Detailed Action
1. This Action is in response to Applicant's Patent Application filed on July 29, 2024. Claims 1-28 have been canceled, and claim 29 has been newly added via preliminary amendment, therefore claim 29 is currently pending in the present application. This Action is made Non-Final.
America Invents Act (AIA ) Information
2. 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
3. The information disclosure statement(s) submitted within this application (has/have) been considered by the Examiner and made of record in the application file.
Double Patenting
4. Claim 29 of this application conflict with claim 1 of Patent No. US 12,051,088 B2. 37 CFR 1.78(b) provides that when two or more applications filed by the same applicant contain conflicting claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the conflicting claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
5. A rejection based on double patenting of the "same invention" type finds its support in the language of 35 U.S.C. 101 which states that "whoever invents or discovers any new and useful process ... may obtain a patent therefor ..." (Emphasis added). Thus, the term "same invention," in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957); and In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the conflicting claims so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Instant Application No. 18/786,899 U. S. Patent No. 12,051,088 B2
29. (New) A system for automatically sending a message to a mobile device connected to a Mobile Operator's network, the message being configured to display a request to add contact information of a business to a phonebook of the mobile device, the system comprising: a call switch, billing platform, or Home Location Registry (HLR) of a Mobile Operator's wireless cellular or data network, configured to determine that a call connected from the mobile device to a destination address associated with a business has disconnected; a server operably connected to the call switch, billing platform, or HLR via an Application Programming Interface and configured to: upon receipt from the call switch, billing platform, or HLR of an indication that a call connected from the mobile device to the destination address has disconnected, prepare a first communication comprising an originating address associated with the mobile device, the destination address, and a message comprising: a request to add contact information of the business to the phonebook of the mobile device and an actionable response option configured to accept the request when selected on the mobile device;
and a command configured to instruct the mobile device to display the message on a screen of the mobile device; send the first communication from the server to the mobile device; receive a response from the mobile device indicating that the request was accepted; and an application installed on a SIM card of the mobile device and configured to execute the command to display the message on the screen of the mobile device and to add the contact information to the phonebook of the mobile device when the actionable response option is selected on the mobile device.
//Examiner’s Analysis: as shown above, claim 29 of the instant application and claim 1 of the Patent case are identical.
1. A system for automatically sending a
message to a mobile device connected to a Mobile Operator's network, the message being configured to display a request to add contact information of a business to a phonebook of the mobile device, the system comprising: a call switch, billing platform,
or Home Location Registry (HLR) of a Mobile Operator's wireless cellular or data network, configured to determine that a call connected from the mobile device to a destination address associated with a business has disconnected; a server operably connected to the call switch, billing platform, or HLR via an Application Programming Interface and configured to: upon receipt from the call switch, billing platform, or HLR of an indication that a call connected from the mobile device to the destination address has disconnected, prepare a first communication comprising an originating address associated with the mobile device, the destination address, and a message comprising: a request to add contact information of the business to the phonebook of the mobile device and an actionable response option configured to accept the request when selected on the mobile device;
and a command configured to instruct the mobile device to display the message on a screen of the mobile device; send the first communication from the server to the mobile device; receive a response from the mobile device indicating that the request was accepted; and an application installed on a
SIM card of the mobile device and configured to execute the command to display the message on the screen of the mobile device and to add the contact information to the phonebook of the mobile device when the actionable response option is selected on the mobile device.
Conclusion
6. The following prior arts are made of record and not relied upon, but is considered pertinent to applicant's disclosure:
US 20130343543 A1: discloses receiving input that first-level security call is being promoted to second-level security call…
US 20150256672 A1: discloses device and system of providing caller identification information to a user of a wireless device…
7. Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Marcos Batista, whose telephone number is (571) 270-5209. The Examiner can normally be reached on Monday-Friday from 8:00am to 5:00pm.
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, Rafael Pérez-Gutiérrez can be reached at (571) 272-7915. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/MARCOS BATISTA/Primary Examiner, Art Unit 2642
July 21, 2026
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