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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 7/13/2026 is acknowledged. The requirement has been made final.
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) 1-7 and 21-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Balan et al. (2013/0331073) hereinafter “Balan” and Choi et al. (2014/0307040) hereinafter “Choi”.
As to claim 1. (Original) Balan discloses A method comprising:
receiving, from a first user device (210), a communication (call) comprising supplemental data (see [0028]: “image content… and other caller-specific data”) and one or more identifiers associated with a second user device (see [0035]: “mobile device number (MDN) corresponding to recipient device 260…”);
determining, based on the one or more identifiers associated with the second user device, that the second user device is not configured to process the supplemental data (see [0038]: “…SCP 240 sends the caller-specifc image content to the recipient mobile device 260 via the established data connection (S7). Prior to sending the requested image data, SCP 240 may first determine whether the recipient device 260 is a device capable of receiving the image and other caller-specific data… e.g., from the stored subscriber account information associated with the device…”).
Balan is silent to yet in an analogous art, Choi discloses
causing the second user device to output an audio representation of the supplemental data (see [0144]: “… In other words, the driver automatically converts the information (or audio (music), etc) of the website into a voice to output it through the audio output unit 226 of the telematics terminal 200 since viewing information (for example, video, website, etc) other than navigation information is prohibited due to the road traffic act…”), & [0145]. Before the effective filing date of the instant invention it would have been obvious to one of ordinary skill in the art to modify Balan to cause the second user device to output an audio representation of the supplemental data, as taught by Choi for the purpose of enabling audio communication despite viewing issues.
As to claim 2. (Original) The combination of Balan and Choi discloses the method of claim 1, Balan discloses wherein the communication comprises a communication request (see [0033]: “voice call (S1)”), and wherein the supplemental data comprises rich call data (caller-specific information including image data associated with the subscriber”).
As to claim 3. (Original) The combination of Balan and Choi discloses the method of claim 1, Balan discloses wherein causing the second user device to output the audio representation of the supplemental data comprises causing the second user device to play a pre-call announcement ([0036]: “…for display with the incoming call notification” – thus prior to answering call, the combination above would result in the “playing”, & [0040]), and wherein determining the second user device is not configured to process the supplemental data is based on the one or more identifiers associated with the second user device (based on account details accessible from MDN, as applied above).
As to claim 4. (Original) The combination of Balan and Choi discloses the method of claim 1, Balan discloses wherein the supplemental data comprises image data configured to be output by a display (see Fig 3, and [0013]: “such image content may include… including a slogan or tagline…”), Choi disclosing the method further comprising: converting the supplemental data to text data; and converting the text data to audio data. See [0144]-[0145].
As to claim 5. (Original) The combination of Balan and Choi discloses the method of claim 1, Balan discloses further comprising: receiving, from the second user device, a user input; and opening, based on the user input, a communication session between the first user device and the second user device. Implied by Fig 3, [0042]: “As shown in Fig 3, an incoming call screen 300 includes various user controls for either answering or declining the incoming call…”.
As to claim 6. (Original) The combination of Balan and Choi discloses the method of claim 1, Balan discloses further comprising: determining, based on a user input associated with the second user device, a communication session open command; and opening, based on the communication session open command, a communication session between the first user device and the second user device. Implied by Fig 3, [0042]: “As shown in Fig 3, an incoming call screen 300 includes various user controls for either answering or declining the incoming call…”.
As to claim 7. (Original) The combination of Balan and Choi discloses the method of claim 1, is silent to yet the examiner takes official notice that each of sending, to a call log server, text data; and sending, to the second user device, a pre-recorded voicemail message were well known in the art before the effective filing date of the instant invention and before the effective filing date of the instant invention it would have been obvious to one of ordinary skill in the art to further implement sending, to a call log server, text data; and sending, to the second user device, a pre-recorded voicemail message for the purpose of performing the routine functions and thereby providing the expected services.
Claims 21-27 read on SCP 240, (see [0053], Figs 5-6), and corresponding method claims 1-7.
Claims 28-34 read on memory units in Figs 5-6 and corresponding method claims 1-7.
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 1-7 and 21-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-10, 16-19, 21, & 24 of copending Application No. 18/895,803 – PgPub 2026/0089196 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because. The independent claims generally overlap with the differences having shown to be obvious, as applied above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 and 21-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4, 9-12, and 19-21 of copending Application No. 18909587 – PgPub 2026/0101158 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because. The independent claims generally overlap with the differences having shown to be obvious, as applied above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Seay (10178230) provides for (steps 550-555 , cols 17-18) converting supplemental data with text to speech, step 560+ of accepting com.
Khoshaba et al. (2018/0007196) provide for prerecorded audio message and text to speech. See abstract…
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESTER KINCAID whose telephone number is (571)272-7922. The examiner can normally be reached M-Th: 7-5.
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/LESTER G KINCAID/Primary Examiner, Art Unit 2649
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