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
The information disclosure statements (IDS) submitted on 09/15/2025 and 12/01/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,137,128 in view of US Publication No. 2012/0093146. Although the claims at issue are not identical, they are not patentably distinct from each other. When claims in the pending application are broader than the ones in the patent, the broad claims in the pending application are rejected under obviousness type double patenting over previously patented narrow claims, In re Van Ornum and Stang, 214 USPQ 761. For example, claim 1 of the pending application has the same limitations as claim 1 of the patent except for: generating and inserting a card data object which includes a link within header of the incoming call intended for the mobile device.
However, U.S. Publication No. 2012/0093146 to Blomkvist discloses ([0059]) calling party defines what type of information he would like to present to the called party. Information typically comprise descriptors as mentioned above, "Subject of voice call" specified or verified by the calling party. This information may also contain links to URL-sites on the web from which further information such as pictures, ring tones etc. may be available. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the instant claims with the teachings of Blomkvist to arrive at the patented claims in order to trigger the generating step to insert the card data object. Independent claims 8 and 15 and the dependent claims of the instant application similarly correspond to claims 8, 15 and the dependent claims of the patent. Therefore, claims 1-20 of the pending application are rejected under obviousness type double patenting over previously patented narrow claims.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 7-12 and 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over RFC 9796 “SIP Call-Info Parameters for Rich Call Data” in view of “U.S. Publication No. 2012/0093146 (“Blomkvist”).
Regarding claim 1, RFC 9796 discloses a method comprising:
forwarding, via a processor, an incoming call to a mobile device RFC: sec. 1, allows called parties
to receive a more comprehensive and extensible set of Rich Call Data (RCD) for incoming calls), wherein a header associated with the incoming call comprises a link (RFC: sec. 7 call-info header includes a link) and
responsive to the incoming call being placed to the mobile device, the mobile device identifies the header and downloads data from the link (RFC, sec. 5, URI in call-info header pointing to a downloadable jCard data, including a name and reason for the incoming call as a string of information (RFC, sec. 10, SIP INVITE could be used to represent the RCD information using two Call-Info header fields of the logo and calling name have passed verification; sec. 6, Call-Info header field parameter 'call-reason' conveys the caller's intent or reason for calling)
RFC 9796 does not specify building an incoming call screen using an image, a name associated with a calling entity, and a reason for the incoming call as a string of information loaded on the mobile device. wherein a header associated with the incoming call comprises a link and downloads data from the link the information to build the incoming call screen.
In a similar field of endeavor, Blomkvist teaches incoming call image presentation system in which mobile device identifies caller information (fig. 4, [0089] the called party reacts to the information as presented in step 414 by the information presenting unit 212 of the called party device 200).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify teachings of RFC 9796 to including building a display with information about a calling party as both references are directed to improving the information presented to a called party before the call is answered. The user display provide improved caller identification with visual data.
Claim 8 recites an apparatus comprising a processor configured to perform the method recited in claim 1. Blomkvist discloses receiving device (fig. 2, second party device) corresponding to the claimed apparatus comprising a processor. Thus claim 8 is rejected in view of RFC 9796 and Blomkvist for the same reasons discussed in claim 1 above.
Claim 15 recites a non-transitory computer readable storage medium configured to store instructions that when executed cause a processor to perform the method recited in claim 1. Blomkvist discloses a non-transitory machine-readable medium comprises a machine-readable medium carrying instructions for execution by the machine ([0035] memory unit connected to control unit to receive voice call related information). Thus claim 8 is rejected in view of RFC 9796 and Blomkvist for the same reasons discussed in claim 1 above.
Regarding claims 2, 9 and 16, RFC 9796 and Blomkvist discloses the method of claim 1, comprising interrogating a call notification of the incoming call to determine whether the enhanced call content is associated with the incoming call (Blomkvist, [0059] The calling party may use the user input unit 102 to insert entries to these descriptors; [0063] caller record is sent to the called party in step 304).
Regarding claims 3, 10 and 17, RFC 9796 and Blomkvist discloses the method of claim 1, comprising receiving a confirmation message that the description of the reason was extracted and loaded on the mobile device (Blomkvist, [0018] receiving by the first party device over the packet switched network an acknowledgement from the second party device of receipt of the voice call related information, and wherein the step of sending a call setup is performed in dependence of receiving the acknowledgement).
Regarding claims 4, 11 and 18, RFC 9796 and Blomkvist discloses the method of claim 3, comprising holding the incoming call in suspension (Blomkvist, [0093] the circuit switched voice call setup is put on hold during a certain time, during which the voice call related information is awaited); and forwarding the call to the mobile device after receiving the confirmation message (Blomkvist, Fig. 3, sending the caller record comprising the caller phone number in real time over a packet switched network 304).
Regarding claims 5, 12 and 19, RFC 9796 and Blomkvist discloses the method of claim 1, comprising holding the call in suspension; and creating content identified from a URL on a display of the mobile device prior to connecting the incoming call to the mobile device (Blomkvist, Fig. 4, task 414, [0086] presenting the caller record associated with the matching phone number to the called user).
Regarding claims 7 and 14, RFC 9796 and Blomkvist discloses wherein the URL is a JAVASCRIPT object notation (JSON) object (RFC, sec. 5, jCard, JSON object).
Claims 6, 13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over RFC 9796 “SIP Call-Info Parameters for Rich Call Data” in view of “U.S. Publication No. 2012/0093146 (“Blomkvist”)and further in view of WO 2006/080819 (“Bae”).
Regarding claims 6, 13 and 20, RFC 9796 and Blomkvist discloses the method of claim 5, wherein the content created is an image identified from the URL (RFC and Blomkvist, col. 8, lines 20-22 the context information 506 can include a logo or other image data). They do not specify a “base64 image”.
In a similar field of endeavor, Bae discloses a method of transmitting various multimedia alerting information such as voice, picture, moving image and text information, based on intention, preference and taste of a sender. The body of the SIP Invite message has image data encoded in the base64 form, which is inserted in the form of "Content-Type: image/jpeg". In addition to the voice of the sender, a picture of the sender can also be transmitted after being encoded.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the image data in RFC 9796 and Blomkvist to be encoded as base64 image as disclosed by Bae in order to be added into the SIP identity header.
Conclusion
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/JIRAPON TULOP/Examiner, Art Unit 2693
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