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 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,637,934. Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter recited in the claims of the instant application are now broader than the features included in the claims of the ‘934 patent. For example, claim 1 of the instant application recites some of the features in claim 1 of the ‘934 patent in a broader manner (such as the usage models associated with the accounts), but does not include features relating to the URI and the interruption of service as in claim 1 of the ‘934 patent. Therefore, as the instant claims are a broader version of the patented claims, these claim sets anticipate each other and are rejected under obviousness-type double patenting.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections 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 this title, 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.
Claims 1-2,5,11-12,15,18-19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pub. 2011/0251921 to Kassaei in view of 2011/0313950 to Nuggehalli and U.S. Pub. 2009/0318113 to Waller and 2015/0235191 to Sirota.
Regarding claims 1, 11 and 18 Kassaei teaches a system comprising:
a machine-readable medium that stores instructions; one or more processors that execute the instructions to perform operations comprising (see Figs. 1, 2 and 10):
associating a first usage model with a first account, the first usage model for usage of a telephony application platform by an application (see sections [0030] to [0034], which teach setting up billing plans with usage-based-billing and see Fig. 5 and sections [0053] to [0059]);
associating a second usage model with a second account, the second usage model for usage of the application by the second account (see sections [0030] to [0034], which teach setting up billing plans with usage-based-billing and see Fig. 5 and sections [0053] to [0059], where the second account may be the “sub-account”).
Regarding the three steps below:
“receiving incoming communications directed to an endpoint;
identifying the application based on the endpoint;
in response to the receiving of the incoming communications, providing the application to the second account”,
although Fig. 7 (step 718) and Fig. 8 show the user subscriber accessing the 3rd party application, as this accessing is not described as using an “endpoint” per se, Nuggehalli is added.
In an analogous art, Nuggehalli teaches a system which provides Software As A Service (SAAS). As described in Figs. 2-3 and as described in sections [0042], [0045] and [0049], Nuggehalli teaches that the SAAS platform receives a user request to access a specific application via the URLs provided by the system to access that application (where the URL may be considered as an endpoint). See also section [0057] and Fig. 7 which bills the user for their volume of services used based on their billing model (as also described in sections [0037], [0047] and [0051]-[0053]).
Therefore, as both Kassaei and Nuggehalli teach providing software as a service for billing and as Nuggehalli explicitly teaches using an URI as an endpoint to get to the software service application, it would have been obvious to one of ordinary skill in the art to modify Kassaei to use an endpoint as in Nuggehalli, as URLs are conventionally used as endpoints to allow users to access an application (software as a service).
Regarding the step “billing a first amount to the second account based on usage of the application by the second account and the second usage model”, both Kassaei and Nuggehalli teach billing a user for the services based on the model, as recited.
Regarding the last step of “transferring a second amount to the first account based on the first amount, the first usage model, and the usage of the application by the second account”, Waller is added.
In an analogous art Waller teaches a system which has a first and second accounts where a first user (with a first account) allows a second user with a second account to use his phone. As shown in Fig. 2 (especially the last two steps 18 and 19) and as described in sections [0034] to [0041], [0049] to [0051] and claim 1 of Waller, the second user’s account is billed for use of the first user’s phone (as per their billing plan) and the first user’s account is credited with a percentage of the bill charged to the second user which is the recited “second amount” (also based on any number of different ways to compensate the first user/account etc.). This crediting of Waller meets the recited limitation of “transferring a second amount to the first account based on the first amount, the first usage model, and the usage of the application by the second account”, as recited.
Therefore, as Kassaei/Nuggehalli and Waller teach providing services for billing to a first and second accounts and as Waller explicitly teaches crediting a second amount to a first account based on the first amount billed to the second account, it would have been obvious to one of ordinary skill in the art to modify the Kassaei and Nuggehalli combination, as Waller teaches the financial benefits and/or motivations to credit a first account based on a related second account’s billing usage.
Regarding the amendments which recite “associated with a developer of an application”, “determining a first amount based on usage of the telephony application platform by the application and the first usage model” and “transferring a third amount based on the first amount and second amount”, Sirota is added.
In an analogous art, Sirota teaches a system which provides a platform to run applications (created by developers) which bills end users for use of the applications (see Fig. 1). As shown in Fig. 8 and as described in section [0069], Sirola teaches “For example, the fees to pay an application provided may be determined based on the difference between the fees to be paid by the end user for use of the application and the fees to pay the service provider(s) for use of services via the application.”
Therefore, as all of Kassaei, Nuggehalli and Sirola teach providing software as a service for billing and as Sirola explicitly teaches that the first user model and account are associated with the developer of the application and also teaches the newly recited features of transferring the third amount based on the difference of the first and second amounts, it would have been obvious to one of ordinary skill in the art to modify the Kassaei combination with the billing usage difference taught in Sirola, for the reasons as in Sirola, which are that the provider of the computing platform (which hosts the developed application) is provided with some financial compensation.
