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 .
Response to Amendment
This is in response to Applicant’s arguments filed on 9/24/2024. No claims have been amended. Claims 1 – 7 and 9 – 12 are pending. This is a Final Office Action.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 – 7 and 9 – 12 are rejected under 35 U.S.C. 103 as being unpatentable over by Clift et al (US 20070168428 A1), hereinafter “Clift” in view of Applicant’s Admitted Prior Art (“AAPA”) and/or in view of Donovan et al -hereinafter “Donovan” (US 20020129093 A1)
Clift discloses a “Communications System with Direct Access Mailbox.” It teaches (PP 0040) that user A (caller) can elect to send an audio-visual communication directly to the mailbox of user B (callee). That is, user A decides to directly leave a voice mail message for user B without ringing or disturbing user B. See Clift, Abstract and paragraphs 0007, 0012 and 0040.
AAPA is the subject matter that Applicant’s own specification expressly identifies as prior art in connection with FIG. 1 thereof, including a SIP proxy server (SIP server 2) which receives a call set-up request from a caller’s user equipment, determines by database lookup the voicemail server serving the callee, and establishes a communication session between the caller’s user equipment and that voicemail server for recording a message. See the instant specification, page 1 line 15 through page 3 line 25, and FIG. 1.
Donovan discloses providing feature control information within a SIP message field header so that a network server, rather than the endpoint device, implements the requested feature. See Donovan, Abstract and paragraphs 0027.
Regarding Claim 1, Clift discloses a computer-implemented method to directly record a voice message (user A decides to directly leave a voice mail message for user B, PP 0040, 0044 and Fig. 4),
Clift teaches that the method comprising:
receiving, from a user equipment of a caller (device 2 of user A, Fig. 4) a call set-up request comprising information (such as prefix – which depends on the type of network being used, SIP messages may be used as taught by Clift) indicating a request by the caller to record a voice message directly on a voicemail server (mail platform 11, Fig. 4) serving a callee (user A/caller uses telephone 2 to dial a three-digit prefix followed by the telephone number of user B/callee, PP 0040). In the embodiment of FIGS. 6 and 7, the request, together with the direct-mailbox-access prefix, is received at the mail platform serving the callee. Clift states that “the destination Exchange recognises the prefix as direct mailbox access call, and routes call to the mail platform, together with calling party CLI” (FIG. 6, step S22), and that “the DLE 24 [Fig. 7] … routes the call to a mail platform 21 (step S22) together with the calling party CLI and the prefix to indicate that the call is a DMA call.” See Clift, paragraph 0056. The dialed prefix constitutes information, carried within the received call set-up signaling, indicating the caller’s request to record a message directly on the voicemail server serving the callee. While Clift teaches an example of using the prefix, it clearly teaches:
“[0043] In the specific embodiment, the entries in the database relate to the standard telephone numbers associated with the users, since these can easily be compared against the calling line identifiers presented by the current service. However, it is understood that any other suitable identification criteria associated with the users or the devices which they use could be stored instead (for example, if needed to support other network types), such as IP (internet protocol) addresses or SIP (session initiation protocol) addresses.
discriminating, in the received call set-up request, said information indicating a request for direct recording of a voice message (e.g., CLI of the caller is relayed to the intelligent network together with an indication that the caller is requesting direct access to mailbox. The Intelligent Network messaging application stores the CLI for calling party A for later use, PP 0040 and 0041). Clift states that the exchange “recognises the three dialled digits of the prefix which indicate that this is a direct mailbox access (DMA) call” (paragraph 0040), that “Local Exchange 23 recognises the 171 as a prefix” (paragraph 0055), and that “the 171 prefix is recognised as indicating a DMA call” (paragraph 0061). The recognition of the direct-mailbox-access prefix carried in the received request constitutes the recited discriminating of the information indicating a request for direct recording of a voice message. SIP messaging may also be utilized according to Clift.
responsive to said discriminating, in the received call set-up request, said information indicating a request for direct recording of a voice message, retrieving callee status information (in order to give subscriber/callee B control over the direct access to his or her voice mailbox, the direct voice mail access DVMA feature can be activated, deactivated or temporarily blocked by subscriber/callee B , PP 0004). Also, the claimed “callee status” may read on the teaching of determining that the callee (user B) is a subscriber for direct voice mail service, see pp 0003, 0004, 0062 and step 32, Fig. 8. Clift discloses that, responsive to recognition that direct mailbox delivery is requested, a store associated with the callee is retrieved and consulted. Clift states that “the mail platform checks called party CLI for direct mail access service” and then “checks store to determine whether User A is allowed direct access to the mail box” (FIG. 6, steps S23 and S24), and that “the platform accesses the contents of database 7 over a data network 9 to determine whether the calling party (user A) is allowed direct access to the mailbox of user B.” See Clift, paragraph 0056.
discriminating direct-voicemail authorization data in the retrieved callee status information (see P0004 and step 6, Fig.1 for determining if direct mailbox access is activated/allowed). This may also read on determining that the callee/user B is a subscriber for this special service. Clift discloses discriminating authorization data within the retrieved callee status information. Clift states that “the messaging application consults the contents of database 7 to determine whether this caller is allowed direct access to the mailbox of user B.” See Clift, paragraph 0041. Clift states that the store comprises entries “indicating a plurality of other users who are allowed or not allowed to send an audio-visual communication directly to the mailbox of the second user.” See Clift, paragraphs 0008 and 0042. Clift further states that “in order to give subscriber/callee B control over the direct access to his or her voice mailbox, the direct voice mail access DVMA feature can be activated, deactivated or temporarily blocked by subscriber/callee B.” See Clift, paragraph 0004.
