`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
` FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONFIRMATIONNO.
`
`12/713,577
`
`02/26/2010
`
`Kalu Onuka Kalu
`
`05200204-177US
`
`4998
`
`NORTON ROSE FULBRIGHT CANADA LLP- BLACKBERRY
`1 Place Ville Marie
`Suite 2500
`Montreal, QC H3B 1R1
`CANADA
`
`AILES, BENJAMIN A
`
`2442
`
`
`
`
`
`10/01/2014
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`portfolioprosecution @blackberry.com
`dockettor @nortonrosefulbright.com
`Joanne.Keshen @ nortonrosefulbright.com
`
`PTOL-90A (Rev. 04/07)
`
`BlackBerry Exhibit 2001, Page 1
`
`BlackBerry Exhibit 2001, Page 1
`
`

`

`
`
`Applicant(s)
`Application No.
` 12/713,577 KALU, KALU ONUKA
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`BENJAMIN AILES Na 2442
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If 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).
`Anyreply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply betimely filed
`
`Status
`1)X] Responsive to communication(s)filed on 9/16/2014.
`LJ A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon__
`2a)X] This action is FINAL.
`2b)L] This action is non-final.
`3)L] Anelection was made bythe applicant in responsetoarestriction requirementset forth during the interview on
`
`
`; the restriction requirement and election have been incorporatedinto this action.
`4)[] Since this application is in condition for allowance exceptfor formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
` Attachment(s)
`
`Disposition of Claims*
`5) Claim(s) 1,2,4-12 and 14-26is/are pending in the application.
`
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)L] Claim(s)____is/are allowed.
`
`7) Claim(s) 1,2,4-12 and 14-26is/are rejected.
`8)L] Claim(s)____is/are objectedto.
`
`9)L] Claim(s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`or send an inquiry to PPHieedback@uspto.qoy.
`
`Application Papers
`10)L] The specification is objected to by the Examiner.
`11)] The drawing(s)filed on 7/25/12 is/are: a)X] accepted or b)[_] objected to by the Examiner.
`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).
`
`Priority under 35 U.S.C. § 119
`12)[] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)L] All
`b)[-] Some** c)L] None ofthe:
`1..] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`““ See the attached detailed Office action for a list of the certified copies not received.
`
`3) CT] Interview Summary (PTO-413)
`1) CT] Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date.
`:
`.
`4 Ol Other:
`2) CT] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`BlackBerry Exhibit 2001, Page 2
`
`art of Paper No./Mail Date 20140922
`
`BlackBerry Exhibit 2001, Page 2
`
`

`

`Application/Control Number: 12/713,577
`Art Unit: 2442
`
`Page 2
`
`1.
`
`The present application is being examined underthe pre-AlA first to invent
`
`DETAILED ACTION
`
`provisions.
`
`Response to Arguments
`
`2.
`
`Applicant's argumentsfiled 16 September 2014 have been fully considered but
`
`they are not persuasive.
`
`Claims 1, 2, 4-12 and 14-25 rejected under 35 USC 103
`
`3.
`
`Regarding claims 1, 2, 4-6, 8-12, and 14-25 rejected under 35 USC 103(a) as
`
`being unpatentable over Moody (US 2008/0294727) “Moody 727”in view of Moody (US
`
`2003/0167310) “Moody 310”, applicant argues that the cited prior art does not teach the
`
`claim element: "display the new incoming electronic message in an inbox together with
`
`any message thread notflagged as silenced, while silencing any further notifications
`
`pertaining to receipt of the new incoming electronic message.” The examiner
`
`respectfully disagrees.
`
`With respect to the claim element: "display the new incoming electronic message
`
`in an inbox together with any message thread not flagged as silenced, while silencing
`
`any further notifications pertaining to receipt of the new incoming electronic message”
`
`the examiner submits that Moody 727 and Moody 310, when taken in combination,
`
`teach within the scope of the claim. Moody 727 teaches, as is knownin the art, an e-
`
`mail inbox used for storing incoming messages that belong to an existing message
`
`thread [0025-6]. Message threads can be marked asflagged for creating/not creating a
`
`BlackBerry Exhibit 2001, Page 3
`
`BlackBerry Exhibit 2001, Page 3
`
`

