account No.
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`Application No. 16/178,331
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`Attorney Docket Number 19487.33.1.1.1.1
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`Responsive to Office Action mailed February 26, 2019
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`50-6066: (1) any filing fees required under 37 CFR § 1.16, (2) any patent application and
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`reexamination processing fees under 37 CFR § 1.17, and/or (3) any post issuance fees under 37
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`CFR § 1.20.
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`In addition, if any additional extension of time is required, which has not otherwise
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`been requested, please consider this a petition, therefore, and charge any additional fees that may
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`be required to Deposit Account No. 50-6066.
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`In the event that the Examiner finds remaining impediment to a prompt allowance of this
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`application that may be clarified through a telephone interview, the Examiner is requested to
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`contact the undersigned attorney.
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`Dated May 28, 2019.
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`Respectfully submitted,
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`/Mallorie L. S. McMurray/
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`MALLORIE L. S. MCMURRAY
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`Registration No. 77,364
`KELLY R PREECE
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`Registration No. 55,550
`KELLER JOLLEY PREECE
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`Attorney for Applicant
`Customer No. 107193
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`Phone: (801) 203-3 546
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`Page 14 of 14
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