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 .
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on 10/08/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
3. The drawings were received on 07/05/2024. These drawings are considered by examiner.
Claim - 35 USC § 101
4. Claims 15-20 recites “A non-transitory computer readable storage medium” are deemed in compliance with the requirement of 35 U.S.C. 101, and are eligible claims.
Terminal Disclaimer
5. Examiner suggests the Assignee must submit the Terminal Disclaimer accordingly, in order to process of the application promptly.
Double Patenting
6. 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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,081,697 as further detailed in the table below:
Instant Application
United States Patent No. 12,081,697
Claim 1. A method, comprising:
determining whether to transmit to a mobile device that an inbound call has an elevated likelihood of being a scam call based on an inbound call origination source location;
creating a call block rule for a predefined period of time; and
blocking the inbound call to the mobile device.
Claim 1, A method, comprising: determining whether to transmit to a mobile device that an inbound call has an elevated likelihood of being a scam call based on an inbound call origination source location;
wherein when the mobile device is identified as not actively roaming,
creating a call block rule for a predefined period of time,
wherein the call block rule blocks all inbound calls to the mobile device at a protected carrier network.
Claim 2
Claim 2
Claim 3
Claim 3
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 6
Claim 7
Claim 7
Claim 8. An apparatus, comprising:
a processor configured to
determine whether to transmit to a mobile device that an inbound call has an elevated likelihood of being a scam call based on an inbound call origination source location;
create a call block rule for a predefined period of time; and
block the inbound call to the mobile device.
Claim 8. An apparatus, comprising:
a processor configured to
determine whether to transmit to a mobile device that an inbound call has an elevated likelihood of being a scam call based on an inbound call origination source location;
wherein when the mobile device is identified as not actively roaming,
create a call block rule for a predefined period of time,
wherein the call block rule blocks all inbound calls to the mobile device at a protected carrier network.
Claim 15. A non-transitory computer readable storage medium configured to store instructions that when executed cause a processor to perform:
determining whether to transmit to a mobile device that an inbound call has an elevated likelihood of being a scam call based on an inbound call origination source location;
creating a call block rule for a predefined period of time; and
blocking the inbound call to the mobile device.
Claim 15. A non-transitory computer readable storage medium configured to store instructions that when executed cause a processor to perform:
determining whether to transmit to a mobile device that an inbound call has an elevated likelihood of being a scam call based on an inbound call origination source location;
wherein when the mobile device is identified as not actively roaming,
creating a call block rule for a predefined period of time,
wherein the call block rule blocks all inbound calls to the mobile device at a protected carrier network.
Claims 9, 16
Claims 9, 16
Claims 10, 17
Claims 10, 17
Claims 11, 18
Claims 11, 18
Claims 12, 19
Claims 12, 19
Claims 14, 20
Claims 14, 20
Although the conflicting claims are not identical, they are not patentably distinct from each other because the Patent claims include all the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, " a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claim preclude issuance of generic application claims”).
Claim Rejections - 35 USC § 103
7. 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.
8. 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.
9. Claims 1, 6-8, 13-15, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et all (US 2010/0124916), hereinafter “Kim“, in view of Sharpe (US 2019/0335036), hereinafter “Sharpe“.
Regarding claim 1, Kim teaches a method, comprising:
determining whether to transmit to a mobile device that an inbound call has an elevated likelihood of being a scam call based on an inbound call origination source location (pars [0014-0015] [0050]);
Kim does not explicitly teach creating a call block rule for a predefined period of time; and blocking the inbound call to the mobile device.
Sharpe, in the same field of endeavor, teaches creating a call block rule for a predefined period of time; and blocking the inbound call to the mobile device (pars [0004] [0020], and [0075]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to provide the above teaching of Kim to Sharpe, in order to provide the systems for controlling inbound and/or outbound calls to prevent the scam calls, spam calls, fraud calls, and/or unwanted calls (as suggested by Sharpe in paragraphs [0002-0003]).
Regarding Claims 6, 13, 20, the combination of Kim and Sharpe teach the method of claims 1, 8, 15, Kim does not clearly teach comprising determining the inbound call intended for the mobile device is assigned an origination telephone number that is subscribed to a protected carrier network.
Sharpe, in the same field of endeavor teaches determining the inbound call intended for the mobile device is assigned an origination telephone number that is subscribed to a protected carrier network (par [0020]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to provide the above teaching of Kim to Sharpe, in order to provide the systems for controlling inbound and/or outbound calls to prevent the scam calls, spam calls, fraud calls, and/or unwanted calls (as suggested by Sharpe in paragraphs [0002-0003]).
Regarding Claims 7 and 14, the combination of Kim and Sharpe teach the method of claims 1, 8, Kim does not clearly teach comprising identifying the inbound call is intended for the mobile device based on a called number included in a call data message received with the inbound call.
Sharpe, in the same field of endeavor teaches comprising identifying the inbound call is intended for the mobile device based on a called number included in a call data message received with the inbound call (pars [0004-0005])
Therefore, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to provide the above teaching of Kim to Sharpe, in order to provide the systems for controlling inbound and/or outbound calls to prevent the scam calls, spam calls, fraud calls, and/or unwanted calls (as suggested by Sharpe in paragraphs [0002-0003]).
Regarding claim 8, Kim teaches an apparatus, comprising:
a processor configured to (Figure 2)
determine whether to transmit to a mobile device that an inbound call has an elevated likelihood of being a scam call based on an inbound call origination source location (pars [0014-0015] [0050]);
Kim does not explicitly teach create a call block rule for a predefined period of time; and block the inbound call to the mobile device (pars [0004] [0020], and [0075]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to provide the above teaching of Kim to Sharpe, in order to provide the systems for controlling inbound and/or outbound calls to prevent the scam calls, spam calls, fraud calls, and/or unwanted calls (as suggested by Sharpe in paragraphs [0002-0003]).
Regarding claim 15, Kim teaches a non-transitory computer readable storage medium configured to store instructions that when executed cause a processor to perform (Figure 2):
determining whether to transmit to a mobile device that an inbound call has an elevated likelihood of being a scam call based on an inbound call origination source location (pars [0014-0015] [0050]);
Kim does not explicitly teach creating a call block rule for a predefined period of time; and blocking the inbound call to the mobile device.
Sharpe, in the same field of endeavor, teaches creating a call block rule for a predefined period of time; and blocking the inbound call to the mobile device (pars [0004] [0020], and [0075]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to provide the above teaching of Kim to Sharpe, in order to provide the systems for controlling inbound and/or outbound calls to prevent the scam calls, spam calls, fraud calls, and/or unwanted calls (as suggested by Sharpe in paragraphs [0002-0003]).
Allowable Subject Matter
10. Claims 2-5, 9-12, 16-19 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.
As to claims 2, 9, 16, the prior art of record fails to disclose determining whether the inbound call originated from a protected carrier network or an out-of-network carrier network comprises determining whether one or more call parameters identify an origination device address registered with the protected carrier network or with the out-of-network carrier network as specified in the claim.
Conclusion
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL T VU whose telephone number is (571)272-8131. The examiner can normally be reached on 8:00AM to 6:00PM.
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, Charles Appiah can be reached on (571-272-7904. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL T VU/
Primary Examiner, Art Unit 2641
Prosecution Insights