`

`Application/Control Number: 12/713,577
`Art Unit: 2442
`
`Page 3
`
`message alert for the user ([0031]). It is therefore established that Moody 727clearly
`
`teaches the ability to silence message thread notifications. The ability to “display [a] new
`
`incoming electronic message in an inbox with any message thread notflagged as
`
`silenced" is considered an obvious variation by whatis already knownin the art. It is
`
`submitted that Moody 310 showsan alternative to the storage in an inbox and bulk
`
`folder as taught by Moody ‘727. Moody ‘310 teachesthe step to display the new
`
`incoming electronic message in an inbox together with any messagethread notflagged
`
`as silenced ([0109] incoming messagesofall types of categories (i.e. ones that cause a
`
`usernotification ([0110, 0113], audio/visual cue) including urgent and approvals are
`
`displayed alongside common mail including memos and newsletters are interleaved into
`
`a single main mail inbox).
`
`It is therefore submitted that Moody 727 and Moody 310 teach within the scope
`
`of the argued claim element.
`
`Claim Rejections - 35 USC § 103
`
`4.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousnessrejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of thistitle, 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.
`
`5.
`
`Claims 1, 2, 4-6, 8-12, 14-16, and 18-26 rejected under pre-AlA 35 U.S.C. 103(a)
`
`as being unpatentable over Moody ‘727 (US 2008/0294727) in view of Moody ‘310 (US
`
`2003/0167310).
`
`BlackBerry Exhibit 2001, Page 4
`
`BlackBerry Exhibit 2001, Page 4
`
`

`

`Application/Control Number: 12/713,577
`Art Unit: 2442
`
`Page 4
`
`6.
`
`Regarding claim 1, Moody teaches a communication system configured to
`
`silence notifications for incoming electronic messages, the system comprising a data
`
`processor, media readable by the data processor and a communications subsystem:
`
`the communication subsystem adapted for receiving the incoming electronic
`
`messages(Fig. 3, B1; p. 2, para. 0025, a new email message is received at the email
`
`message system); and
`
`the non-transitory media readable by the data processor comprising coded
`
`program instructions adapted to cause the processor to:
`
`determine that a new incoming electronic message is associated with a message
`
`thread (Fig. 3, B2; p. 2, para. 0026, determine that an incoming message belongs to an
`
`existing message thread);
`
`determine that the message thread has been flagged as silenced (Fig. 3, B4,
`
`NeverNotify; p. 2, para. 0031);
`
`override a currently-enabled notification setting to prevent a receipt notification
`
`pertaining to new incoming electronic messages associated with the message thread
`
`from being activated (Fig. 3, Never Notify or conditional notification; p. 2, para. 0028,
`
`notification is overridden if a certain condition does not exist; p. 2, para. 0031, if value =
`
`“never notify," then user is not notified).
`
`Moody ‘727 does not teach display the new incoming electronic message in an
`
`inbox together with any message thread notflagged as silenced.
`
`Moody ‘310 teachesthe step to display the new incoming electronic message in
`
`an inbox together with any message thread notflagged as silenced ([0109] incoming
`
`BlackBerry Exhibit 2001, Page 5
`
`BlackBerry Exhibit 2001, Page 5
`
`

