DETAILED ACTION
Claim Rejections - 35 USC § 102
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.
Claims 1-5, 7-12, 14-17 and 19-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lefar et al. (US 8,817,063).
Regarding claim 1, Lefar et al. (hereinafter “Lefar”) teaches a method (i.e., a method for recording voice or video message from a caller; see the Abstract), comprising:
initiating a call using a telephony service of a unified communications as a service (UCaaS) software platform (i.e., telecommunications service provider network 206 comprising a call processing system 240 and a message system 250 (col.6, lines 38-40), as shown in figure 2, wherein the call processing system 240 receives a call request initiated from the caller (user A device 202), the message system 250 further includes a voicemail system 262 (col.7, lines 14-29) and the telecommunications service provider network 206 can provide telecommunication services to a plurality of end-user devices (e.g., User A and B devices 202, 204) via one or more networks 210, such as IP telephone system 120 or PSTN/cellular provider 130, performed as UCaaS software platform (col.6, lines 4-13));
presenting a first in-call option to record an audio-only voicemail message and a second in-call option to record a video message (i.e., the voicemail system 262 provides user A the option to select between leaving an audio message and a video message for user B; col.7, lines 39-49); and
recording, based on selection of the second in-call option (if the user A wishes to leave a video message; col.7, lines 49-52), the video message using a video service of the UCaaS software platform (i.e., after user A makes a selection to leave a video message, a video message is recorded by a video camera of the user A’s device and, using a video service of the message system 250 to upload to message storage module 264 for storage and transmitting to the user B; col.8, lines 20-46).
Regarding claim 2, Lefar further teaches limitations of the claim in col.7, line 65 through col.8, line 2.
Regarding claim 3, Lefar further teaches limitations of the claim, such as the uploaded recorded video message being stored in telecommunication module 230 for user A later review or user B later retrieval in col.8, lines 43-58.
Regarding claim 4, Lefar further teaches limitations of the claim, such as voicemail 262 of the message system 250 (read on UCaaS), upon received a signal/message indicated a video message selection of the user A, establishing or opening a link (i.e., a data connection) between the voicemail 262 and user A’s device in order to upload the recorded video message in col.7, lines 49-64 and col.8, lines 39-50.
Regarding claim 5, Lefar further teaches limitations of the claim, such as causing telecommunication modules 230 and 232 of user A’s device to be active or open to record and store the video message in col.8, lines 20-28.
Regarding claim 7, Lefar further teaches limitations of the claim, such as the signal/message being used as a request to send to the voicemail 262 of the message system 250 in response to the video message selection being selected in col.7, lines 49-64.
Regarding claim 8, Lefar further teaches limitations of the claim, such as the options being provided to the user A upon the call is detected as user B was busy, unavailable, or declined the call (col.7, lines 25-29).
Regarding claim 9, Lefar teaches a non-transitory computer readable medium storing instructions (i.e., memory 620, as shown in figure 6) operable to cause one or more processors (i.e., one or more processors 610a-c; col.12, lines 5-27) to perform operations comprising:
initiating a call using a telephony service of a unified communications as a service (UCaaS) software platform (i.e., telecommunications service provider network 206 comprising a call processing system 240 and a message system 250 (col.6, lines 38-40), as shown in figure 2, wherein the call processing system 240 receives a call request initiated from the caller (user A device 202), the message system 250 further includes a voicemail system 262 (col.7, lines 14-29) and the telecommunications service provider network 206 can provide telecommunication services to a plurality of end-user devices (e.g., User A and B devices 202, 204) via one or more networks 210, such as IP telephone system 120 or PSTN/cellular provider 130, performed as UCaaS software platform (col.6, lines 4-13));
presenting a first in-call option to record an audio-only voicemail message and a second in-call option to record a video message (i.e., the voicemail system 262 provides user A the option to select between leaving an audio message and a video message for user B; col.7, lines 39-49); and
recording, based on selection of the second in-call option (if the user A wishes to leave a video message; col.7, lines 49-52), the video message using a video service of the UCaaS software platform (i.e., after user A makes a selection to leave a video message, a video message is recorded by a video camera of the user A’s device and, using a video service of the message system 250 to upload to message storage module 264 for storage and transmitting to the user B; col.8, lines 20-46).
Regarding claim 10, Lefar further teaches limitations of the claim in col.7, line 65 through col.8, line 2.
