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 Arguments
Applicant's arguments filed 9/4/2026 have been fully considered but they are not persuasive. The applicant’s arguments regarding the double patenting rejection correctly note the typographical errors in the patent numbers in the last office action. The amendments do not change the analysis in the double patenting rejections, as the currently claimed invention broadly claims the same subject matter which is already covered by the three parent patents and the currently claimed language does not feature any limitations that could be found patentably distinct from the parent patents.
The applicant’s arguments regarding written description are not persuasive. Before addressing the specific issues of written description, the examiner notes that on page 5 of the 9/4/2026 Remarks, the applicant is arguing that the order of the claimed limitations matters for patentability. With respect to the first issue, in the disclosure the media server is selected by the client system initiating the invitation and therefore there is no support for “selecting a media server based on the communication initiation”. The media server is already selected by the client system before the communication initiation is received and therefore the applicant has not disclosed the recited “ordering” in the claim where a selection is made (presumably by the signaling controller) after the communication initiation/invitation is received. With respect to the second written description issue, the applicant is arguing that the invitation from the client system, with the parameters that could include the client codec information, reads on the first “identifying” step but this cannot be the case because then the applicant would then be redundantly claiming the “invitation” from the client system as both the first limitation which covers the communication initiation and the first identifying limitation. The applicant cannot claim limitations covering the invitation from the client system twice when it is only disclosed as happening once. Such an order of limitations is not taught or suggested by the original disclosure. The invitation received from the media server, with the media server parameters including the media server codec, is not disclosed as being in response to the invitation received from the client system, as there is an intermediate step performed by the signaling controller 330 (s420), and thus there is not support for the second identifying limitation as claimed. Further, the applicant’s amendments seem to switch the order of the disclosed “establishing” and “bridging” steps and seems to rely on combining the different concepts of the proxy service 310 and proxy 312 as one concept of a “proxy” in the claims when what is actually disclosed is that “bridging” is disclosed with respect to proxy service 310 and “establishing” is disclosed with respect to proxy instance 312 (shown in Figure 3). This is clearly illustrated in Figure 5 and described in paragraphs 87 and 88.
With respect to the prior art, the applicant argues that Bunch and Lavoie do not disclose the recited ordering. As pointed out, the applicant does not provide written description support for the recited ordering and the claims themselves do not specifically tie the first two limitations of “receiving’ and “selecting” to the subsequent steps of “identifying” to suggest any ordering or cause and effect covered by these steps. Therefore, any arguments regarding “ordering” are moot. The applicant’s arguments regarding Lavoie argue that Lavoie does not suggest the claimed invention because it does not teach the claimed invitation to a selected media server. This is not relevant because the received communication initiation and selection of a media server are not claimed as having any specific relationship to the two identifying steps. Bunch is relied upon to show that proxy services can be established between client systems and media servers based on invitations. Lavoie is relied upon to show that device codecs can be considered when proxying services between devices. Given that the applicant does not disclose any specific details about how proxy server 312 is established based on the codecs, Lavoie seems to teach the extent of the technology disclosed by the applicant regarding proxying. In the broad context of the claim, such details could be implemented by the proxy concept of Bunch without any modification to the inventive concept of Bunch.
In order to further prosecution, the applicant is encouraged to amend the claims to cover the invention in same language in which it is described in the originally filed written description.
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 1-9 and 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,774,687. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims set is broader than the independent claim in the parent case and do not feature any limitations that would be patentably distinct from that in the parent case.