`

`Application/Control Number: 12/713,577
`Art Unit: 2442
`
`Page 5
`
`messagesofall types of categories (i.e. ones that cause a usernotification ([0110,
`
`0113], audio/visual cue) including urgent and approvals are displayed alongside
`
`common mail including memos and newsletters are interleaved into a single main mail
`
`inbox).
`
`One of ordinary skill in the art at the time of the applicant’s invention would have
`
`found it obvious to combine the notification process for message threads taught by
`
`Moody '727 with the single in-box view taught by Moody '310 in order to make the less
`
`urgent materials accessible via the main inbox window (Moody ‘310, [0109)).
`
`Moody ‘727 and Moody ‘310 teach silencing any further notifications pertaining to
`
`receipt of the new incoming electronic message (Moody ‘727, [0031] threads marked as
`
`“never notify” that receive a new message do not cause the userto be notified.).
`
`7.
`
`Regarding claim 2, Moody ‘727 and Moody ‘310 teach the system of claim 1,
`
`wherein the new incoming electronic message is part of a group discussion (Moody
`
`‘727, p. 1, para. 0003; a message thread is defined as a group of emails all related to a
`
`single topic).
`
`8.
`
`Regarding claim 4, Moody ‘727 and Moody ‘310 teach the system of claim 1,
`
`wherein the inbox is one of a group inbox and an email inbox (Moody ‘727, Fig 1, in-box
`
`view 50; p. 2, para. 0026, electronic messages presented to user in their in-box view).
`
`9.
`
`Regarding claim 5, Moody ‘727 and Moody ‘310 teach the system of claim 2,
`
`wherein a receipt notification for a new incoming electronic messageis prevented only
`
`for a user who hasflagged the messagethread as silenced (Moody ‘727,p. 2, para.
`
`BlackBerry Exhibit 2001, Page 6
`
`BlackBerry Exhibit 2001, Page 6
`
`

`

`Application/Control Number: 12/713,577
`Art Unit: 2442
`
`Page 6
`
`0021, user has selected the “unsubscribe” option, Figure 2; Fig. 3, Never Notify; p. 2,
`
`para. 0031, if value = “never notify," then useris not notified).
`
`10.
`
`Regarding claim 6, Moody ‘727 and Moody ‘310 teach the system of claim 1,
`
`further comprising at least one display for displaying the incoming electronic messages
`
`(Moody ‘727, Fig 1, in-box view 50; p. 2, para. 0026, electronic messages presented to
`
`user in their in-box view).
`
`11.
`
`Regarding claim 8, Moody ‘727 and Moody ‘310 teach the system of claim 1,
`
`further adapted to allow the message thread to be unflagged (Moody ‘727, p. 3, para.
`
`0036, re-subscribe to a message thread).
`
`12.
`
`Regarding claim 9, Moody ‘727 and Moody ‘310 teach the system of claim 1,
`
`wherein the system comprises a wireless device (Moody ‘727, p. 3, para. 0041-0042,
`
`hand-held devices, wireless infrastructure).
`
`13.|Regarding claim 10, Moody ‘727 and Moody ‘310 teach the system ofclaim 1,
`
`wherein the notifications include one or more of an auditory alert, a visual alert, and a
`
`physical alert (Moody ‘727, p. 2, para. 0020, notify with message: “You have a new
`
`message”).
`
`14.
`
`Regarding claim 20, Moody ‘727 and Moody ‘310 teach the system of claim 8,
`
`further adapted to, after determining that the message thread has been unflagged,
`
`retain the new incoming message associated with the inbox while allowing notifications
`
`pertaining to receipt of any subsequent new incoming message for the message thread,
`
`and associate any subsequent new incoming message with the inbox (Moody ‘727, p. 3,
`
`para. 0036, re-subscribe).
`
`BlackBerry Exhibit 2001, Page 7
`
`BlackBerry Exhibit 2001, Page 7
`
`

`

`Application/Control Number: 12/713,577
`Art Unit: 2442
`
`Page 7
`
`15.
`
`Regarding claim 22, Moody ‘727 and Moody ‘310 teach the system ofclaim 1,
`
`wherein the new incoming message is displayed in a default view of the inbox (Moody
`
`‘310, [0109] user inbox 900).
`
`16.
`
`Regarding claim 23, Moody ‘727 and Moody ‘310 teach the system of claim 1,
`
`wherein the coded program instructions further cause the processor to store the new
`
`incoming message in the inbox (Moody ‘310, [0109] user inbox 900).
`
`17.
`
`Process claims 11, 12, 14-16, 18, 19, 21, 24, and 25 correspond to system
`
`claims 1, 2, 4-6, 8, 10, 20, 22, and 23, respectively, and are therefore rejected underthe
`
`same rationale.
`
`18.
`
`19.
`
`Claim 26 correspondsto claim 1 and is rejected under similar rationale.
`
`Claims 7 and 17 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Moody ‘727 and Moody ‘310 in view of Brischke (US 2004/0133810 A1).
`
`20.
`
`Regarding claims 7 and 17, Moody ‘727 and Moody ‘310 teach the system of
`
`claim 6.
`
`Moody ‘727 and Moody ‘310 do not teach wherein, if the message thread has
`
`been flagged as silenced, electronic messages in the message thread appear
`
`diminished in appearance.
`
`Brischke teaches wherein, if the message thread has beenflagged as silenced,
`
`electronic messagesin the message thread appear diminished in appearance ([0033]
`
`when a message thread is no longer considered "open"it is still displayed but appears
`
`gray in appearance(i.e. the thread is closed)).
`
`BlackBerry Exhibit 2001, Page 8
`
`BlackBerry Exhibit 2001, Page 8
`
`

