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
Applicants’ amendment filed on 12/10/2024 has been entered. No claims have been amended. Claims 1-22 have been canceled. New claims 23-40 have been added. Claims 23-40 are still pending in this application, with claims 23, 32 and 38 being independent.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Claims 23-31 and 38-40, drawn to a system for providing safe call back numbers using message server/data processing system, classified in G04M3/436.
Claims 32-37, drawn to a system for providing safe call back numbers using an application installed on a client devices including an application interface, classified in H04W88/08.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, they do not overlap in scope and not obvious variants and subcombination II has separate utility such as application installed on a client device including an application interface is separately usable in many different scenarios. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: (a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter; (c) the inventions require a different field of search (for example, searching different main groups/sub-groups or electronic resources, or employing different search queries); (d) the prior art applicable to one invention would not likely be applicable to another invention; (e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph. It is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other inventions (e.g. searching different main groups/sub-groups or electronic resources or employing different search queries), even though the inventions are classified together. Invention I is directed to a system for providing safe call back numbers using message server; features not required by the other groups; Invention II is directed to a system for providing safe call back numbers using an application installed on a client devices including an application interface; features are not required by other groups.
The above inventions or subcombinations require a different field of search and in that prior art usable for one invention or subcombination would not likely be sufficiently useful for the other inventions or subcombinations.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Seth Ostrow on 4/15/2026 a provisional election was made without traverse to prosecute the invention of invention I, claims 23-31 and 38-40. Affirmation of this election must be made by applicant in replying to this Office action. Claims 32-37 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 23-25, 29, 38-40 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 4-6, 9, 11, 14, 19 of U.S. Patent No 12,010,265. Although, the conflicting claims are not identical, they are not patentably distinct from each other because, as can be seen from the comparison table below independent claims of current application appears to be a broader version of claims of patented application. Similarly, dependent claims are rejected as being similar to dependent claims of U.S. Patent No. 12,010,265.
The following table is an example for comparing independent claims of this application and U.S. Patent No. 12,010,265.
Application 18660438
U.S. Patent No. 12,010,265
23. A system for providing safe call back numbers, wherein the system is configured to establish and receive communications via a communication network using one or more client devices, the system comprising:
a message server configured to record and transcribe voice messages for a user of the one or more client device;
wherein the system is configured to:
scan an electronic message inbox and/or a call history hosted on the message server or stored locally on the one or more client devices to detect fraud; and analyze content of a communication feed from the electronic message inbox and/or the call history.
25. The system of claim 24, wherein the message server includes a processor and a memory, the memory having executable instructions stored thereon that when executed by the processor cause the processor to: extract entity contact data from content of the electronic message inbox and/or the call history, the entity contact data including at least a phone number and data representing an identity of an alleged legitimate entity including at least a name associated with the alleged legitimate entity;
compare the extracted entity contact data with a reference data set that is retrieved from the plurality of databases and stores genuine and fraud data, the reference data set including legitimate entities and contact data corresponding to the legitimate entities; determine the entity contact data is not authentic based on the extracted entity contact data not matching the contact data corresponding to the legitimate entities in the comparison; and
execute a remedy action based on the determination, the remedy action including a replacement of the phone number in the message record with an authentic phone number of the legitimate entity based on the determination.
24. The system of claim 23, wherein the message server is communicatively connected to a plurality of databases including a fingerprinting database, a database of suspicious text/messaging patterns, a database of carriers and their scores, and a database of valid phone numbers or communication addresses.
29. The system of claim 26, wherein the remedy action includes at least one of a warning that the electronic message inbox and/or the call history includes fraudulent information, blocking of the communicator from incoming and outgoing communications or an insertion of a visual indicator or icon next to the phone number in the message record that includes an alert that the phone number is suspicious.
1. A system for providing safe call back numbers, the system comprising: a processor; and a memory having executable instructions stored thereon that when executed by the processor cause the processor to: parse a message from a communicator, the message comprising one or more of a voice message, a text message, and an email sent to a user;
extract entity contact data from the parsed message, the entity contact data including one or more of a phone number, an alleged entity name, an email address, and a website;
compare the extracted entity contact data with a reference data set that is retrieved from a database storing genuine and fraud data, the genuine and fraud data including entities and contact data corresponding to the entities;
determine the entity contact data is not authentic based on the comparison; and
execute a remedy action based on the determination, the remedy action including notifying the user of at least one replacement phone number option, each replacement phone number option comprising an authentic phone number associated with the alleged entity.