Claims 1-9 and 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, and 16 of U.S. Patent No. 10,212,237. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims set is broader than the independent claim in the parent case and do not feature any limitations that would be patentably distinct from that in the parent case.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 11, 18, and 20 of U.S. Patent No. 11,973,835. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims set is broader than the independent claim in the parent case and do not feature any limitations that would be patentably distinct from that in the parent case.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Written Description Issue #1
Claims 1, 11, and 20 feature the following limitations:
receiving a communication initiation from a client system;
selecting a media server based on the communication initiation;
The applicant did not disclose any selection of a media server based on a communication initiation received from a client system. Instead, in paragraphs 35-37 of the original disclosure (in application 14/793,284), the applicant only disclosed inviting a single media server 180 in response to receiving the communication initiation from the client system. There is no suggestion that the invention comprises more than one media server 180 that corresponds to the communication initiation and therefore no suggestion of a selection of media servers based on the communication initiation as claimed. The applicant has disclosed that the “selection” of the media server is made by the client system which specifies a specific media server in the invitation. There is simply no selection made “based on the communication initiation” because the selection of the media server was made by the client in order to create the invitation that is disclosed as the “communication initiation”.
Written Description Issue #2
Claims 1, 11, and 20 feature the following limitations:
identifying a client codec associated with the client system;
identifying a media server codec for the media server in response to identifying the client codec;
The applicant did not disclose the claimed identifying steps. The only identifying steps disclosed (in application 14/793,284) are in paragraphs 92, 96, and 97 but these identifications do not suggest identifying a codec associated with a client system that has sent a communication initiation or identifying a codec for a media server that has been selected based on a communication initiation. Additionally, there is no suggestion of performing the identification of a media server codec “in response to identifying a client codec” as such a cause and effect is not disclosed by the applicant in 14/793,284.
Based on the applicant’s 9/4/2026 Remarks, it appears the applicant is trying to state that the reception of the invitation, shown in step 501, reads on the claimed “identifying a client codec associated with the client system step” but this cannot be because the applicant is already claiming this step with the limitation “receiving a communication initiation from a client system”. Further, the return of a media server codec, show in step 511, is in response to step s410, and not step 501, which is the invitation that the applicant is relying on to show the first “identifying” step. Therefore, the applicant does not have support for the concept of “identifying a media server code for the media server in response to identifying the client codec”.
Written Description Issue #3
Claims 1, 11, and 20 cover:
establishing a proxy service based on the client codec and the media server codec, the proxy service being established to facilitate media communication between the client system and the media server; and
bridging the media server and the client system with the proxy service based on the client codec and the media server codec.
In paragraphs 87 and 88 and, as shown in Figure 5, the applicant disclosed that the step of bridging the invites media server 321 with the external client system 340 by using media proxy service 310 occurs as step s420 in Figure 5. Subsequently the media proxy 312 is established in step s522 by providing the client media parameters and the media server media parameters to the proxy service. The applicant’s claims amendments do not have written description support for two reasons. The “bridging” is disclosed and shown as happening before “establishing” a media proxy service. There is no disclosure that the bridging referred to in paragraph 87 and shown in s420 of Figure 5 is with the established proxy service as claimed. Instead, the bridging occurs with the media proxy service 310 and subsequently, after the bridging step s420, the media proxy 312 is “established” is step s521 as described in paragraph 88. There is no disclosure that bridging occurs prior to the establishment of the proxy service. There is no disclosure that “media proxy service 310” is ever “established” so there would be no reason to interpret it as the claimed proxy service when clearly the proxy service 312 is what gets “established” according to the applicant’s disclosure.
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.
Claim(s) 1-9 and 11-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2011/0252154 by Bunch et al. in view of U.S. Patent Application Publication Number 2009/0238168 by Lavoie et al.
As to claim 1, Bunch teaches a method comprising: receiving communication initiation from a client system (paragraph 59, ref. no. 408 is the communication initiation and ref. no. 420 is the client system in Figure 4); and selecting a media server based on the communication initiation (paragraphs 59, in Figure 4, media server 406 is selected based on communication 408 and paragraph 139-155 detail how a media server is selected); and bridging the media server and the client system with a proxy service (paragraph 59, media gateway 402 is a proxy service that bridges communication between SSP 420 and Media Server 406); however Bunch does not explicitly teach identifying a client codec and media server codec, establishing a proxy service based on the client codec and the media server codec, and bridging the media server and the client system with a proxy service based on the client code and media server codec.