`

`Application/Control Number: 12/713,577
`Art Unit: 2442
`
`Page 8
`
`21.
`
`‘It would have been obvious to one of ordinary skill in the art at the time of the
`
`applicant’s invention to display a message thread as gray as taught by Brischkein
`
`combination with the determination of lesser importance as determined by a user's
`
`selection as taught by Moody ‘727 and Moody ‘310 wherein Brischke taught the need to
`
`indicate to a uservisually the status of an electronic message thread (Brischke, p. 3,
`
`para. 0033).
`
`BlackBerry Exhibit 2001, Page 9
`
`BlackBerry Exhibit 2001, Page 9
`
`

`

`Application/Control Number: 12/713,577
`Art Unit: 2442
`
`Page 9
`
`Conclusion
`
`THIS ACTION IS MADE FINAL. 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 eventafirst replyis 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-MONTHshortenedstatutory period, then the
`
`shortenedstatutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuantto 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 ofthis final action.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Benjamin Ailes whose telephone number is (571)272-
`
`3899. The examiner can normally be reached Monday-Friday, IFP Hoteling schedule.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner's
`
`supervisor, Glen Burgess can be reached on 571-272-3949. The fax phone numberfor
`
`the organization wherethis application or proceeding is assigned is 571-273-8300.
`
`BlackBerry Exhibit 2001, Page 10
`
`BlackBerry Exhibit 2001, Page 10
`
`

`

`Application/Control Number: 12/713,577
`Art Unit: 2442
`
`Page 10
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on accessto the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automatedinformation
`
`system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/B.A.A./
`Examiner, Art Unit 2442
`
`/GLENTON B BURGESS/
`Supervisory Patent Examiner, Art Unit 2442
`
`BlackBerry Exhibit 2001, Page 11
`
`BlackBerry Exhibit 2001, Page 11
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
`
`12/713,577
`RESEARCH IN MOTION LIMITED
`February 26, 2010
`SYSTEM AND METHOD FOR SILENCING NOTIFICATIONS FOR A MESSAGE
`
`Confirmation No. 4998
`
`2442
`
`Ailes, Benjamin A
`05200204-177US
`
`Appl. No.:
`Applicant(s)
`Filed:
`Title:
`
`THREAD
`
`TC/Art Unit:
`
`Examiner:
`Docket no.:
`
`Customer No.:
`
`92077
`
`Via EFS-web
`
`Commissioner for Patents
`
`United States Patent and Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`U.S.A.
`
`RESPONSE TO OFFICE ACTION
`
`This communication is believed fully responsive to the final office action dated October 1, 2014 in regard to the
`above-referenced patent application. A Request for Continued Examination is being filed concurrently with this
`response. Please consider the following:
`
`e Amendments to the Claims are reflected in the listing of claims which begin on page 2 of this paper.
`
`e
`
`Remarks/Arguments begin on page 6 of this paper.
`
`BlackBerry Exhibit 2001, Page 12
`
`BlackBerry Exhibit 2001, Page 12
`
`

