DETAILED ACTION
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 office action has been changed in response to the amendment filed on 12/29/2025.
Claims 28, 35 and 42 have been amended and claims 32, 39 and 45 have been canceled.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 28-31, 33-38, 40-44, 46 and 47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6-15 and 19-21 of U.S. Patent No. 11,985,500. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader in every instance as compared to the patented claims.
Instant claims 28 and 29 are broader than patented claims 1 and 2.
Instant claims 30 and 31 are broader than patented claims 4 and 6.
Instant claims 33-38 and 40-43 are broader than patented claims 7-15.
Instant claims 44, 46 and 47 are broader than patented claims 19, 20 and 21.
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, 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.
Claims 28-31, 33-38, 40-44, 46 and 47 are rejected under 35 U.S.C. 103 as being unpatentable over Jakobsson (US-11,005,989) in view of Nam et al. (US-2018/0191703 hereinafter, Nam).
Regarding claims 28, 31, 33 and 34, Jakobsson teaches an apparatus (Fig. 1 [120]), comprising:
a network interface (Fig. 1 [150]) operable to receive a communication request over a communication link of a radio access network; (Col. 3 lines 54-58) and
a processor (Fig. 1 [152]) communicatively coupled to the network interface (Col. 3 line 54 through Col. 4 line 5) and operable to:
authenticate caller information associated with the communication request; (Col. 18 lines 7-35 and Fig. 3B)
obtain an authenticator after authenticating the caller information; (Col. 18 lines 32-33 “If the information is validated, the device/app is then enrolled”)
store the authenticator; (Col. 18 lines 32-35 i.e. the status of the enrolled app is stored at the verification server)
receive a verification request from a destination network; (Fig. 2B [222]) and
transmit the authenticator to the destination network in response to the verification request; (Col. 20 lines 32-35 and Fig. 2B [230])
wherein the verification request is received via a second communication protocol. (Col. 15 lines 41-48)
Jakobsson differs from the claimed invention by not explicitly reciting the network interface receives a communication request via a first communication protocol, wherein the first communication protocol is one of a legacy signaling protocol, an SIP protocol, or a VOIP protocol, convert the communication request for transmission via the second communications protocol and transmit the communication request in response to the authenticator indicating that the communication request is authorized to be routed to a second networked device.
In an analogous art, Nam teaches a system and method for user-to-user information carrying security token in a pre-call authentication (Abstract) that includes:
receiving a communication request from a first networked device over the communication link of the radio access network via a first communication protocol (Page 3 [0033]), wherein the first communication protocol is one of a legacy signaling protocol, an SIP protocol, or a VOIP protocol; (Page 2 [0027] and Page 3 [0033] i.e. SIP)
authenticate the caller information; (Fig. 6 [50] and Page 2 [0027-0028])
after authenticating the caller information, obtain an authenticator, associated with the caller information, that indicates the communication request has been authenticated (Fig. 6 [54] and Page 2 [0029]) to be routed to a second networked device (Page 2 [0029]), wherein the second networked device is configured to receive the verification request via a second communication protocol (Page 3 [0034]) and
transmit the communication request in response to the authenticator indicating that the communication request is authorized to be routed to a second networked device. (Fig. 7 [68] is passed on to connect the call in response to verifying the authenticity of Fig. 7 [14-2 in 64], see Page 3 [0035-0036])
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to be motivated to implement the invention of Jakobsson after modifying it to incorporate the ability to receive a communication request in a first protocol, authenticate the caller information, after authenticating the caller information, obtaining an authenticator that the communication request has been authenticated, convert the communication request to a second protocol and transmit the communication request in response to the authenticator indicating authorization to be routed to the second networked device of Nam since it enables functionality with all interconnected communication networks while stopping the call request upon determining an invalid response. (Nam Page 2 [0021] and Page 3 [0033, 0037 & 0039])
Regarding claim 29, Jakobsson in view of Nam teaches wherein obtaining an authenticator comprises generating the authenticator. (Jakobsson Col. 22 lines 61-64 i.e. creating and conveying assurance or failure)
Regarding claim 30, Jakobsson in view of Nam teaches wherein obtaining an authenticator comprises receiving the authenticator as part of a certificate management and validation procedure for cryptographic authentication. (Jakobsson Col. 23 Claims 4 and 9 with the included dependence upon Claim 1 and Col. 9 lines 10-16)
Regarding claims 35, 38, 40 and 41, the limitations of claims 35, 38, 40 and 41 are rejected as being the same reasons set forth above in claims 28, 31, 33 and 34.
Regarding claims 36-37, the limitations of claims 36-37 are rejected as being the same reasons set forth above in claims 29-30.
Regarding claims 42, 44, 46 and 47, the limitations of claims 42, 44, 46 and 47 are rejected as being the same reasons set forth above in claims 28, 31, 33 and 34.
Regarding claim 43, the limitations of claim 43 are rejected as being the same reasons set forth above in claim 29.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW C SAMS whose telephone number is (571)272-8099. The examiner can normally be reached M-F 8:30-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Anderson can be reached at (571)272-4177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew C Sams/Primary Examiner, Art Unit 2646