Lavoie teaches a method comprising: identifying a client codec associated with the client system (paragraph 56, caller device is client system); identifying a media server codec for the media server in response to identifying the client codec (paragraphs 26 and 56, callee device is the media server); and establishing a proxy service based on the client codec and the media server codec, the proxy service being established to facilitate media communication between the client system and the media server (paragraphs 51, 55, and 56 and Figure 5); and bridging the media server and the client system with a proxy service based on the client codec and the media server codec based on the client codec and the media server codec (paragraphs 51, 55, and 56 and Figure 5).
It would have been obvious to one of ordinary skill in the internet calling art at the time of the applicant’s filing to combine the teachings of Bunch regarding using a proxy service to bridge communication between a client initiating communication and a media server with the teachings of Lavoie regarding bridging the proxy service based on client and media server codecs because Bunch does not detail the exact nature of the connections of media gateway 402, shown in Figure 4, and Lavoie supplies a specific example of how the interfaces of gateway 402 could be implemented.
As to claims 11 and 20, they are rejected for the same reasoning as claim 1.
As to claims 2 and 12, see service broker 400 of Bunch and session controller 18 of Lavoie and corresponding description of their functions with respect to proxy service.
As to claims 3 and 13, Bunch teaches a method of providing, by the signaling controller, a media server proxy parameter to the media server, the providing of the media server proxy parameter including sending a first message via a signaling interface (Figure 4 shows interface in service broker 400 to MS 406, via AS 404) of the signaling controller to the media server (paragraph, SIP SIC 412 and subsequent SIP 418 is provided to MS 406); and providing, by the signaling controller, a client proxy parameter to the client system, the providing of the client proxy parameter including sending a second message from the signaling interface (Figure 4 shows interface in service broker 400 to SSP 420) of the signaling controller to the client system (paragraph 59, “The Service Broker 400 provides an equivalent capability in the reverse direction; it converts next generation network signaling messages 412 from the Application Server 404 into Intelligent Network signaling messages 408 and forwards them to the legacy network call signaling device 420.”).
As to claims 4 and 14, see paragraph 59 of Bunch explains how information from service broker (mapped in rejection of claim 3) facilities communication via media gateway 402.
As to claims 5 and 15, paragraphs 51, 55, and 56, of Lavoie and the rejection of claims 1 and 11 explain how codecs could be integrated into the media gateway of Bunch.
As to claims 6 and 16, see Figure 4 and paragraph 59 of Bunch. The control functions are performed by service broker and media communication is facilitated by media gateway.
As to claims 7 and 17, see Figure 4 of Bunch.
As to claims 8 and 18, see paragraphs 51, 55, and 56, of Lavoie
As to claims 9 and 19, see Figure 4 of Bunch and paragraph 56 of Lavoie.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2011/0252154 by Bunch et al. in view of U.S. Patent Application Publication Number 2009/0238168 by Lavoie et al. in view of U.S. Patent Number 9,736,130 to Asveren.
As to claim 10, the Bunch-Lavoie combination teaches the subject matter of claim 1; however Bunch does not explicitly teach authenticating communication initiation 408.
Asveren teaches authenticating a communication initiation (col. 25, lines 30-61) such as that taught by Bunch. The Examiner notes that paragraph 36 of the disclosure does not provide any technical detail regarding authentication.
It would have been obvious to one of ordinary skill in the internet calling art at the time of the applicant’s filing to combine the teachings of Bunch regarding receiving a communication initiation with the teachings of Asveren regarding authenticating such a communication because such authentication enhances security of the system.
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 DOUGLAS B BLAIR whose telephone number is (571)272-3893. The examiner can normally be reached Monday-Friday 9am-5pm.
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/DOUGLAS B BLAIR/Primary Examiner, Art Unit 2454
