DETAILED ACTION
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-9 and 16-18, drawn to a method/device of recording communications transmitted via an Internet Protocol Multimedia Subsystem (IMS) network classified to H04M 3/4221.
II. Claims 10-15, drawn to an application server for enabling recording of communications transmitted via an Internet Protocol Multimedia Subsystem (IMS) network, and a communications network adapted to record communications transmitted there through classified to H04M 2203/01.
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, Group I has a method/device of recording communications transmitted via an Internet Protocol Multimedia Subsystem (IMS) network. Group II has an application server for enabling recording of communications transmitted via an Internet Protocol Multimedia Subsystem (IMS) network, and a communications network adapted to record communications transmitted. See MPEP § 806.05(d).
During a telephone conversation with Mr. Erik Lund on August 6, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claim 1-9 and 16-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10-15 were withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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 1-9 and 16-18 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-14 Patent No. 12,120,264 B2.
Although the conflicting claims are not identical, they are not patentably distinct from each other because claims in the continuations are broader than the ones in patent, broad claims in the continuation application are rejected previously patented narrow claims. For example, claim 1 of the present invention is the same as claim 1 of Patent No. 12 B2 except that “wherein the recording device is determined by processing the subscriber configuration data.” Therefore, claim 1 of the present invention is broader than the patented claim 1.
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)(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.
Claims 1-7 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by U.S Pub. No. 2010/0118865 A1 to JUNG et al. (hereinafter “JUNG”).
Regarding claim 1, JUNG teaches a method of recording communications transmitted via an Internet Protocol Multimedia Subsystem (IMS) network (Fig.1 and paragraph [0033]; mobile communication system includes an IMS server 112 and a recording server 114 of a calling IMS network 110 and an IMS server 122 and a recording server 124 of a called IMS network 120), the method comprising:
receiving a call request from a first party to call a second party (Abstract, paragraphs [0045]- [0046]; recording service management unit 204 controls SIP signaling for the recording service with the recording server 220 under instruction of the controller 202 and setting a path of bearer traffic for recording a conversation between the calling portable terminal and the called portable terminal, in response to a recording request);
querying a network-based database comprising a plurality of subscriber profiles to obtain subscriber configuration data relating to at least one of the first party and the second party (paragraphs [0040]- [0042]; when a call is initiated by a registered subscriber, the IMS server enables Session Initiation Protocol (SIP) signaling to go through the recording server, using the stored the iFC. Here, the HSS is authorized to store and manage user information, which includes service related information, and send the user information to an IMS servers);
causing a first media stream to be transmitted between the first party and a Media Resource Function (MRF) (paragraphs [0041]- [0042] and [0077]; the calling recording server 603 transmits the received request to a Media Resource Functional (MRF) module 604 using an "INVITE" message included in SIP in step 615, and in step 616, the MRF module 604 transmits a response message "200 OK" including an address of the MRF module 604 to the calling recording server 603);
causing a second media stream to be transmitted between the MRF and the second party (paragraphs [0077]- [0080] and [0108]- [0109]; the calling recording server 603 transmits the received request to a Media Resource Functional (MRF) module 604 using an "INVITE" message included in SIP in step 615, and in step 616, the MRF module 604 transmits a response message "200 OK" including an address of the MRF module 604 to the calling recording server 603); and
processing the subscriber configuration data to select a recording device for recording at least part of a call between the first party and the second party; and causing the MRF to transmit a third media stream from the MRF to the selected recording device (paragraphs [0034]-[0035],[0042] and [0084]; the recording server 122 notifies the recording service, which is now turned on, to the service subscriber 100 and the subscriber 100 may select whether or not to allow the subscriber 102 to record the conversation. When the SIP signaling, which includes recording request information, is received, the subscriber 100 is able to reject the recording service. The MRF 126 may record the voice call using its linkage with the recording server 122).
Regarding claim 2, JUNG teaches the method according to claim 1, further comprising processing the subscriber configuration data to select the MRF prior to transmitting the first media stream (paragraphs [0034]- [0035], [0042] and [0084]; the recording server 122 notifies the recording service, which is now turned on, to the service subscriber 100 and the subscriber 100 may select whether or not to allow the subscriber 102 to record the conversation. When the SIP signaling, which includes recording request information, is received, the subscriber 100 is able to reject the recording service. The MRF 126 may record the voice call using its linkage with the recording server 122).