`

`Appl. No. : 12/713,577
`Reply to Office Action of October 1, 2014
`
`Attorney DocketNo. : 05200204-177US
`
`Amendments to the Claims:
`
`Thefollowinglisting of claims replacesall priorlistings of claims in the application.
`
`Listing of claims:
`
`1. (Currently amended) A communication system configured to silence notifications for incoming electronic
`
`messages, the system comprising a data processor, non-transitory media readable by the data processor and a
`
`communications subsystem:
`
`the communication subsystem adapted for receiving the incoming electronic messages; and
`
`the non-transitory media readable by the data processor comprising coded program instructions adapted
`
`to cause the processorto:
`
`receive a selected message thread for silencing:
`
`in response to receiving the selected message thread, activate a flag stored in the non-transitory
`
`media in association with the selected message thread, wherein the flag indicates that_the
`
`selected message thread has been silenced;
`
`determine that a new incoming electronic message is associated with the selected [[a]] message
`
`thread;
`
`determine that the selected message thread has been flagged as silenced_using the flag stored
`
`in the non-transitory media;
`
`override a currently-enabled notification setting to prevent a receipt notification pertaining to new
`
`incoming electronic messages associated with the selected message thread from being
`
`activated; and
`
`display the new incoming electronic message in an inbox together with any message thread not
`
`flagged as silenced, while silencing any further notifications pertaining to receipt of the new
`
`incoming electronic message, wherein the new incoming message thread flagged as silenced is
`
`displayed in the inbox in a different manner than any message thread not flagged as silenced.
`
`2. (Previously presented) The system of claim 1, wherein the new incoming electronic message is part of a
`
`group discussion.
`
`3. (Cancelled)
`
`4. (Previously presented) The system of claim 1, wherein the inbox is one of a group inbox or an email inbox.
`
`Page 2o0f18
`
`BlackBerry Exhibit 2001, Page 13
`
`BlackBerry Exhibit 2001, Page 13
`
`

`

`Appl. No. : 12/713,577
`Reply to Office Action of October 1, 2014
`
`Attorney DocketNo. : 05200204-177US
`
`5. (Previously presented) The system of claim 2, wherein a receipt notification for a new incoming electronic
`
`message is prevented only for a user who has flagged the message thread assilenced.
`
`6. (Previously presented) The system of claim 1, further comprising at least one display for displaying the
`
`incoming electronic messages.
`
`7. (Previously presented) The system of claim 6, wherein, if the message thread has been flagged as silenced,
`
`electronic messages in the message thread appear diminished in appearance.
`
`8. (Currently amended) The system of claim 1, further adapted to allow the message thread to be unflagged by
`
`deactivating the flag.
`
`9. (Previously presented) The system of claim 1, wherein the system comprises a wireless device.
`
`10. (Previously presented) The system of claim 1, wherein the notifications include one or more of an auditory
`
`alert, a visual alert or a physical alert.
`
`11.
`
`(Currently amended) A method for silencing notifications
`
`for
`
`incoming electronic messages to a
`
`communication system, the communication system comprising a data processor, media readable by the data
`
`processor and a communications subsystem, the communications subsystem adapted to receive the incoming
`
`electronic messages, the method comprising:
`
`receiving one or more selected message threadsfor silencing:
`
`in response to receiving the one or more selected message threads, activating one or more flags, each
`
`flag in association with a selected message thread of the one or more selected message threads,
`
`wherein the one or more flags indicate that the associated one or more selected message threads have
`—_—_———
`been silenced:
`
`receiving a new incoming electronic message;
`
`identifying the new incoming message as associated with the selected one or more message threads;
`
`determining that a message thread associated with the new incoming message has been flagged as
`
`silenced_using the one or more flags;
`
`overriding at least one currently-enabled notification setting to prevent a notification pertaining to receipt
`
`of the new incoming message from being activated; and
`
`Page 30f18
`
`BlackBerry Exhibit 2001, Page 14
`
`BlackBerry Exhibit 2001, Page 14
`
`

