Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Notice for all Patent Application as subject to AIA
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
RESPONSE TO REQUEST FOR CONTINUED EXAMINATION (RCE)
Amended claims 1-3, 5-13, and 15-22 are pending and remain for further examination.
The new grounds of rejection
Applicant’s amendments and arguments with respect to claims 1-3, 5-13, and 15-22 and request for continued examination (RCE) filed on August 27, 2025 have been fully considered but they are not deemed to be moot in view of the new grounds of rejections.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 5-13, and 15-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recited the limitations “aggregating a first contact list associated with the first network and one or more network-specific contact lists associated with corresponding low-level messaging networks maintaining a user profile database including credentials for respective low-level messaging networks,” which is unclear about source and location of the user database; therefore, the claim 1 is being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 11 is also rejected for the same reasons set forth to rejecting claim 1 above, since claim 11 is merely method of operations for the apparatus defined in the claim 1, and claim 11 does not teach or define any new limitations than above rejected claim 1.
Claims 2-3, 5, 7, and 10 recite the limitation "the second network” and claims 3 and 9 recite the limitation “ the second contact list”. There is insufficient antecedent basis for these limitations in the claims.
Claims 12-13, 15, 17, and 19-20, they are also rejected for the same reasons set forth to rejecting claims 2-3, 5, 7, and 9-10 above, since claims 12-13, 15, 17, and 19-20 are merely method of operations for the apparatus defined in the claims 2-3, 5, 7, and 9-10, and claims 12-13, 15, 17, and 19-20 do not teach or define any new limitations than above rejected claims 2-3, 5, 7, and 9-10.
Other dependent claims, which are not specifically cited above are also rejected because of the deficiencies of their respective parent claims.
NON-STATUTORY DOUBLE PATENTING
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper time wise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentable distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321 (b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
OBVIOUSNESS-TYPE DOUBLE PATENTING (ANTICIPATION EXISTS)
Claims 1 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of US Patent No. 9,584,453 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 7 of US Patent No. 9,584,453 B2 contain every limitation of claims 1 and 11 of the instant application and thus anticipate the claims of the instant application. This is a nonstatutory double patenting rejection because the patentably indistinct claims have been patented.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Claims 1 and 11 are generic to the species of invention covered by claims 1 and 7 of US Patent No. 9,584,453 B2. Thus, the generic invention is "anticipated" by the species of the patented invention. Cf., Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (holding that an earlier species disclosure in the prior art defeats any generic claim). This court's predecessor has held that, without a terminal disclaimer, the species claims preclude issuance of the generic application. Inre Van Ornum, 686 F.2d 937, 944, 214 USPQ 761,767 (CCPA 1982).
Accordingly, absent a terminal disclaimer, claims 1 and 11 ware properly rejected under the doctrine of obviousness-type double patenting.” (In re Goodman (CA FC) 29 USPQ2d 2010 (12/3/1993).
The subject matter claimed in the instant application is fully disclosed and covered in the claims 1 and 7 of US Patent No. 9,584,453 B2 since the US Patent No. 9,584,453 B2 and the instant application are claiming common subject matter, as follows:
The claimed invention in the instant application (claims 1 and 11) is same as the claimed invention in the US Patent No. 9,584,453 B2 (claims 1 and 7) by rearranging the claimed limitations such as adding the claimed limitations --the first network is a high level network--” which is not changing the scope of the invention; replacing the claimed limitations “network contact database” to –user profile database-- and “create an aggregated contact list” to –obtain an aggregated contact list--, which are not essential claimed limitation for the invention; also adding the claimed limitations –user profile database including credentials…using the credentials to updating the aggregated contact list--, which is not changing the scope of the invention, but adding the limitations to improve security; and creating new detailed independent claims 1 and 11. No new invention or new improvement is being claimed in the instant application.
Basically, applicant changes/replaces/adds the claimed limitations of the claims of the US Patent No. 9,584,453 B2; and creating new claims 1-20. No new invention or new improvement is being claimed in the instant application. Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application, which matured into the US Patent No. 9,584,453 B2.
Response to Arguments
Applicant’s amendments and arguments with respect to the claims 1-20 filed on August 27, 2025 have been fully considered but they are deemed to be moot in a new ground(s) of rejection is made in view of new references.
Additional References
The examiner as of general interest cites the following references.
a. Malik, U.S. Patent No. 8,605,867 B2.
b. Malik et al, U.S. Patent No. 8,370,756 B2.
c. Guruswamy, U.S. Patent No. 7,809,826 B1.
Content Information
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/BHARAT BAROT/Primary Examiner, Art Unit 2453September 15, 2025