The determination of whether the particular requesting caller “is allowed” or “not allowed,” by reference to the stored “activated” or “deactivated” status, constitutes discriminating direct-voicemail authorization data in the retrieved callee status information.
responsive to said discriminating direct-voicemail authorization data in the retrieved callee status information, setting up a communication session between the user equipment of the caller (device 2 of user A, Fig. 4) and said voicemail server (platform 11) serving the callee (user B) to enable recording of said voice message, (user A leaves a voicemail message in mailbox 11a of the mail platform, see abstract and PPs 0038 and 0044.)
While Clift primarily provides details about the use of PSTN (3-digits prefix, LEC, CLI, etc.), Clift does suggest supporting “other network types, such as IP (internet protocol) addresses or SIP (session initiation protocol) addresses.” Clift discloses the entire direct-voicemail recording method of claim 1, including the maintenance and retrieval of callee status information and the discrimination of direct-voicemail authorization data therein, with the step of connecting the caller to the voicemail server performed only when the retrieved authorization data indicates that the caller is permitted direct access.
Clift’s detailed embodiments employ an Intelligent Network and a mail platform rather than a “proxy server,” and Clift does not expressly perform the method on a proxy server. However, this element is supplied by AAPA. Applicant’s own specification admits, as prior art, that a SIP proxy server receives a call set-up request from a caller’s user equipment, determines by database lookup the voicemail server serving the callee, and establishes a communication session between the caller’s user equipment and that voicemail server for recording a message. See the instant specification, FIG. 1 and page 1 line 20 through page 3 line 13. Applicant further admits that “SIP servers are widely deployed and can readily be adjusted to implement the direct voicemail call service … for example by a software update,” and that “deployment of a direct voicemail service can be achieved easily using SIP proxy servers.” See the instant specification, page 3 lines 15 to 20 (summary of the invention).
The old and well-known SIP (session initiation protocol) has been used since the 1990’s.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to use the “direct voicemail” feature as taught by Clift in another type of network (e.g., VoIP with SIP) as explicitly suggested by Clift. The use of proxy server while using SIP is old (1990’s), well-known and shown, for example, in AAPA, Fig. 1. Using Clift’s direct voicemail feature in “other network types” provides added versatility and is still within the suggestion of Clift.
In the combination which utilizes the old and well-known SIP, the method would be performed by the proxy server such as proxy/SIP server 2 in Fig. 1 (AAPA).
Also, Donovan discloses a SIP-BASED FEATURE CONTROL and teaches providing an addition to the Session Initiation Protocol (SIP). The addition is a new field header, preferably entitled ''Feature'', that is added to the register (1) message. This field would contain control information for various feature services, like the Do Not Disturb feature and other services.
Thus, since 1) the use of SIP is old and well-known, 2) the use of SIP is suggested by Clift, 3) the use of SIP is admitted as prior art (Fig. 1, applicant’s specification) and 4) Donovan teaches the use of SIP to add features, it would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to implement the direct voicemail feature taught by Clift in a SIP environment as suggested by Clift since using one invention in multiple environments is obvious and supports versatility. Claim 1 does recites “proxy server” which may be the SIP proxy server of the AAPA or Donovan. No SIP details are recited in claim 1.
Regarding Claim 2, as discussed above, in Clift, if the callee (user B) authorizes (reads on subscribing for the service, and/or activating the service) direct recoding of voice messages, then voicemail server serving the callee (mail platform 11) is accessed and the caller/user A is enabled to record a voice message.
Regarding Claim 3, Clift teaches determining that the callee authorizes direct recording of voice messages conditionally dependent on the caller identity and determining the identity of the caller and: if the determined caller is authorized by the callee to directly record voicemails, determining which voicemail server is the voicemail server (platform 11) serving the callee (user B) and setting up said communication session between the user equipment of the caller (device 2) and said voicemail server (platform 11) serving the callee, to enable recording of said voicemail voice message (PP 0041, the IN messaging application 6 compares the identity of the calling party with the CLI recorded earlier, to determine whether this caller has requested direct access to the mailbox. If so, then at step S6, the messaging application consults the contents of database 7 to determine whether this caller is allowed direct access to the mailbox of user B.)
Regarding Claim 4, Clift teaches an example of using the CLI (line identification) for the user B/callee and determining that the called user B/callee uses mailbox 11a within the mail platform 11, see PP 0038 and 0056. Again, SIP addresses may also be utilized as explicitly taught by Clift in PP 0043.
Regarding Claims 5, 6 and 7, the use of the INVITE message and HEADER is old, well-known and discussed, for example, in relation to AAPA. The INVITE and HEADER have been used in the well-known SIP commands for many years. The INVITE and HEADER are explicitly taught by Donovan, see for example, PP 0010, 0017, 0022.
Claims 9 and 10 are rejected for the same reasons as discussed with respect to Claims 1 and 4. The processor and the communication interface are inherent.
Claim 11 recites a user equipment which reads on device 2 of user A in Fig. 4 of Clift (or user 1 “Tom” in AAPA). The claim recites a processor (inherent in both) in the user equipment which functions to:
generate a call set-up request comprising information indicating a request to record a voice message directly on a voicemail server serving the callee” (as discussed above), and
send said call set-up request to a proxy server in order to trigger, depending on direct-voicemail authorization data discriminated within callee status information retrieved by said proxy server, the setup of a communication session between the user equipment and a voicemail server serving the callee, to enable recording of said voice message (this limitation has been discussed above in the rejection of claim 1.).
