DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
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 (i.e., changing from AIA to pre-AIA ) 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.
Reissue Applications
The instant application is a non-broadening reissue of U.S. Patent No. 9,264,483 to Hammond, granted on 16 February 2016.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 9,264,483 (hereinafter the ‘483 patent) is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
In response to the previous office action, Applicant has amended claims 29, 30, 35, 39-41, 44-46, 48, 49, 51-53, 56-59, 61, 62, 65, and 69-72 and cancelled claim 55. Claims 29-54 and 56-72 have been examined.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b). In addition, for reissue applications filed before September 16, 2012, when any substantive amendment is filed in the reissue application, which amendment otherwise places the reissue application in condition for allowance, a supplemental oath/declaration will be required. See MPEP § 1414.01.
Claim Rejections - 35 USC § 112
The previous rejections under 35 U.S.C. 112, first paragraph, are withdrawn.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 29-54 and 56-72 are rejected under 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed had possession of the claimed invention.
Claims 29, 40, 58, and 71 each recite a “first communication link comprising an asynchronous connection to an Internet and a data connection.” Although the ‘483 patent discloses data connections that are asynchronous (see column 4, line 63 to column 5, line 18), it does not show two connections in a first communication link.
Claims 30-39, 41-54, 56, 57, 59-70, and 72 are dependent upon rejected claims and likewise fail to comply with the written description requirement.
Since no cited art discloses a “first communication link comprising an asynchronous connection to an Internet and a data connection” in the context of the claimed inventions, no grounds of rejection under 35 U.S.C. 102 or 103 or being stated in this office action; however, see “Allowable Subject Matter,” below.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 41 is rejected under pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The additional limitations of claim 41 are already recited in base claim 40.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 251
Claims 29-54 and 56-72 are rejected under 35 U.S.C. 251 for containing new matter, for essentially the same reasons as described in the rejection under 35 U.S.C. 112, first paragraph, above.
Claims 29-39, 58, and 60-72 are rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period.
A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
Claim 29 encompasses inventions that are broader in scope than that of claim 1 of the ‘483 patent, as it does not recite, for example:
“wherein the request for processing service comprises one or more queries for information from a user.”
Claim 29 is broader in scope than claim 10 of the ‘483 patent, as it does not recite, for example:
“at least one of the one or more application servers adapted to execute an application to establish a communication session with at least one communication device coupled to the data connection in response to a request from the at least one communication device to establish the communication session;” moreover, the limitation “wherein the at least one application server is operable to receive over a second communication link an application from a repository having access to one or more applications maintained in a database coupled to the at least one repository” in claim 29 is only presented as an alternative.
Claim 29 encompasses inventions that are broader in scope than that of claim 22 of the ‘483 patent in that it is not directed to a method.
Claims 30-39 are dependent upon claim 29 and incorporate all of its limitations, but do not narrow their respective scopes to the extent that they are not also improperly broadening over the claims of the ‘483 patent and are likewise rejected.
Claim 58 encompasses inventions that are broader in scope than those of claims 1 and 10 of the ‘483 patent in that it is not directed to a system.
Claim 58 encompasses inventions that are broader in scope than that of claim 22 of the ‘483 patent, as it does not recite, for example:
“the request for processing service comprising one or more queries for information from a user.”
Claims 60-70 are dependent upon claim 58 and incorporate all of its limitations, but do not narrow their respective scopes to the extent that they are not also improperly broadening over the claims of the ‘483 patent and are likewise rejected.
Claim 71 encompasses inventions that are broader in scope than that of claim 1 of the ‘483 patent, as it does not recite, for example:
“the at least one communication device comprising a thin-client software program that provides processing services to an application substantially executed at a location remote from the at least one communication device.”
Claim 71 is broader in scope than claim 10 of the ‘483 patent, as it does not recite, for example:
“wherein the requester for processing service comprises one or more queries from a user.”
Claim 71 encompasses inventions that are broader in scope than that of claim 22 of the ‘483 patent in that it is not directed to a method.
Claims 72 is dependent upon claim 71 and incorporates all of its limitations, but does not narrow its scope to the extent that it is not also improperly broadening over the claims of the ‘483 patent, and is likewise rejected.
Allowable Subject Matter
Claim 48 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112 (pre-AIA ), 1st paragraph, and 35 U.S.C. 251 set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: No art has been found that renders obvious “a database maintains a record of the communication session, wherein the record comprises user-specific information including one or more spoken responses by a user to the one or more queries, wherein the one or more spoken responses are packetized by the at least one communication device and communicated as packet-based data communications, and wherein the database is configured to receive the one or more spoken responses.
The closest prior art, Dodrill, shows logging capabilities (see column 2, lines 56-57 and column 11, lines 47-53) and the recording and packetizing of spoken communications (see column 12, lines 5-30), but these are not the logging (into a database) of spoken responses to one or more user queries.
Response to Arguments
Applicant's arguments filed 28 July 2026 are moot in view of the new grounds of rejection. Regarding Applicant’s arguments with respect to PTAB and CAFC proceedings for the ‘816 patent, it is noted that the issues regarding the claims in question and the art being applied are not being applied in the same manner as those in this proceeding.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 event a first reply is 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-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 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 of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HENEGHAN whose telephone number is (571)272-3834. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached on (571)270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW E HENEGHAN/Primary Examiner, Art Unit 3992
Conferees:
/Ovidio Escalante/
Primary Examiner, Art Unit 3992
/M.F/Supervisory Patent Examiner, Art Unit 3992
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