DETAILED ACTION
Response to Amendment
The amendment filed on 08/05/2026 has been entered and considered by Examiner. Claims 1-15, 18-22 are presented for examination. This Action is made FINAL.
Information Disclosure Statement
The information disclosure statements (IDS) submitted are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Examiner.
Double Patenting
The nonstatutory 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 timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably 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 conflicting 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.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 19, and 20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 11, and 17 of U.S. Patent No. 12438980, claims 1, 17, and 20 of U.S. Patent Application No. 18113002, claims 1, 14, and 20 of U.S. Patent Application No. 18112966, claims 1, 10, and 16 of U.S. Patent Application No. 18112970, and claims 1, 11, and 17 of U.S. Patent Application No. 18112956. Although the conflicting claims are similar, they are not patentably distinct from each other because the claim scope are identical as listed as following.
Patent 12438980
Application 18113002
Claims 1, 11, and 17:
a method, comprising: receiving, at an intermediate service device, a message from a user device, the message informative of a second device to participate in a call with a user of the user device and a reason for the request call; and conveying, from the intermediate service device, the user device, the user, and the reason for the request call to the second device, wherein the second device initiates the request call to the user device and is aware of the user and the reason for the request call prior to initiating the request call, and wherein the second device provides an attestation that an organization associated with the second device is verified as being the organization they claim to be. (and similar limitations)
Claims 1, 17, and 20,
a method, comprising: determining, by a user device, a second device to participate in a call with a user of the user device and a reason for the request call; transmitting, from the user device, a message to an intermediate service to inform the intermediate service about the second device, the user, and the reason for the request call, wherein the intermediate service conveys the user and the reason for the request call to the second device; and receiving, at the user device, the request call initiated by the second device, wherein the second device is aware of the user and the reason for the request call prior to initiating the request call. (and similar limitations)
Application 18112966
Application 18112970
Claim 1, 14, and 20:
a method, comprising: receiving, at an intermediate service device, information about a call to be made from an initiating device to a recipient device of a user, the information including a reason for the request call; coordinating, by the intermediate service device, with an application on the recipient device to inform the recipient device of the request call, an outbound phone number of the request call, a name of an organization of the initiating device, and the reason for the request call, wherein the application on the recipient device configures a caller identification process on the recipient device to display, in response to receiving a subsequent call from the outbound phone number, the name of the organization and the reason for the request call; and confirming, by the intermediate service device with the initiating device, that the recipient device has been informed of the request call, wherein, in response to the initiating device calling the recipient device using the outbound phone number, the request caller identification process on the recipient device displays the name of the organization and the reason for the request call.
(and similar limitations)
Claims 1, 10, and 16,
a method, comprising: receiving, at an application on a recipient device of a user, information about a call to be made from an initiating device, the information having an outbound phone number of the request call, a name of an organization of the initiating device, and a reason for the request call; and configuring, by the application, a caller identification process on the recipient device to display, in response to receiving a subsequent call from the outbound phone number, the name of the organization and the reason for the request call; wherein, in response to the initiating device calling the recipient device using the outbound phone number, the request caller identification process on the recipient device displays the name of the organization and the reason for the request call.
(and similar limitations)
Application 18112956
Current Application
Claims 1, 11, and 17:
a method, comprising: identifying, by an initiating device of an organization, a user and a reason for a call to a recipient device of the user, the recipient device having an inbound phone number; informing, by the initiating device, an intermediate service about the request call to the recipient device and the reason for the request call, wherein the intermediate service is configured to coordinate with an application on the recipient device to inform the recipient device of the request call, an outbound phone number of the request call, a name of the organization, and the reason for the request call; and calling, from the initiating device and using the outbound phone number, the recipient device at the inbound phone number, wherein the application on the recipient device has configured a caller identification process on the recipient device to display, in response to receiving the request call from the outbound phone number, the name of the organization and the reason for the request call.