Regarding Claim 12, the “input element” may simply read on the dialing buttons shown in Fig. 2 and 4 for device 2 which enable the user to use to input a prefix to trigger the service, as discussed above. In the combination, the user’s device ( device 2 of user A in Fig. 4 of Clift or the device of user 1 “Tom” in AAPA) will send out the needed SIP to make the request.
Claims 11 and 12 are also rejected under 35 U.S.C. 103 as being unpatentable over Clift and AAPA and/or Donovan as applied to claim 1 above, and further in view of Rothschild (US 20170359458 A1).
As discussed above, Clift teaches the use of user device 2 to generate a call set-up request to record a voice message directly on a voicemail server of the callee and teaches enabling the caller to record a voice message depending on the authorization data in the callee status.
The combination of Clift and AAPA and/or Donovan does not explicitly teach that the user device comprises a processor.
Rothschild teaches downloading and installing an application on a mobile/smart phone 202 to enable options. The smart phone 202 comprises a processor 206, input/output 204 for the user to provide input. In PP 0001, it teaches that a user can preset a single button to speed dial a series of individual numbers. Thus, it would have been obvious to use such a smart phone to access the service provided by the combination since smart phones, which are widely available, are more user-friendly than conventional phones. The use of a smart phone may provide added convenience, efficiency and ease of use.
Claims 1 – 7 and 9 -12 are rejected under 35 U.S.C. 103 as being unpatentable over Jackson (US 20090168986 A1) in view of Clift (US 20070168428 A1).
Findings of Fact Regarding Jackson
Jackson discloses that a caller at an originating IMS device can request that an initiated communication session be directed to a voicemail server rather than first being directed to the terminating device. See the Abstract and paragraph 0009.
Jackson discloses that the caller’s device sends a communication session initiation message which may be a SIP INVITE, having a destination that includes a direct to voicemail feature identifier, for example where the caller dials the digits 99 followed by the destination number. See paragraph 0018.
Jackson discloses that a call control element, specifically S-CSCF server A 125, receives the message and routes it to a feature server 155 for processing, and further discloses that P-CSCF servers route SIP messages between IMS devices and their associated S-CSCF servers. See paragraphs 0018.
Jackson discloses that the feature server determines that the direct to voicemail feature identifier indicates that the caller requests that the call be sent directly to a voicemail mailbox associated with the destination telephone number. See the Abstract and paragraphs 0020, 0022 and 0040.
Jackson discloses that the feature server queries an ENUM server for the destination number, receives a list of URIs, and selects the voicemail URI, thereby determining which voicemail server serves the callee. See paragraphs 0020, 0022, 0026, 0027, 0037, 0040 and 0049.
Jackson discloses that the feature server modifies header fields of the communication session initiation message, including inserting the original destination number into a header field used to indicate a redirecting number, inserting a caller requested reason code into a Diversion Header, appending a tag such as CTag Voicemail Direct, and appending a term parameter to a Route header. See paragraphs 0020, 0022, 0040 and 0050.
Jackson discloses forwarding the call directly to the voicemail mailbox associated with the destination telephone number without ringing the destination telephone number. See the Abstract and paragraphs 0009 and 0046.
Findings of Fact Regarding Clift
Clift discloses a communications system in which a first user may elect to send an audio visual communication directly to a mailbox of a second user without calling or disturbing the second user. See the Abstract and paragraphs 0001, 0007 and 0012.
Clift discloses maintaining a store associated with the second user, the store comprising entries indicating a plurality of other users who are allowed or not allowed to send an audio visual communication directly to the mailbox of the second user. See paragraphs 0007, 0012 and 0042.
Clift discloses that upon receiving a request from the first user desiring to send an audio visual communication directly to the mailbox of the second user, the system checks the store to determine whether the first user is allowed to send the communication directly to the mailbox, and accordingly allows or does not allow the communication to the mailbox. See paragraphs 0011, 0012, 0042 0056, 0061 and 0062.
Clift discloses that the direct voice mail access feature can be activated, deactivated, or temporarily blocked by the subscriber, thereby giving the subscriber control over direct access to his or her voice mailbox. See paragraph 0004 and 0062.
Clift discloses that the store may contain a list of caller telephone numbers for which the direct voicemail service is activated and a list of caller telephone numbers for which the service is deactivated, such that the system checks whether the caller’s identifier belongs to one of these lists and decides accordingly whether to direct the request to the callee’s phone or directly to the callee’s voicemail server. See paragraph 0024.
Clift discloses that where direct access is not allowed, the call is not connected to the mailbox and an appropriate message is played indicating that the service is not available. See paragraphs 0045, 0057 and 0062.
Clift discloses that identification criteria other than standard telephone numbers may be stored and used, expressly stating that any other suitable identification criteria associated with the users or the devices which they use could be stored instead, for example if needed to support other network types, such as IP internet protocol addresses or SIP session initiation protocol addresses. See paragraph 0043.
Clift discloses that the store may be remotely accessed and updated by the subscriber by way of a web application, allowing the subscriber to amend entries indicating those callers who are or are not permitted direct access to the mailbox. See paragraph 0053.
Clift discloses that the determination of which mail platform serves the called party is made based on the called party identifier, and that the call is then routed to that mail platform. See paragraphs 0056 and 0061.