Regarding claims 2, 12 and 19 which recite “wherein: the first account uses an instance of the application; the providing of the application to the second account comprises providing access to the instance of the application to the second account; and the instance of the application has customized settings or configuration for the first account”, see Sirola and section [0017] of Kassaei and section [0038] of Nuggehalli, which teach user interfaces which allow for “customized settings and interactions with the application” and see the above cited portions of these references for the use and billing when accessing the applications, as recited. Therefore, the combination of references would teach and/or render obvious this feature.
Regarding claims 5, 15 and 21 which recite “wherein a first price rate for the first usage model is lower than a second price rate for the second usage model”, as these references teach different billing models and/or the ability to change the billing model and/or the charge to the second “end user” in Sirola and Waller is more than the amount charged to first usage model (“the developer”), the references teach this feature.
Claims 3, 13 and 20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the references as applied to claims 1, 11 and 18 above, and further in view of U.S. Pub. 2009/0235349 to Lai.
Regarding claims 3, 13 and 20 which recite “wherein the associating of the first usage model with the first account is via a representational state transfer (REST) application programming interface (API)”, although Kassaei and Nuggehalli teach using APIs (but not REST specifically), Lai is added.
In an analogous art, Lia teaches a system which provides software services to users. As shown in Figs. 2-3 and as described in the Abstract and section [0037], Lia teaches using REST APIs to access the applications (also with URLs as in Nuggehalli) and as also described in sections [0040] to [0044] and [0049] to [0057].
Therefore, as Kassaei/Nuggehalli and Lai teach providing software as a service using APIs and as Lai explicitly teaches using a REST API to get to the software service, it would have been obvious to one of ordinary skill in the art to modify Kassaei to use a REST API as in Lai, as REST APIs are conventionally used to access apps.
Claim 6, 16 and 22 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the references as applied to claims 1, 11 and 18 above, and further in view of U.S. Pub. 2012/0009929 to George.
Regarding claims 6, 16 and 22 which recite “wherein the endpoint is a phone number, an SMS short code, a fax number, or an email address”, although the phone numbers in Kassaei/Waller can be interpreted as endpoints, George is added.
In an analogous art, George teaches a system which bills users for services and further uses telephone endpoints (phone numbers) as in Abstract and section [0037].
Therefore, as Kassaei/Nuggehalli and George teach billing for services and as George explicitly teaches using a telephony endpoint in the service application, it would have been obvious to one of ordinary skill in the art to modify Kassaei to use an endpoint as in George, as telephony systems are conventionally used to allow users to access other devices.
Claims 7-8 and 10 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the references as applied to claims 1 above, and further in view of U.S. Pub. 2011/0300826 to Chang.
Regarding claim 7 which recites “wherein the operations further comprise monitoring the usage of the application by the second account by monitoring an amount of time of usage of the application by the second account”, Chang is added.
In an analogous art, Chang teaches a system which bills users for services and records the amounts of data. See for example, sections, [0001] and [0036], which teach that the services are billed in time units or minutes as the user accesses a remote device.
Therefore, as Kassaei/Nuggehalli and Chang teach billing for services and as Chang explicitly teaches monitoring the number of billable time minutes, it would have been obvious to one of ordinary skill in the art to modify Kassaei to monitor data usage as in Chang, as data usage is conventionally monitored as an amount of time.
Regarding claim 8 which recites “wherein the operations further comprise monitoring the usage of the application by the second account by monitoring a number of occurrences of usage of the application by the second account”, see for example, section [0017] of Chang, which teaches that the services are billed in units, where a unit is a “number of calls”, number of messages or of pings, or number of communications (which is the recited “number of occurrences”).
Regarding claim 10 which recites “wherein the operations further comprise monitoring the usage of the application by the second account by monitoring an amount of data received from the application by the second account”, see section [0017] of Chang, where the billable unit is amount of data, and see Figs. 4-7, 6B and section [0044] (amounts of data as 20MB or 50MB).
Claim 9 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the references as applied to claims 1 above, and further in view of U.S. Pub. 2006/0117376 to Maes.
Regarding claim 9 which recites “wherein the operations further comprise monitoring the usage of the application by the second account by monitoring a number of application programming interface (API) calls to the application by the second account”, although Nuggehalli teaches API calls, Maes is added.
In an analogous art, Maes teaches a system which bills users for services and uses API calls in that process as described section [0003].
Therefore, as Kassaei/Nuggehalli and Maes teach billing for services and as Maes explicitly teaches billing based on API calls, it would have been obvious to one of ordinary skill in the art to modify Kassaei/Nuggehalli with the API call billing in Maes, as Nuggehalli and Maes teach the conventionality of using API calls to access and bill for application usage.
Response to Arguments
Applicant’s arguments filed 2-4-26 with respect to the claims have been considered but are now moot because of the new grounds of rejection (the Sirola reference).
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.
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/STEVEN S KELLEY/Primary Examiner, Art Unit 2646