Regarding claim 3, JUNG teaches the method according to claim 1, comprising: monitoring whether the third media stream is delivered to the recording device; and performing at least one predetermined action based on the monitoring, wherein the at least one predetermined action to be performed is determined by processing the subscriber configuration data (paragraphs [0038]-[0042]; the recording server 122 notifies the recording service, which is now turned on, to the service subscriber 100 and the subscriber 100 may select whether or not to allow the subscriber 102 to record the conversation. When the SIP signaling, which includes recording request information, is received, the subscriber 100 is able to reject the recording service. The MRF 126 may record the voice call using its linkage with the recording server 122).
Regarding claim 4, JUNG teaches the method according to claim 3, wherein the monitoring comprises continuously receiving a notification indicating whether the third media stream is being delivered to the recording device (paragraph [0042]; the recording server 122 notifies the recording service, which is now turned on, to the service subscriber 100 and the subscriber 100 may select whether or not to allow the subscriber 102 to record the conversation. When the SIP signaling, which includes recording request information, is received, the subscriber 100 is able to reject the recording service. The MRF 126 may record the voice call using its linkage with the recording server 122).
Regarding claim 5, JUNG teaches the method according to claim 3, wherein when it is determined in the monitoring that the third media stream is not delivered to the recording device, the at least one predetermined action comprises stopping transmission of at least one of the first media stream or the second media stream (paragraph [0036]; the portable terminals 100 and 102 start and stop the recording service. More specifically, each of the calling portable terminal 100 and a called portable terminal 102 may request the recording service when connecting to each other or after a connection is complete)
Regarding claim 6, JUNG teaches the method according to claim 1, wherein the third media stream is established by sending a Session Initiation Protocol (SIP) invite to a Session Border Controller (SBC) associated with the recording device (paragraphs [0044]- [0046]; the controller 202 provides overall control of the portable terminal 200. Specifically, the controller 202 controls voice calls and data communications. In addition to typical functions, the controller 202 controls SIP signaling for a recording service, when the portable terminal 200 is connected to or trying to connect with a counter-part).
Regarding claim 7, JUNG teaches the method according to claim 1, wherein the subscriber configuration data is processed to determine a manner in which the call is established including any of: a manner in which any of the first party and the second party are notified that the call is being recorded; and a manner in which the third media stream is generated (Abstract and paragraph [0042]; when the MRF 126 supports the recording service, the may perform the recording service. That is, the recording server 122 notifies the recording service, which is now turned on, to the service subscriber 100 and the subscriber 100 may select whether or not to allow the subscriber 102 to record the conversation).
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 (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 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 16- 18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S Pub. No. 2010/0118865 A1 to JUNG et al. (hereinafter “JUNG”) in view of U.S Pub. No. 2014/0179309 A1 to Eichen et al. (hereinafter “Eichen”).
Regarding claim 16, JUNG teaches a user device comprising at least one processor and at least one computer-readable storage medium, the computer-readable storage medium storing instructions which, when executed by the at least one processor (please see Fig.2 RECORDING SERVICE MANAGEMENT UNIT 204), cause the at least one processor to:
receive a user input indicative of a decision to make a call to a second party using a call recording service (Abstract, paragraphs [0045]- [0046]; recording service management unit 204 controls SIP signaling for the recording service with the recording server 220 under instruction of the controller 202 and setting a path of bearer traffic for recording a conversation between the calling portable terminal and the called portable terminal, in response to a recording request) ; and wherein the subscriber configuration data specifies a recording device for recording at least part of a call between the user device and the second party (paragraphs [0044]-[0048]; The recording service management unit 204 controls SIP signaling for the recording service with the recording server 220 under instruction of the controller 202 and setting a path of bearer traffic for recording a conversation between the calling portable terminal and the called portable terminal, in response to a recording request).
However, JUNG does not explicitly teach select an identity associated with the user device, wherein the selected identity is associated with subscriber configuration data stored in a database in a communications network,; and use a Mobile Station International Subscriber Directory Number, MSISDN, associated with the selected identity to make the call.
In the same field of endeavor, Eichen discloses select an identity associated with the user device, wherein the selected identity is associated with subscriber configuration data stored in a database in a communications network,; and use a Mobile Station International Subscriber Directory Number, MSISDN, associated with the selected identity to make the call (paragraphs [0040]-[0041] and [0046]; corporate MDN field 520 stores a MDN associated with a corporate account of the individual subscriber identified in field 505. Corporate UE ID(s) field 525 stores a unique identifier associated with each of one or more UEs associated with the subscriber's corporate account. Unique IDs associated with multiple UEs may be stored in field 525 to permit the implementation of a "bridged line appearance" where a call to the corporate MDN identified in field 520 simultaneously "rings" at the multiple UEs identified in field 525. Service profiles field 530 stores a personal service profile that specifies service parameters associated with the personal MDN identified in field 510, and a corporate service profile that specifies service parameters associated with the corporate MDN identified in field 520).