Regarding claim 1, Jackson discloses the following:
a computer-implemented method to directly record a voicemail message (Jackson teaches (abstract) routing a communication session directly to a voicemail mailbox) and teaches (PP 0009) that “…a caller at an originating communication device [105, Fig. 1] can request that an initiated communication session be directed to a voicemail server…” associated with callee device 106,
said method being implemented by a proxy server” (Jackson teaches ([0019]–[0021]) the use of “feature server A 155” to process the direct-to-voicemail request. Feature server 155 or feature servers 155-157 may read on the claimed “proxy server”.
receiving, from a caller’s user equipment, a call set-up request comprising information indicating a request by the caller to record a voice message directly on a voicemail server serving a callee (Jackson teaches (Abstract; [0009]; [0018]; [0020]; [0044]) that the caller sends a communication session initiation message including a destination telephone number and a direct voicemail feature identifier. See also [0018]: “a communication session initiation message … having a destination that includes a direct-to-voicemail feature identifier (“information indicating a request ……..”),
discriminating, in the received call set-up request, said information indicating a request for direct recording of a voice message (Jackson teaches ([0020], [0022], [0040], [0044]) the feature server “determines that the direct voicemail feature identifier indicates that the caller requests that the call be sent directly to a voicemail mailbox.”
setting up a communication session between the user equipment of the caller and said voicemail server serving the callee, to enable recording of said voice message (Jackson teaches (Abstract; [0009]; [0020]; [0022]; [0046]–[0047]) forwarding the call directly to voicemail and routing directly to the voicemail mailbox without ringing the destination telephone number.
Jackson does not explicitly teach “responsive to discriminating … said information … retrieving callee status information”, “discriminating direct-voicemail authorization data in the retrieved callee status information” and “responsive to discriminating direct-voicemail authorization data in the retrieved callee status information, setting up …..”.
That is, Jackson does not expressly disclose a callee status/authorization check before setting up to enable recording of the voice message.
On one hand, it is extremely obvious to verify if the callee authorizes callers to leave voice messages on his/her voicemail in order to reduce usage of voicemail storage, lower the risk for spam voicemail including spam voicemail from robots, and to provide added privacy/security to the callee. Many telephony services are provided based on user/callee authorization/subscription. Simply put, it is obvious to give the callee control over his/her own voicemail.
On the other hand, Clift teaches direct access to mailbox without disturbing/ringing the callee (abstract), and teaches the following:
in order to give subscriber/callee B control over the direct access to his or her voice mailbox, the direct voice mail access DVMA feature can be activated, deactivated or temporarily blocked by subscriber/callee B dialing the appropriate service codes, PP 0004). Also, the claimed "callee status" may read on the teaching of determining that the callee (user B) is a subscriber for direct voice mail service, see pp 0003, 0004 and 0062. For the “authorization”, see P0004 and step 6, Fig. 1: for determining if direct mailbox access is activated/allowed. That is, Clift’s consultation of the store constitutes retrieving callee status information, and Clift’s determination of whether the particular caller is allowed direct access constitutes discriminating direct voicemail authorization data within that retrieved callee status information. Clift further discloses that connection to the mailbox occurs only where direct access is allowed. At step S7, if direct access is allowed, the messaging application redirects the call to the mail platform and the caller is allowed to leave a voicemail message, as set forth at paragraph 0044. Where direct access is not allowed, the call is not connected to the mailbox, as set forth at paragraphs 0045, 0057 and 0062. This establishes that the setting up of the session to the voicemail server occurs responsive to the discriminating of the authorization data.
Thus, it would have been obvious to one of ordinary skill in the art before the filing date of the current invention to utilize the “callee status/authorization” feature as taught by Clift in the system/method of Jackson in order to provide the callee with control over his/her voicemail (e.g., provide privacy/security, reduce risk of “junk voicemail” messages, and avoid voicemail storage problem. The motivation to combine is expressly supplied by Clift itself. Clift states that in order to give the subscriber control over direct access to his or her voice mailbox, the direct voice mail access feature can be activated, deactivated or temporarily blocked by the subscriber, at paragraph 0004. Clift further explains that the owner of the mailbox is likely to want control over who is allowed or not allowed to access the mailbox and when, at paragraph 0002. There would have been a reasonable expectation of success since both Jackson and Clift are directed to the same field of endeavor, namely delivering a caller’s message directly to a callee’s voicemail mailbox without ringing or disturbing the callee.
Claim 2 is taught by Clift as discussed above.
Claim 3 is taught by Clift as discussed above. Note that Jackson teaches ([0020], [0021], [0022], [0044]) that the session initiation message includes a source telephone number and destination telephone number.
Claim 4 is taught by Clift as discussed above. Furthermore, Jackson discloses (Abstract; [0020]; [0021]; [0022]) a destination telephone number / destination identifier, discloses ([0018], [0020], [0044]) the use of the destination number to identify the voicemail routing path, and discloses ([0020], [0022], [0026]–[0027], [0037], [0040], [0044]) querying ENUM and selecting a voicemail URI associated with the destination.
For claim 5, Jackson discloses ([0018], [0019], [0020], [0039]) SIP / S-CSCF / feature server functionality, and discloses ([0018], [0020], [0044], claim 1, claim 11) that the communication session initiation message may be a SIP INVITE.
For claim 6, Jackson teaches ([0020], [0021], [0040], [0049]) insertion/use of the Diversion Header, redirecting number field, and a reason code in a header, according to the Session Initiation Protocol (see [0018], [0039], [0040]).
For claim 7, Jackson specifically uses the phrase “dedicated header field,” and it expressly teaches inserting an identification in a header, including a diversion header, to indicate caller-requested voicemail routing. See [0020], [0021], [0022], [0040]. Jackson also teaches (Abstract; [0020]; [0022]; [0040]) a direct voicemail feature identifier and “caller-requested” indication.
