DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant’s arguments with respect to claims 1-6, 8-15, 17-23, and 25-29 have been considered and deemed persuasive. Now only the double patenting rejection is pending.
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 1-6, 8-15, 17-23, and 25-29 are rejected on the ground of nonstatutory double patenting over claims 1-20 of U. S. Patent No. 9,485,548 since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter. Although, the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the present application are broader in scope than the claims of the patent. For example, claim 1 includes most of the limitations of the previously patent claim 1, except “…wherein the origination information comprises information about the origin and wherein a first value of the header field indicates that the call session is to be routed based on the origination information and a second value of the same header field indicates that the call session is to be routed based on destination information of the call session request”. Therefore, the claims of the instant application would have been obvious to one of ordinary skill in the art at the time of the invention, since all features are obvious variation of the patented claims.
Omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same functions as before. In re KARLSON (CCPA) 136 USPQ 184 (1963).
Claims 1-6, 8-15, 17-23, and 25-29 are rejected on the ground of nonstatutory double patenting over claims 1-17 of U. S. Patent No. 10,368,145 since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter. Although, the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the present application are broader in scope than the claims of the patent. For example, claim 1 includes most of the limitations of the previously patent claim 1, except “…a second computing device configured to cause a search of the database and to provide the response to the request, based at least in part on a result of the search, to the first computing device”. Therefore, the claims of the instant application would have been obvious to one of ordinary skill in the art at the time of the invention, since all features are obvious variation of the patented claims.
Omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same functions as before. In re KARLSON (CCPA) 136 USPQ 184 (1963).
Claims 1-6, 8-15, 17-23, and 25-29 are rejected on the ground of nonstatutory double patenting over claims 1-18 of U. S. Patent No. 11,736,837 since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter. Although, the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the present application are broader in scope than the claims of the patent. For example, claim 1 includes most of the limitations of the previously patent claim 1, except “…wherein the selecting comprises selecting between: the origination information of the call session request; and
destination information of the call session request”. Therefore, the claims of the instant application would have been obvious to one of ordinary skill in the art at the time of the invention, since all features are obvious variation of the patented claims.
Omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same functions as before. In re KARLSON (CCPA) 136 USPQ 184 (1963).
Allowable Subject Matter
Claims 1-6, 8-15, 17-23, and 25-29 are allowable over the prior art of record.
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 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 NAFIZ E HOQUE whose telephone number is (571)270-1811. The examiner can normally be reached M-F 8-5.
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, Ahmad Matar can be reached on (571)272-7488. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NAFIZ E HOQUE/Primary Examiner, Art Unit 2652
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