`

`Appl. No. : 12/713,577
`Reply to Office Action of October 1, 2014
`
`Attorney DocketNo. : 05200204-177US
`
`displaying the new incoming electronic message in an inbox together with any message thread not
`
`flagged as silenced, while silencing any further notifications pertaining to receipt of the new incoming
`
`electronic message;
`
`wherein the new incoming message thread flagged as silenced is displayed in the inbox in a different
`
`manner than any message thread notflagged as silenced.
`
`12. (Previously presented) The method of claim 11, wherein the new incoming electronic message is part of a
`
`group discussion.
`
`13. (Cancelled)
`
`14. (Currently amended) The method of claim 11, wherein the inbox is one of a group inbox [[and]]or an email
`inbox.
`
`15. (Previously presented) The method of claim 12, wherein a receipt notification for a new incoming electronic
`
`message is prevented only for a user who has flagged the message thread assilenced.
`
`16. (Previously presented) The method of claim 11, further comprising displaying the incoming electronic
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`messages.
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`17. (Previously presented) The method of claim 16, wherein,
`
`if the message thread has been flagged as
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`silenced, electronic messagesin the message thread appear diminished in appearance.
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`18. (Currently amended) The method of claim 11, further adapted to allow the message thread to be unflagged
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`by deactivating the flag.
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`19. (Previously presented) The method of claim 11, wherein the notifications include one or more of an auditory
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`alert, a visual alert or a physical alert.
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`20. (Previously presented) The system of claim 8, further adapted to, after determining that the message thread
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`has been unflagged, retain the new incoming message associated with the inbox while allowing notifications
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`pertaining to receipt of any subsequent new incoming message for the message thread, and associate any
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`subsequent new incoming message with the inbox.
`
`21. (Previously presented) The method of claim 18, further comprising, after determining that the message
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`thread has been unflagged, retaining the new incoming message associated with the inbox while allowing
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`notifications pertaining to receipt of any subsequent new incoming message for the message thread, and
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`associating any subsequent new incoming message with the inbox.
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`Page 4of18
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`BlackBerry Exhibit 2001, Page 15
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`BlackBerry Exhibit 2001, Page 15
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`

`

`Appl. No. : 12/713,577
`Reply to Office Action of October 1, 2014
`
`Attorney DocketNo. : 05200204-177US
`
`22. (Previously presented) The system of claim 1, wherein the new incoming message is displayed in a default
`view of the inbox.
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`23. (Previously presented) The system of claim 1, wherein the coded program instructions further cause the
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`processorto store the new incoming message in the inbox.
`
`24. (Previously presented) The method of claim 11, wherein the new incoming message is displayed in a default
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`view of the inbox.
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`25. (Previously presented) The method of claim 11, further comprising storing the new incoming message in the
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`inbox.
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`26. (Currently amended) A non-transitory computer readable medium comprising processing instructions which
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`when executed by a data processor cause the data processorto perform a method for silencing notifications for
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`incoming electronic messages to a communication system, the method comprising:
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`receiving one or more selected message threadsfor silencing:
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`in response to receiving the one or more selected message threads, activating one or more flags, each
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`flag in association with a selected message thread of the one or more selected message threads,
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`wherein the one or more flags indicate that the associated one or more selected message threads have
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`been silenced;
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`receiving a new incoming electronic message;
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`identifying the new incoming message as associated with the selected one or more message threads;
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`determining that a message thread associated with the new incoming message has been flagged as
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`silenced_using the one or more flags;
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`overriding at least one currently-enabled notification setting to prevent a notification pertaining to receipt
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`of the new incoming message from being activated; and
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`displaying the new incoming electronic message in an inbox together with any message thread not
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`flagged as silenced, while silencing any further notifications pertaining to receipt of the new incoming
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`electronic message;
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`wherein the new incoming message thread flagged as silenced is displayed in the inbox in a different
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`manner than any message thread not flagged as silenced.
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`Page Sof18
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`BlackBerry Exhibit 2001, Page 16
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`BlackBerry Exhibit 2001, Page 16
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`