Claim 9 is rejected for the same reasons as claim 1. The claimed communication interface is inherent and may also read on Jackson’s interfaces for the ENUM server and feature server architecture; the proxy/call-control elements necessarily communicate via network interfaces. The same for the claimed “processor” (Jackson citation: [0043]–[0054], especially FIG. 6).
For claim 10, Jackson teaches ([0020], [0022], [0026]–[0027], [0037], [0040], [0044]) ENUM lookup to obtain voicemail URI/server for the destination telephone number.
Claim 11 is rejected for the same reasons as claim 1. Note that Jackson teaches (Abstract) caller at a source telephone number requests voicemail routing, ([0009]) caller uses originating communication device to direct session to voicemail server, see IMS device 105.
Regarding Claim 12, the “input element” may simply read on the dialing buttons shown in Figs. 2 and 4 for device 2 of Clift which enable the user to use to provide input to trigger the service, as discussed above. The input element may also belong to the internet Protocol (IP) Multimedia Subsystem (IMS) of the calling device 105. (e.g., a voice over internet protocol phone (VoIP)) phone, an IMS enabled personal computer (PC), an IMS endpoint, a wireless IMS device (e.g., a wireless-fidelity (WiFi) IP phone)), see Jackson, PP 0010.
Response to Arguments
Applicant’s arguments filed September 24, 2026 have been fully considered but are not persuasive.
I. Scope of the Independent Claims
It is noted that a substantial portion of Applicant’s Remarks is directed to subject matter not recited in the independent claims. Claims 1, 9, and 11 do not recite the Session Initiation Protocol, a SIP proxy server, a SIP INVITE message, any header field, any dedicated header field, caller-identity-dependent authorization, any step of determining which voicemail server serves the callee, any dialer application or input element, any requirement that the callee’s user equipment not ring or that signaling to the callee’s user equipment be avoided, any requirement that the callee status information be stored at or retrieved from any particular network element, or any requirement that the network be packet-switched, IP-based, VoIP, or IMS-based.
The Session Initiation Protocol and the INVITE message are recited only in dependent claim 5. Analysis of header fields is recited only in dependent claim 6. A dedicated header field is recited only in dependent claim 7. Caller-identity-dependent authorization is recited only in dependent claim 3. Determining which voicemail server serves the callee is recited only in dependent claims 2, 3, 4, and 10. A dialer application and input element are recited only in dependent claim 12.
No claim recites avoidance of ringing the callee or avoidance of signaling to the callee’s user equipment. Applicant’s characterizations throughout the Remarks of the invention as avoiding ringing the callee, avoiding transmission of a call signal to the callee’s user equipment, reducing redundant signaling, and reducing network traffic are not directed to any limitation recited in any pending claim. No claim recites that the callee’s user equipment does not ring, that no call set-up request is transmitted to the callee’s user equipment, or that signaling resources are conserved. Limitations not appearing in the claims cannot be relied upon to establish patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982); MPEP 2145(VI).
Applicant’s argument that Clift performs its permission check at a terminating exchange within an Intelligent Network rather than at a proxy server is not directed to any recited limitation. The independent claims recite only “retrieving callee status information”, and do not recite the location of that information or the network element from which it is retrieved.
II. Applicant’s Arguments Improperly Attack the References Individually
Applicant argues at pages 7 through 11 that Clift does not disclose SIP-based discrimination of a call set-up request, and separately that Donovan does not disclose adding a direct-voicemail indicator to an incoming call set-up request. These arguments are not persuasive because they attack the references individually where the rejections are based on combinations of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). See MPEP 2145(IV).
The rejections do not rely on Clift for the SIP proxy server architecture or for INVITE message parsing. Those elements are supplied by Jackson in Jackson-Clift combination, and by Applicant’s Admitted Prior Art and Donovan in the Clift-AAPA-Donovan combination. Likewise, the rejections do not rely on Donovan for a per-call INVITE indicator. Donovan is relied upon only to establish that it was known in the art to convey feature control information within a SIP header field such that the network server, rather than the endpoint, implements the feature.
Significantly, Applicant’s Remarks do not identify a single recited limitation absent from the proposed combination taken as a whole. Applicant instead addresses each limitation in isolation and asserts, for each, that a single reference fails to teach it.
III. Argument about “discriminating, in the received call set-up request, information indicating a request for direct recording of a voice message”.
Applicant argues at pages 8 and 9 that Clift’s Intelligent Network messaging application never inspects or discriminates information inside a received call set-up request, but instead merely compares the caller’s identity with a previously stored calling line identifier at step S5.
This argument is not persuasive. As an initial matter, in the Jackson-Clift rejection, Clift is not relied upon for this limitation; Jackson is.
Jackson discloses receiving a communication session initiation message from a caller, the message including a destination telephone number and a direct to voicemail feature identifier, and determining that the direct to voicemail feature identifier indicates that the caller requests that the call be sent directly to a voicemail mailbox associated with the destination telephone number. See Jackson, Abstract and paragraphs 0009, 0020, 0022 and 0040. The information indicating the caller’s request is thus carried within, and discriminated from, the received call set-up request itself. Applicant does not argue that Jackson fails to teach this limitation.