(and similar limitations)
Claims 1, 19, and 20:
a method, comprising: receiving, by a particular device, an indication from an intermediate service that a user device requested that the particular device initiate a requested call from the particular device to the user device, the indication also including a reason for the requested call that was specified at the user device, wherein the intermediate service received, from an application associated with the intermediate service on the user device and prior to the requested call, information about the requested call, the information including the reason for the requested call; preparing, by the particular device based on the indication and prior to initiating the requested call, the requested call for initiation, wherein preparing comprises associating a user of the user device and the reason for the requested call with the requested call; determining, by the particular device, when the particular device is able to initiate the requested call; and initiating, by the particular device and in response to being able to initiate the requested call, the requested call from the particular device to the user device, wherein the particular device is prepared, based on associating aware of the user and the reason for the requested call, prior to initiating the requested call (and similar limitations)
Omission of element and its function in combination is obvious expedient if remaining elements perform same functions as before. In re Karlson (CCPA) 136 USPQ 184 (1963). Since one of ordinary skilled in the art at the time of invention would have been made obvious to use different notification message to indicate various information such as reason for a call, name of an entity, for a recipient from a mobile device to perform the data sharing process to improve caller ID functions; thus, the claims are similar in scope which requires a terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) to overcome this rejection.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-15, 18-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains new 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 or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Under close examination for claims 1, 19, and 20, the Applicant’s original filed specification and/or drawings fail to address the newly added limitations e.g., “…a user device requested that the particular device initiate a requested call from the particular device to the user device, the indication also including a reason for the requested call that was specified the suer device…” or the like. Furthermore, Applicant fails to distinctly point out on the remark section where the amended limitations can be found. The Examiner respectfully request the Applicant to withdraw all the new matter added to the current examination.
Applicant is welcome to point out where in the specification and/or drawings the Examiner can find support for the newly-added limitations if Applicant believes otherwise.
All dependent claims based on the rejected base claim are also rejected.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-6, 9-15, 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kats et al. (US Pub. 20210344792 A1).
For claims 1, 19, and 20, Kats discloses a method, comprising:
receiving, by a particular device, an indication from an intermediate service (i.e., a server of an architecture 100) that a user device requested that the particular device initiate a requested call from the particular device to the user device, the indication also including a reason for the requested call that was specified the user device (i.e., a caller registers a call (i.e., a subsequent or future call) with the architecture 100, as shown in figure 1, wherein the request caller transmitted to the architecture 100 a caller registration comprising identification information, such as caller ID or caller’s telephone number, target recipient’s telephone number along with a call reason or call code including information descriptive of an intended purpose of the request call, etc.; para. [0333], [0620-622] and [0626-627]),
wherein the intermediate service received, from an application associated with the intermediate service on the user device and prior to the requested call, information about the requested call, the information including the reason for the requested call (Fig. 44) [0333, 0620-622, 0626-627];
preparing, by the particular device based on the indication and prior to initiating the requested call, the requested call for initiation, wherein preparing comprises associating a user of the user device and the reason for the requested call with the requested call (Fig. 44) [0333, 0620-622, 0626-627];
determining, by the particular device, when the particular device is able to initiate the requested call (i.e., the architecture 100 confirms with the request caller via a recipient status 5114, such as “recipient ready to receive a call” or notifying the associate caller that the target recipient has not opted into this service, or the like; (Fig. 44) [0333, 0620-622, 0626-627, 0629-630, 0636-637]); and
initiating, by the particular device and in response to being able to initiate the requested call, the requested call from the particular device to the user device, wherein the particular device is prepared, based on associating the user and the reason for the requested call, prior to initiating the requested call (Fig. 44) (i.e., the request call ID of an incoming call that identified a caller and other information in the SCCMC content are presented or displayed on a lock screen of the device, on an interface of a call app of the device, etc.; para. [0633, 0057, 0207, 0331-333].
Claim 19 differs from claim 1 only by the additional recitation of the following limitation, which is also taught by the cited prior art. The cited prior art further discloses
a tangible, non-transitory, computer-readable medium having computer- executable instructions stored thereon that, when executed by a processor on a computer of a particular device, cause the computer to perform a process (Figs. 32, 40) [0744, 0073]. All other identical limitations are rejected based on the same rationale as shown above.