At the time of the effective filing date of the invention, it would have been obvious to a person of ordinary skilled in the art to modify Endo’s teaching with a feature of select an identity associated with the user device, wherein the selected identity is associated with subscriber configuration data stored in a database in a communications network,; and use a Mobile Station International Subscriber Directory Number, MSISDN, associated with the selected identity to make the call taught by Eichen so the user can conduct recording or calls from the mobile device by selecting any one of the multiple Directory Number (MDN) (paragraph [0017]; Eichen).
Regarding claim 17, JUNG teaches the user device according to claim 16, wherein the subscriber configuration data further specifies a manner in which any of the user device and the second party are notified that the call is being recorded (paragraphs [0038]-[0042]; the recording server 122 notifies the recording service, which is now turned on, to the service subscriber 100 and the subscriber 100 may select whether or not to allow the subscriber 102 to record the conversation. When the SIP signaling, which includes recording request information, is received, the subscriber 100 is able to reject the recording service. The MRF 126 may record the voice call using its linkage with the recording server 122).
Regarding claim 18, JUNG teaches the user device according to claim 16, wherein the subscriber configuration data further specifies Media Resource Function (MRF) to be selected for transmitting a first media stream between the user device and the MRF, a second media stream between the second party and the MRF and a third media stream from the MRF to the selected recording device (paragraphs [0034]-[0035],[0042] and [0084]; the recording server 122 notifies the recording service, which is now turned on, to the service subscriber 100 and the subscriber 100 may select whether or not to allow the subscriber 102 to record the conversation. When the SIP signaling, which includes recording request information, is received, the subscriber 100 is able to reject the recording service. The MRF 126 may record the voice call using its linkage with the recording server 122).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over U.S Pub. No. 2010/0118865 A1 to JUNG et al. (hereinafter “JUNG”) in view of U.S Pub. No. 20110116492 A1 to BYRON et al. (hereinafter “BYRON”).
Regarding claim 8, JUNG does not explicitly teach the method according to claim 1, wherein the third media stream is generated by: forking either of the first or second media streams; or mixing the first and second media streams.
In the same field of endeavor, BYRON discloses wherein the third media stream is generated by: forking either of the first or second media streams; or mixing the first and second media streams (Abstract, paragraphs [0039], [0075] and [0088]; the gateway receives data with a first address on a recording server for sending forked caller stream media and a second address on the recording server for sending forked called party stream media. The gateway sends forked media from the caller stream to the first address and forked media from the called party media to the second address).
At the time of the effective filing date of the invention, it would have been obvious to a person of ordinary skilled in the art to modify JUNG’s teaching with a feature of wherein the third media stream is generated by forking either of the first or second media streams; or mixing the first and second media streams as taught by BYRON in order to data indicating a media forking capability is sent in response to receiving the call request (paragraph [0023], BYRON).
Regarding claim 9, JUNG does not teach the method according to claim 1, wherein the third media stream is generated by forking either of the first or second media streams, and the MRF is caused to transmit a fourth media stream from the MRF to the recording device, the fourth media stream being generated by forking the other of the first or second media streams.
In the same field of endeavor, BYRON discloses wherein the third media stream is generated by forking either of the first or second media streams, and the MRF is caused to transmit a fourth media stream from the MRF to the recording device, the fourth media stream being generated by forking the other of the first or second media streams (Abstract, paragraphs [0039], [0075] and [0088]; the gateway receives data with a first address on a recording server for sending forked caller stream media and a second address on the recording server for sending forked called party stream media. The gateway sends forked media from the caller stream to the first address and forked media from the called party media to the second address).
At the time of the effective filing date of the invention, it would have been obvious to a person of ordinary skilled in the art to modify JUNG’s teaching with a feature of wherein the third media stream is generated by forking either of the first or second media streams, and the MRF is caused to transmit a fourth media stream from the MRF to the recording device, the fourth media stream being generated by forking the other of the first or second media streams as taught by BYRON in order to data indicating a media forking capability is sent in response to receiving the call request (paragraph [0023], BYRON).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AKELAW A TESHALE whose telephone number is (571)270-5302. The examiner can normally be reached 9 am -6pm.
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AKELAW TESHALE
Primary Examiner
Art Unit 2694
/AKELAW TESHALE/Primary Examiner, Art Unit 2694
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