Further, with respect to Clift-AAPA-Donovan rejection, Clift does disclose discriminating information within the received request. Clift discloses that user A dials a prefix followed by the telephone number, and that the exchange recognizes the dialed prefix as indicating that this is a direct mailbox access call. See Clift, paragraphs 0040 and 0055-0061. Clift further discloses that the destination exchange recognizes the prefix as indicating a direct mailbox access call and routes the call to the mail platform together with the prefix to indicate that the call is a direct mailbox access call. See Clift, paragraphs 0055 and 0056. The prefix constitutes information, carried within the call set-up signaling received from the caller, indicating the caller’s request for direct mailbox delivery, and that information is recognized and acted upon.
Finally, since Clift explicitly teaches a communications system in which a first user may elect to send an audio visual communication directly to a mailbox of a second user without calling or disturbing the second user, arguing that Clift does not discriminate, in the call set-up request, information indicating a request for direct recording of a voice message is inconsistent with Clift’s express disclosure that the system recognizes the direct-mailbox-access request carried in the call signaling.
IV: Argument about “responsive to said discriminating, retrieving callee status information”.
Applicant argues at page 9 that Clift paragraph 0004 merely describes a prior art system in which a user dials service codes and that it does not disclose retrieving callee status information responsive to discriminating direct-voicemail information in a received call set-up request.
This argument is not persuasive because the rejection does not rest on paragraph 0004 alone. Clift’s own embodiments disclose maintaining a store associated with the second user, the store comprising entries indicating a plurality of other users who are allowed or not allowed to send an audio visual communication directly to the mailbox of the second user. See Clift, paragraphs 0008, 0011, 0012, 0019, 0021, and 0042. Clift discloses that this store is consulted upon receiving a request from the first user desiring to send a communication directly to the mailbox of the second user. See Clift, paragraphs 0011, 0012, 0041, 0056 and 0061. Clift discloses that the store may be remotely accessed and updated by the user by way of a web application in order to maintain and update direct caller preferences. See Clift, paragraph 0053. Clift further discloses that the store may be automatically updated whenever the second user sends a communication to another user, pursuant to a predefined store modification procedure. See Clift, paragraphs 0009, 0013 and 0046 through 0052.
Further, even if paragraph 0004 were properly characterized as background, admitted or acknowledged prior art within a reference remains available as prior art for what it teaches. See MPEP 2129. The callee status in Clift and based on Clift’s teachings is (and must be) retrieved.
V. Argument about “discriminating direct-voicemail authorization data in the retrieved callee status information.”
Applicant argues at pages 9 and 10 that matching a caller identifier against a stored list of allowed calling numbers does not disclose or suggest discriminating direct-voicemail authorization data within retrieved callee status information.
This argument is not persuasive. Clift expressly characterizes the determination as an authorization determination. Clift states that the messaging application consults the contents of the database to determine whether this caller is allowed direct access to the mailbox of user B. See Clift, paragraph 0041. Clift states that the store comprises entries indicating a plurality of other users who are allowed or not allowed to send an audio visual communication directly to the mailbox of the second user. See Clift, paragraphs 0008, 0011, 0012 and 0042. Clift states that in order to give the subscriber control over the direct access to his or her voice mailbox, the direct voice mail access feature can be activated, deactivated or temporarily blocked by the subscriber. See Clift, paragraph 0004. Clift states that the callee’s service status may contain a list of callers’ phone numbers for which this direct voicemail service is activated and a list of callers’ phone numbers for which this service is deactivated, so that the system may check whether the caller’s identifier belongs to one of these lists and decide accordingly whether to direct the request to the callee’s phone or directly to the callee’s voicemail server. See Clift, paragraph 0024.
Clift’s use of the terms service status, activated, deactivated, allowed, and not allowed demonstrates that the stored information is callee status information containing authorization data, and that Clift discriminates that authorization data in order to determine whether the particular requesting caller is permitted direct mailbox delivery.
VI. Argument about ordering and the “responsive to” language.
Applicant argues at pages 9 and 10 that Clift’s database check is triggered at the terminating exchange upon receiving the incoming call, and therefore is not performed responsive to discriminating direct-recording information in a received call set-up request, and further argues at page 10 that Clift merely redirects a circuit-switched call rather than setting up a session responsive to the authorization determination.
This argument is not persuasive. Clift’s disclosed sequence is expressly conditional and ordered.
At step S1, user A dials the prefix followed by the telephone number. See Clift, paragraph 0040. At step S2, the exchange recognizes the prefix as indicating a direct mailbox access call and triggers to the Intelligent Network, relaying the calling party identifier. See Clift, paragraph 0040. At step S5, the messaging application compares the identity of the calling party with the recorded identifier in order to determine whether this caller has requested direct access to the mailbox. See Clift, paragraph 0041. At step S6, the messaging application consults the contents of database 7 to determine whether this caller is allowed direct access to the mailbox of user B. See Clift, paragraph 0041. At step S7, if direct access is allowed, the messaging application redirects the call to the appropriate mail platform and user A is allowed to leave a voicemail message in the mailbox on that platform. See Clift, paragraph 0044.
Where direct access is not allowed, connection to the mailbox is not established. Instead, the call is directed to an interactive voice response platform, an appropriate recorded message is played to indicate that the service is not available, and the call is torn down. See Clift, paragraphs 0045, 0057 and 0062.
Clift therefore performs, in order, recognition that direct mailbox delivery has been requested, then consultation of the callee-associated permission store, then a determination of whether direct access is allowed, and then connection to the mailbox only in the event that direct access is allowed. That is the recited order and the recited conditionality.
Jackson supplies the establishment of the session to the voicemail server at a call-control server, including selection of the voicemail destination and routing of the session thereto without ringing the destination. See Jackson, paragraphs 0020, 0022, 0046 and 0047.