9. The system of claim 1, wherein the processor is further configured to perform one or more of caller carrier analysis, cellular/landline analysis, fingerprinting, and matching to a database of templates associated with fraudulent messages.
4. The system of claim 1, wherein processor is further configured to provide a warning to the user indicating that, based on the determination, the message includes fraudulent information.
5. The system of claim 4, wherein the warning comprises an insertion of a visual indicator or icon next to the phone number in the message, the visual indicator or icon comprising a link which the user may select to call the authentic phone number associated with the alleged entity.
6. The system of claim 1, wherein the remedy action further includes blocking the user from incoming and outgoing communications with the communicator via the phone number, email address, and website.
As can be seen from above, the independent claim 23 of instant application are merely broader versions of claim 1 of patented application. Specifically claims 23 and 25 map to claim 1 of patented application. Further, Independent claim 38 of instant application are merely broader versions of claim 11 of patented application. Dependent claims 24 and 39 of instant application map to claims 9 and 19 of patented application, dependent claim 29 of instant application maps to claims 4-6 of patented application, and dependent claim 40 of instant application maps to claim 14 of patented application
The claimed invention in the instant application is fully disclosed in the patent and it is broader than the claimed invention in the patent 12,010,265. No new invention or new improvement is being claimed in the instant application. Applicant is now attempting to claim broadly that which had been previously described in more detail in the claims of the patent (In re Van Ornum, 214 USPQ 761 CCPA 1982).
Furthermore, there is no apparent reason why Applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent.
Claims 23-25, 29, 38-40 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 13-15, 17-20 of U.S. Patent No 11722597. Although, the conflicting claims are not identical, they are not patentably distinct from each other.
For example, Claim 23 of instant application are merely broader versions of claim 13 of patented application. Specifically claims 23 and 25 map to claim 13 of patented application. Further, Independent claim 38 of instant application are merely broader versions of claim 18 of patented application. Dependent claims 24 and 39 of instant application map to claims 18 and 19 of patented application, dependent claim 29 of instant application maps to claim 14 of patented application, and dependent claim 40 of instant application maps to claim 20 of patented application.
The claimed invention in the instant application is fully disclosed in the patent and it is broader than the claimed invention in the patent 11722597. No new invention or new improvement is being claimed in the instant application. Applicant is now attempting to claim broadly that which had been previously described in more detail in the claims of the patent (In re Van Ornum, 214 USPQ 761 CCPA 1982).
Furthermore, there is no apparent reason why Applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent.
Claims 23-25, 29 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 5-6, 8 of U.S. Patent No 11553083. Although, the conflicting claims are not identical, they are not patentably distinct from each other.
For example, Claim 23 of instant application are merely broader versions of claim 1 of patented application. Specifically claims 23 and 25 map to claim 1 of patented application. Dependent claim 24 of instant application map to claim 8 of patented application and dependent claim 29 of instant application maps to claims 5-6 of patented application.
The claimed invention in the instant application is fully disclosed in the patent and it is broader than the claimed invention in the patent 11553083. No new invention or new improvement is being claimed in the instant application. Applicant is now attempting to claim broadly that which had been previously described in more detail in the claims of the patent (In re Van Ornum, 214 USPQ 761 CCPA 1982).
Furthermore, there is no apparent reason why Applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent.
Claims 23-25, 29, 38-40 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1,5-7, 10, 28-21 of U.S. Patent No 10848618. Although, the conflicting claims are not identical, they are not patentably distinct from each other.
For example, Claim 23 of instant application are merely broader versions of claim 1 of patented application. Specifically claims 23 and 25 map to claim 1 of patented application. Dependent claim 24 of instant application map to claim 10 of patented application and dependent claim 29 of instant application maps to claims 5-7 of patented application. Further, Independent claim 38 of instant application are merely broader versions of claim 18 of patented application. Dependent claims 39-40 of instant application map to claims 19-20 of patented application respectively.
