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 .
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,334,094 (hereinafter ‘094). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 recites subject matter similar to claim 1 of ‘094, but with a broader recitation. Claim 1 differs from the conflicting claim by reciting “an access telephone number” instead of “a bridge or access telephone number” throughout the claim. Claim 1 is therefore anticipated by the conflicting claim and is not patentably distinct.
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 (i.e., changing from AIA to pre-AIA ) 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)(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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lowman et al. (US 2013/0295899).
Regarding claim 1, Lowman teaches a method of providing telephone service, comprising:
automatically storing electronic information that indicates an association of a secondary telephone number (SLS number) and a primary telephone number (primary phone number) with a mobile device (telecommunications device (TD)) in a computer memory (central SLS database) associated with a server (SLS platform) (see “TD 110 is also associated with a primary phone number assigned to it by a primary service provider...” [par 27] and “Subscriber #1 associated with subscriber TD 110 already has mobile phone service via primary service provider 201 using mobile phone number 1.408.544.1212. Subscriber #1 subsequently subscribes to an SLS service provided by way of SLS platform 115 and is assigned SLS number (i.e., a second line number) 1.770.555.0001” [par 43] and Fig. 3A which illustrates central SLS database at SLS platform which stores the association of a primary number with a SLS number);
automatically associating an access telephone number (relationship number) with a contact telephone number (3rd party number) in the computer memory (see Fig. 3A which illustrates a relationship number associated with a 3rd party number);
automatically transmitting information that indicates the association of the access telephone number with the contact telephone number to the mobile device via a data channel (see “If the third party number is not recognized at decision block 506, then the "no" branch is followed to block 510. At block 510, the SLS platform 115 is contacted and at block 512 a next available relationship number is provided back to the SLS module 105” [par 67] and “Associate the Relationship Number with the 3rd Party Number [Fig. 5, item 514] and “Create record in Local SLS Dbase w/3rd Party Number and Relationship Number” [Fig. 5, item 515] and “In this way, certain embodiments of an SLS module 105 may communicate with an SLS platform 115 to designate and acquire a relationship number to a third party who has not been called by the subscriber before ( or, for that matter, a third party who has not placed a call to the subscriber before)… It is envisioned that an IP-based interaction over the TD's data service may be used by some embodiments” [par 63] which suggests that when a subscriber TD places a call to a 3rd party number that is not recognized in the local SLS database, the SLS platform provides, or transmits, a relationship number associated with a 3rd party for storage on the SLS module of the TD via IP or the TD’s data service, which reads on the claimed “data channel”);
automatically associating a primary telephone number and access telephone number pairing with a corresponding secondary telephone number and contact telephone number pairing in the computer memory (see Fig. 3A a primary number and SLS/2nd line number pairing is associated with a relationship number and 3rd party number pairing);
receiving, at a switch associated with the server, an outgoing call from the mobile device to the access telephone number via a second channel;
receiving, at the server, information from the switch indicating the outgoing call is being made to the access telephone number from the primary telephone number (see “Call from a 3rd party?”/NO” [Fig. 4A, item 404] which suggests that the SLS platform receives a call from a subscriber since the call is not from a 3rd party and “Call is to a Relationship Number/YES” [Fig. 4C, item 432] which suggests that the call is made to the relationship number, or “access telephone number” as claimed);
receiving, at the switch, information from the server directing the switch to:
(a) connect the outgoing call to the contact telephone number (see “At block 436, the SLS platform 115 may determine the actual third party number with which the relationship number and the SLS number combination is associated…At block 440, the call is connected to the third party TD 120” [par 62]), and
(b) identify a telephone number from which the outgoing call is being made as the secondary telephone number (see “At block 434, the central SLS database 116 is queried for the relationship number in combination with the SLS number from which the call originated…The calling party field of the call is populated with the subscriber's SLS number so that the third party will associate the incoming call with the second line number of the subscriber
and not the primary number of the subscriber” [par 62] which suggests the SLS platform queries, or identifies, that the call is being made from the subscribers SLS number).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nam T Huynh whose telephone number is (571)272-5970. The examiner can normally be reached 9am-5pm.
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, Alison Slater can be reached at 571-270-0375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NAM T HUYNH/Primary Examiner, Art Unit 2647
Prosecution Insights