Finally, the fact that Clift’s permission determination is performed at a terminating exchange or within an Intelligent Network, rather than at a proxy server, is immaterial, because the claims do not recite where the callee status information resides or from which network element it is retrieved.
VII. Motivation to combine, reasonable expectation of success, and hindsight
Applicant argues at pages 11 and 12 that because the Examiner acknowledged that Jackson does not expressly disclose the callee authorization sequence, supplying that sequence from Clift constitutes impermissible hindsight reconstruction, and further suggests that adding Clift’s gatekeeping would change Jackson’s principle of operation because Jackson’s routing is unconditional.
These arguments are not persuasive. As to motivation, the rationale is drawn from the references themselves and not from Applicant’s disclosure. Clift expressly states that the owner of the mailbox is likely to want to have control over who is allowed or not allowed to access their mailbox, and when they are allowed to access it. See Clift, paragraph 0002. Clift further states that the authorization control is provided in order to give the subscriber control over the direct access to his or her voice mailbox. See Clift, paragraph 0004. Clift additionally states that its identification criteria need not be limited to telephone numbers, and that any other suitable identification criteria associated with the users or the devices which they use could be stored instead, for example if needed to support other network types, such as IP internet protocol addresses or SIP session initiation protocol addresses. See Clift, paragraph 0043. Clift therefore contemplates application of its authorization scheme in network types other than the circuit-switched network of its detailed embodiments.
Independent of the references’ express statements, a person of ordinary skill would have recognized a self-evident reason to add the authorization determination. Jackson’s routing (which was filed nearly 20 years ago) permits any caller who dials the feature prefix to deposit a message directly into any callee’s mailbox without the callee’s consent. Adding the callee authorization determination taught by Clift would predictably have reduced unsolicited or unwanted voicemail deposits, conserved voicemail storage resources, and afforded the callee control and privacy with respect to the callee’s own mailbox. These are precisely the benefits Clift identifies at paragraphs 0002 and 0004.
As to reasonable expectation of success, Jackson and Clift are in the same field of endeavor and address the same problem, namely delivering a caller’s message directly into a callee’s mailbox without first alerting or disturbing the callee.
As to the asserted change in principle of operation, Jackson’s principle of operation is the routing of a caller’s session directly to a voicemail mailbox without ringing the destination terminal. Conditioning that routing upon a callee authorization determination does not alter that principle of operation; it merely gates its application. Jackson itself discloses that its feature servers provide and implement additional subscriber service features including call barring, call blocking, call forwarding, call screening, and voicemail, and that such features may be implemented for both calling and called parties. See Jackson, paragraphs 0019 and 0041. Subscriber-specific feature gating of the type taught by Clift is therefore entirely consistent with, and indeed expressly contemplated by, Jackson’s architecture.
Finally, any determination of obviousness necessarily involves some degree of reconstruction. The relevant inquiry is whether that reconstruction relies upon knowledge gleaned only from Applicant’s disclosure. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). It does not here, because the motivation is supplied by the express statements of Clift at paragraphs 0002, 0004 and 0043, and by the ordinary and predictable objective of affording a subscriber control over the subscriber’s own mailbox.
VIII. Applicant’s Admitted Prior Art, as it bears on the recited proxy server
Applicant characterizes the designation of FIG. 1 of the instant specification as Applicant’s Admitted Prior Art as labeling of a generic SIP network. Applicant’s specification expressly identifies FIG. 1 as prior art and describes it in detail. The specification states that the system includes a number of networked devices including a proxy server, identified as SIP server 2. The specification states that the mobile phone of the caller generates a call set-up request and sends it to the proxy server. The specification states that, based on the callee’s telephone number identified from the data contained in the caller’s initial message, the proxy server determines the address of the voicemail server applicable to the callee’s user equipment, and that the proxy server makes this determination using a database which may be stored on the proxy server or provided at another location. The specification states that the proxy server then transmits a corresponding request to the determined voicemail server, after which a communication session is established between the voicemail server and the caller’s user equipment so that a voicemail message from the caller can be recorded.
The specification further states (pages 5 and 9) that SIP servers are widely deployed and can readily be adjusted to implement the direct voicemail call service provided by the present invention, for example by a software update, and that deployment of a direct voicemail service can be achieved easily using SIP proxy servers. Thus, referring to “widely deployed”, “readily be adjusted by a software update” and “achieved easily” are also admissions. The specification additionally states that the proxy server may determine the address of the callee’s voicemail server using callee address information contained in the call set-up request using known techniques, notably those usually employed in a case where a SIP proxy server is informed that a callee is not taking a call, that is, by look-up in a database that may be included in the proxy server or in another server.
Accordingly, Applicant has admitted that the following were known in the art before the effective filing date: a proxy server; receipt by that proxy server of a call set-up request from a caller’s user equipment; parsing by the proxy server of data contained within that request in order to identify the callee; determination by the proxy server, by database lookup, of the voicemail server applicable to that callee; and establishment by the proxy server of a communication session between the caller’s user equipment and that voicemail server for the recording of a message. Applicant has further admitted that implementing the direct voicemail service on existing SIP proxy servers may be accomplished by a software update and achieved easily.
A specification’s characterization of subject matter as prior art is an admission available against the claims. See MPEP 2129(I); Riverwood International Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003).
Jackson independently discloses the recited proxy server. Jackson’s call session control function servers route requests on behalf of the caller’s device toward their destination and route the message to a feature server for processing, and Jackson’s feature server in turn processes and forwards the request. See Jackson, paragraphs 0018, 0019, 0028, 0039 and 0044.