Claim 20 differs from claim 1 only by the additional recitation of the following limitation, which is also taught by the cited prior art. The cited prior art further discloses
an apparatus, comprising: one or more network interfaces; a processor coupled to the one or more network interfaces and configured to execute one or more processes; and a memory configured to store a process that is executable by the processor, the process when executed configured (Figs. 32, 40) [0744, 0073]. All other identical limitations are rejected based on the same rationale as shown above.
For claim 3, Kats discloses the indication also indicates an urgency of the request call “your driver is arriving with your pizza now” in para. [0601].
For claim 4, Kats discloses the urgency is either user selected or determined by the intermediate service (Figs. 44, 5B, 14B) [0270-271].
For claim 5, Kats discloses determining an urgency of the request call based on the reason for the request call (Figs. 44, 5B, 14B) [0270-271].
For claim 6, Kats discloses determining when the particular device is able to initiate the request call based on one or more of:
i. the reason for the request call [0633, 0057, 0207, 0331];
ii. an urgency of the request call [0601];
iii. an availability of an agent associated with the particular device; or
iv. an availability of the particular device from among a plurality of devices of a call center.
For claim 7, Kats discloses the reason for the request call is selected from a preset menu associated with the particular device (Figs. 44, 5B, 14B) [0270-271].
For claim 8, Kats discloses the reason for the request call is entered by the user [0250-251].
For claim 9, Kats discloses the reason for the request call is an instruction to the particular device [0250-251, 0270-271].
For claim 10, Kats discloses performing the instruction [0641].
For claim 11, Kats discloses instructing a third device to perform the instruction [0667].
For claim 12, Kats discloses sending a confirmation to the user device that the instruction was performed [0168, 0330].
For claim 13, Kats discloses receiving confirmation from the intermediate service that a request for the request call was initiated by an authorized user (i.e., the architecture 100 confirms with the authorized caller via a recipient status 5114, such as “recipient ready to receive a call” or notifying the associate caller that the target recipient has not opted into this service, or the like; para. [0629]-[0630] and [0636]-[0637]).
For claim 15, Kats discloses the indication also informs of a phone number of the user device, for initiating the request call to the particular device (i.e., the request call ID of an incoming call that identified a caller and other information in the SCCMC content are presented or displayed on a lock screen of the device, on an interface of a call app of the device, etc.; para. [0633]).
For claim 21, Kats discloses the indication further includes a time, specified at the user device, at which the requested call is to be initiated [0625, 0313-315, 00318-319], and
wherein determining when the particular device is able to initiate the requested call comprises:
determining that the particular device is able to initiate the requested call at the time specified at the user device (proximity in time to an upcoming meeting, when determining to initiate a call) [0313-315, 0319].
For claim 22, Kats discloses preparing the requested call for initiation further comprises:
selecting, based on the reason for the requested call, an agent from among a plurality of agents (Fig. 44 preset reasons in preprogramed boxes) associated with the particular device (Fig. 44) [0333, 0620-622, 0626-627]; and
providing the selected agent (select a box) with the user and the reason for the requested call prior to initiating the requested call (Fig. 44) [0333, 0620-622, 0626-627].
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kats et al. (US Pub. 20210344792 A1) in view of George et al. (US Pub. 20190253555 A1).
For claim 2, Kats discloses all limitations this claim depended on.
But Kats doesn’t explicitly disclose the following limitation taught by George.
George discloses the particular device is a part of a call center with a plurality of devices that could participate in the request call, wherein determining when to initiate the request call is based on determining an available device out of the plurality of devices (page 8 claim 1).
Since, all are analogous arts addressing calling functions used in a mobile device; Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine the teachings of Kats with George to enhance timing and the availability of communication sessions, thus, improving communication reliability.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kats et al. (US Pub. 20210344792 A1) in view of Pike et al. (US Pub. 20200252400 A1).
For claim 14, Kats discloses all limitations this claim depended on.
But Kats doesn’t explicitly disclose the following limitation taught by Pike.
Pike discloses receiving confirmation from the intermediate service that the user device completed a multi-factor authentication process to verify the user of the user device [0024-26].