The claimed invention in the instant application is fully disclosed in the patent and it is broader than the claimed invention in the patent 10848618. No new invention or new improvement is being claimed in the instant application. Applicant is now attempting to claim broadly that which had been previously described in more detail in the claims of the patent (In re Van Ornum, 214 USPQ 761 CCPA 1982).
Furthermore, there is no apparent reason why Applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 23, 26, 29 and 30 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication No. 2020/0162509 to Ballot (“Ballot”).
As to claim 23, Ballot discloses a system for providing safe call back numbers, wherein the system is configured to establish and receive communications via a communication network using one or more client devices [Abstract, Figs. 1-6, pages 1-7], the system comprising: a message server configured to record and transcribe voice messages for a user of the one or more client device [paragraph 0028: “web server 310 may transcribe the audio data into text…”]; wherein the system is configured to: scan an electronic message inbox and/or a call history hosted on the message server or stored locally on the one or more client devices to detect fraud [paragraphs 0024, 0028-0030 (“the web server 310 may determine that the transcribed content includes a scam, or fraudulent content of some kind…”, 0038]; and analyze content of a communication feed from the electronic message inbox and/or the call history [paragraphs 0024, 0034, 0038].
As to claim 26, Ballot discloses wherein the electronic message inbox includes text or voice messages left or sent by a communicator to the user [paragraphs 0024, 0027: “voice note…”] .
As to claim 29, Ballot discloses wherein the remedy action includes at least one of a warning that the electronic message inbox and/or the call history includes fraudulent information [paragraphs 0022: “ the host platform 130 may notify the other user (e.g., seller device 120) that the communication session involves fraud”], blocking of the communicator from incoming and outgoing communications [paragraphs 0024, 0026, 0033] or an insertion of a visual indicator or icon next to the phone number in the message record that includes an alert that the phone number is suspicious [Fig. 2].
As to claim 30, Ballot discloses wherein the processor is further configured to determine that the communicator is unwanted or suspicious based on the comparing [paragraphs 0022, 0024, 0026, 0033]; and determine the entity contact data is not authentic based on the determination that the communicator is unwanted or suspicious [paragraphs 0035, 0041: “user account is labeled as suspicious…”].
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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 24 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2020/0162509 to Ballot (“Ballot”) in view of U.S. Patent Application Publication No. 2018/0007199 to Quilici et al. (“Quilici”).
As to claim 24, Ballot discloses the system of claim 23 [See rejection of claim 23].
Ballot further discloses wherein the message server is communicatively connected to a plurality of databases including a database of suspicious text/messaging patterns [paragraphs 0029, 0034] and a database of carriers and their scores [paragraphs 0030, 0038-39].
Ballot does not expressly disclose wherein the message server is communicatively connected plurality of databases including a fingerprinting database and a database of valid phone numbers or communication addresses.
In the same or similar field of invention, Quilici discloses wherein the message server is communicatively connected plurality of databases including a fingerprinting database [paragraphs 0033-0035] and a database of valid phone numbers or communication addresses [Quilici paragraphs 0021, 0031].
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify Ballot to have wherein the message server is communicatively connected plurality of databases including a fingerprinting database and a database of valid phone numbers or communication addresses as taught by Quilici. The suggestion/motivation would have been to provide technology to enable effective call blocking and provide full protection from unwanted phone calls [Quilici paragraph 0007].
Allowable Subject Matter
Claims 38-40 are allowed over prior art and would be allowable upon overcoming the nonstatutory double patenting rejection, set forth in this office action.
Claim 25 is objected to as being dependent upon a rejected base claim, but would be allowable upon overcoming the nonstatutory double patenting rejection, set forth in this Office action AND rewritten in independent form including all of the limitations of the base claim and any intervening claims and.
Claims 27-28, 31 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTIM G SHAH whose telephone number is (571)270-5214. The examiner can normally be reached Mon-Fri 7:30am-4pm.
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 at 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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/ANTIM G SHAH/Primary Examiner, Art Unit 2693
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