`

`Appl. No. : 12/713,577
`Reply to Office Action of October 1, 2014
`
`Attorney DocketNo. : 05200204-177US
`
`REMARKS/ARGUMENTS
`
`In accordancewith the foregoing, claims 1, 8, 11, 18 and 26 have been amended. No new matter is being
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`presented. Therefore claims 1-2, 4-12, 14-26 are pending in the application and reconsideration is respectfully
`
`requested.
`
`Claim Amendments
`
`Without prejudice and to further examination, claims 1, 11 and 26 have been amendedforclarification.
`
`Claim 1 has been amendedto clarify that to silence notifications for incoming electronic messages, the
`system comprises coded program instructions adapted to cause the processorto:
`
`receive a selected message thread for silencing:
`
`in response to receiving the selected message thread, activate a flag stored in the non-transitory
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`media in association with the selected message thread, wherein the flag indicates that_the
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`selected message thread has been silenced; and
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`determine that the selected message thread has been flagged as silenced using the flag stored
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`in the non-transitory media;
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`The coded program instructions are further adapted to cause the processor to:
`
`display the new incoming electronic message in an inbox together with any message thread not
`
`flagged as silenced, while silencing any further notifications pertaining to receipt of the new
`
`incoming electronic message, wherein the new incoming message thread flagged as silenced is
`
`displayed in the inbox in a different manner than any message thread not flagged as silenced.
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`Claims 11 and 26 have been similarly amended.
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`Without prejudice and to further examination, claims 8 and 18 have been to clarify that the message
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`thread is unflagged by deactivating the flag.
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`Support for the amendments may be found throughout the specification, at least at paragraphs [0062]-
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`[0066], [0073], [0082], [0083], and [0085].
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`Applicant notes that the amendments and arguments presented in this response are made having regard
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`to a totality of circumstances surrounding the application at the time of submission, including circumstances that
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`are external to prosecution of the application. Applicant expressly reserves the right in subsequent prosecution
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`to disclaim any or all amendments and/or arguments presented herein,
`
`in the interest of recapturing any
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`surrendered claim scope upon entry of the disclaimer. The Examiner is also remindedthat it may be necessary,
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`andis hereby requested, to revisit and reconsider all art cited in previous prosecution, in the event that present
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`Page 6of18
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`BlackBerry Exhibit 2001, Page 17
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`BlackBerry Exhibit 2001, Page 17
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`

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`Appl. No. : 12/713,577
`Reply to Office Action of October 1, 2014
`
`Attorney DocketNo. : 05200204-177US
`
`amendments to the claims should re-open or occasion reconsideration of any question of the applicability of
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`suchart in the context of this application.
`
`35 U.S.C. 103
`
`Claims 1, 2, 4-6, 8-12, 14-16, and 18-26 stand rejected under pre-AIA 35 U.S.C. 103(a) as being
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`unpatentable over US 2008/0294727 (hereinafter “Moody '727”)
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`in view of US 2003/0167310 (hereinafter
`
`“Moody '310”).
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`Claims 7 and 17 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Moody '727 and
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`Moody '310 in view of US 2004/0133810 (hereinafter “Brischke”).
`
`The ExaminerFails to Make a Prima Facie Showing of Obviousness under35 U.S.C. 103(a)
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`Applicant disagrees with the rejections under pre-AlA 35 U.S.C. §103(a) and submits that the Examiner
`
`has failed to make a prima facie showing of obviousnessfor at least the following reasons:
`
`(i) elements of the claims are not disclosed or suggested in the cited references;
`
`(ii) the proposed combination would render the prior art invention being modified unsatisfactory forits
`
`intended purpose andprinciple of operation;
`
`(iii) those skilled in the relevant arts could not have predicted that combination of elements of the cited
`
`references could have provided functionality enabled by the claimed embodiments to result in any solution(s) to
`
`problems faced by the Applicant; and
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`(iv) the references teach away from the elements of the claims.
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`Legal requirementsfor a finding of obviousness
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`In order to reject a claim based on a combination of references, as explained at MPEP 2143 (citing the
`
`Supreme Court in KSR v. Teleflex), “Office personnel must resolve the Graham factual inquiries”. Then, Office
`
`personnel mustarticulate the following:
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`(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art
`
`reference, with the only difference between the claimed invention and the prior art being the lack of actual
`
`combination of the elements in a single prior art reference;
`
`(2) a finding that one of ordina