Since, all are analogous arts addressing calling functions used in a mobile device; Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine the teachings of Kats with Pike to enhance verification of communication sessions, thus, improving communication security.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kats et al. (US Pub. 20210344792 A1) in view of Mahalaha et al. (US Pub. 20080095355 A1).
For claim 18, Kats discloses all limitations this claim depended on.
But Kats doesn’t explicitly disclose the following limitation taught by Mahalaha.
Mahalaha discloses determining an approximate wait time until being able to initiate the request call (at least [0273]. The process 280 generates a voice message to tell the customer that a representative will call back at a later time (290). The process 280 prompts the customer to provide a time and date for the representative to call back (292).); and
sending a notification to the user device of the approximate wait time prior to initiating the request call (at least [0273]. The process 280 generates a voice message to tell the customer that a representative will call back at a later time (290). The process 280 prompts the customer to provide a time and date for the representative to call back (292).)
Since, all are analogous arts addressing calling functions used in a mobile device; Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine the teachings of Kats with Mahalaha to enhance communication connections, thus, improving communication efficiency.
Response to Arguments
Applicant's latest filed arguments have been fully considered but they are not persuasive.
With regard to the references failing to teach every element recited in the independent claims; the Examiner respectfully disagrees with the arguments by the Applicant. Even though, the Examiner acknowledges Applicant's invention may possess some novel features, the claims are written too broad that can be read on the current cited prior art(s). Further actions must be taken to explicitly claim those novel features of the current application.
With regards to the argument for the limitation “…, the indication also including a reason for the requested call that was specified the user device…”, the Examiner asserts that Kats discloses Figures 2B, 2C, 44, and 61, Figure 2B shows User 2 sending a push notification to User 1, and Figure 2C shows User 1 receiving that notification at step 238 and then initiating a call from User 1’s mobile phone 102 to User 2’s mobile phone 104 at step 240; paragraph [0160] confirms that “phone call may be initiated when a first user receives a push notification from a second user” and that the call “may be associated with a message from the sender to a recipient.” Thus, User 2’s phone 104 corresponds to the “user device,” User 1’s phone 102 corresponds to the “particular device,” and the push notification corresponds to the indication requesting the reverse-direction call. Figure 44 further shows that a user can specify a reason at a device through an “I’m calling because…” field and that the selected reason, such as “miss u,” accompanies the call and is displayed at the other device. Consistently, paragraphs [0057]–[0058] state that the call information includes “a purpose of the call” and “a business purpose for the call,” that this information is exchanged “prior to the dialer initiating the call,” and that the dialer initiates the call responsively; Figure 61 similarly labels the call information as “INTERACTION INFORMATION—CUSTOMER, PURPOSE” while depicting the business phone dialer calling the customer phone dialer. Read together, these disclosures teach a user-device-generated indication that causes another device to call the user device and that carries a user-specified reason or purpose for that requested call.
ARGUMENT DOES NOT REPLACE EVIDENCE WHERE EVIDENCE IS
NECESSARY
The arguments made by the counsel cannot take the place of evidence in the record. The Applicant representative’s arguments for the obvious reason to combine the implicit and explicit teaching of the cited reference(s) failed to provide factual support to sustain the ground of arguments. The mere statement of disagreement of the prior art made by the Applicant’s representative cannot be served as evidence for support. Please see the following case law for detail:
In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465,43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration.
ARGUING AGAINST REFERENCES INDIVIDUALLY
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck and Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
As discussed above, it is apparent that the Applicant's cited limitations, elements, and arguments have already been disclosed by the relevant prior art(s) or were thoroughly addressed by the Examiner. Additionally, the current Office Action provides further elaboration on the explicit and implicit teachings of the aforementioned disclosed reference(s). It is important to note that any justifications and citations utilized in the preceding Office Action which were not contested by the Applicant shall be regarded as an implicit admission by the Applicant on the matter at hand.
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 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 extension fee 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.
Inquiries
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to PAKEE FANG whose telephone number is (571)270-3633. The Examiner can normally be reached on Mon-Fri 9:00AM-5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Armouche, Hadi can be reached on 571-270-3618. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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 access to 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 automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PAKEE FANG/
Primary Examiner, Art Unit 2409
Prosecution Insights