IX. Level of Ordinary Skill in the Art
Applicant’s arguments at pages 7 through 12 rest substantially on the premise that the use of a SIP proxy server, the carrying of feature-indicating information within a SIP header field of a call set-up request, and proxy-side consultation of stored subscriber information in the course of processing a received request, were not known or contemplated in the art. That premise is incorrect.
RFC 2543, SIP: Session Initiation Protocol, Handley et al., March 1999, is cited herein as evidence of the knowledge and level of skill of a person of ordinary skill in the art, and as rebuttal to Applicant’s characterization of the state of the art. See MPEP 2144.03 and MPEP 2141(II). RFC 2543 is listed on the accompanying PTO-892.
RFC 2543 establishes the following as standardized and well known more than twenty years before the effective filing date of the claimed invention.
First, a SIP proxy server is defined as an intermediary program acting as both a server and a client for the purpose of making requests on behalf of other clients, which interprets and, if necessary, rewrites a request message before forwarding it. See RFC 2543, Section 1.3.
Second, the INVITE method is the standardized SIP request by which a user or service is invited to participate in a session, and is the call set-up request of SIP. See RFC 2543, Sections 1.4.4 and 4.2.1.
Third, a proxy server receiving an INVITE consults a location service to obtain a more precise location for the callee and then issues a corresponding INVITE to the address returned by that location service. See RFC 2543, Sections 1.4.2, 1.4.4 and 1.4.5, and FIG. 1 therein. This is the same proxy-server operation that Applicant’s own specification describes with respect to FIG. 1 thereof, in which the proxy server determines the address of the voicemail server applicable to the callee by means of a database.
Fourth, proxy and redirect servers may use the information in the Request-URI and in request header fields to handle the request and possibly rewrite the Request-URI. See RFC 2543, Section 4.3. RFC 2543 further states that proxies can base their forwarding decision on any combination of SIP header fields. See RFC 2543, Section 6.19. Accordingly, discriminating information contained within a received INVITE in order to determine how the request is to be handled was expressly contemplated by the governing standard.
Fifth, RFC 2543 expressly provides for the addition of new header fields, stating that other header fields can be added as required and that a server must ignore header fields not defined in the specification that it does not understand. See RFC 2543, Section 6. RFC 2543 further provides a formal extension mechanism, including option tags and registration of new options with the Internet Assigned Numbers Authority. See RFC 2543, Sections 4.4 and 4.4.1. The creation of a dedicated header field to convey a particular indication therefore constituted use of an expressly sanctioned and routine extension mechanism rather than an inventive departure from the art.
Sixth, RFC 2543 contemplates per-request, client-asserted header fields that influence proxy routing behavior. The Priority request-header field indicates the urgency of the request as perceived by the client. See RFC 2543, Section 6.25. The Accept-Language request-header field may be used by a proxy to help select the destination for the call. See RFC 2543, Section 6.9. The Require request-header field is used by clients to tell servers about options that the client expects the server to support in order to properly process that request. See RFC 2543, Section 6.30. Applicant’s argument that Donovan’s use of a Feature header in a REGISTER message teaches away from carrying an indication in a call set-up request is therefore unpersuasive, because the governing standard already provided for client-asserted, per-request header fields that drive proxy handling of the request.
Seventh, RFC 2543 contemplates that a callee may cause server-side state to be stored which governs the handling of future requests directed to that callee, and that the proxy consults that stored state when processing a subsequent invitation. RFC 2543 states that the REGISTER method allows a client to install call handling features at the server. See RFC 2543, Section 4.2.6. RFC 2543 further states that if the registration is changed while a user agent or proxy server processes an invitation, the new information should be used. See RFC 2543, Section 4.2.6. RFC 2543 additionally defines an action parameter, used only when registering, which indicates whether the client wishes that the server proxy or redirect future requests intended for the client, and which is ignored for other requests. See RFC 2543, Section 6.13. Retrieving callee-associated status information and acting upon it when processing a received request was therefore squarely within the contemplation of the governing standard.
Eighth, and of particular relevance to the combination with Clift, RFC 2543 expressly states that SIP transparently supports name mapping and redirection services, allowing the implementation of ISDN and Intelligent Network telephony subscriber services. See RFC 2543, Section 1.1. Clift implements the direct mailbox access authorization service within an Intelligent Network. RFC 2543 thus confirms that implementing Intelligent Network subscriber services of the type disclosed by Clift within a SIP framework was an expressly identified purpose of the SIP standard itself, and provides an independent basis for finding that a person of ordinary skill would have had a reasonable expectation of success in doing so. This finding is reinforced by Clift’s own statement that its identification criteria may be adapted, if needed to support other network types, such as IP internet protocol addresses or SIP session initiation protocol addresses. See Clift, paragraph 0043.
In view of the foregoing, Applicant’s arguments premised on the asserted absence from the art of SIP proxy servers, header-based feature indication, header-based proxy routing decisions, and proxy-side consultation of callee-associated stored information are not persuasive.
X. Conclusion
For the reasons set forth above, Applicant’s arguments are not persuasive. Every limitation recited is accounted for by the proposed combinations taken as a whole, an articulated rationale with rational underpinning has been provided for each combination, and Applicant has not identified any recited limitation absent from any combination. The rejections of claims 1 – 7 and 9 – 12 under 35 U.S.C. 103 are maintained.
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 AHMAD F. MATAR whose telephone number is (571)272-7488. The examiner can normally be reached M-F 9 - 5:30.
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/AHMAD F. MATAR/ Supervisory Patent Examiner, Art Unit 2693