Regarding claim 11, Lefar further teaches limitations of the claim, such as voicemail 262 of the message system 250 (read on UCaaS), upon received a signal/message indicated a video message selection of the user A, establishing or opening a link (i.e., a data connection) between the voicemail 262 and user A’s device in order to upload the recorded video message in col.7, lines 49-64 and col.8, lines 39-50.
Regarding claim 12, Lefar further teaches limitations of the claim, such as causing telecommunication modules 230 and 232 of user A’s device to be active or open to record and store the video message in col.8, lines 20-28.
Regarding claim 14, Lefar teaches an apparatus, comprising:
a memory (i.e., memory 620, as shown in figure 6); and
a processor configured to execute instructions stored in the memory (i.e., one or more processors 610a-c; col.12, lines 5-27) to:
initiate a call using a telephony service of a unified communications as a service (UCaaS) software platform (i.e., telecommunications service provider network 206 comprising a call processing system 240 and a message system 250 (col.6, lines 38-40), as shown in figure 2, wherein the call processing system 240 receives a call request initiated from the caller (user A device 202), the message system 250 further includes a voicemail system 262 (col.7, lines 14-29) and the telecommunications service provider network 206 can provide telecommunication services to a plurality of end-user devices (e.g., User A and B devices 202, 204) via one or more networks 210, such as IP telephone system 120 or PSTN/cellular provider 130, performed as UCaaS software platform (col.6, lines 4-13));
present a first in-call option to record an audio-only voicemail message and a second in-call option to record a video message (i.e., the voicemail system 262 provides user A the option to select between leaving an audio message and a video message for user B; col.7, lines 39-49); and
record, based on selection of the second in-call option (if the user A wishes to leave a video message; col.7, lines 49-52), the video message using a video service of the UCaaS software platform (i.e., after user A makes a selection to leave a video message, a video message is recorded by a video camera of the user A’s device and, using a video service of the message system 250 to upload to message storage module 264 for storage and transmitting to the user B; col.8, lines 20-46).
Regarding claim 15, Lefar further teaches limitations of the claim in col.7, line 65 through col.8, line 2.
Regarding claim 16, Lefar further teaches limitations of the claim, such as voicemail 262 of the message system 250 (read on UCaaS), upon received a signal/message indicated a video message selection of the user A, establishing or opening a link (i.e., a data connection) between the voicemail 262 and user A’s device in order to upload the recorded video message in col.7, lines 49-64 and col.8, lines 39-50.
Regarding claim 17, Lefar further teaches limitations of the claim, such as causing telecommunication modules 230 and 232 of user A’s device to be active or open to record and store the video message in col.8, lines 20-28.
Regarding claim 19, Lefar further teaches limitations of the claim, such as the signal/message being used as a request to send to the voicemail 262 of the message system 250 in response to the video message selection being selected in col.7, lines 49-64.
Regarding claim 20, Lefar further teaches limitations of the claim, such as the options being provided to the user A upon the call is detected as user B was busy, unavailable, or declined the call (col.7, lines 25-29).
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.
Claims 6, 13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Lefar et al. (US 8,817,063) in view of Klatsky (2014/0270120).
Regarding claims 6, 13 and 18, Lefar teaches the method and system of providing options to record either voice-only or video message from the user A to user B. Lefar further teaches the voicemail system 262 provides user A the option to select between leaving an audio message and video message, as discussed above. Lefar failed to clearly teach the voicemail system 262 being as an interactive voice response (IVR) system. However, Klatsky teaches such limitations in paragraph [0055] for purposes of providing options to caller or calling party to selectively leave a type of message to a called party.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the feature of an interactive voice response (IVR) system provides the first in-call option and the second in-call option, as taught by Klatsky, into view of Lefar in order to provide options to caller or calling party to selectively leave a type of message to a called party in case the called party was busy or unavailable.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,539,838 and claims 1-17 of U.S. Patent No. 12,137,184. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application are broader in scope than the claims of the patent and/or recited in different words (In re KARLSON (CCPA) 136 USPQ 184 (1963)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Xin et al. (US 2015/0145946) also teaches a system and a method of providing options to a calling party to record either an audio-only message or video message when a called party was busy or unavailable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BINH TIEU whose telephone number is (571)272-7510. The examiner can normally be reached on 9-5. The Examiner’s fax number is (571) 273-7510 and E-mail address: BINH.TIEU@USPTO.GOV.
Examiner interviews are available via telephone or 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, DUC NGUYEN can be reached on (571) 272-7503.
Any response to this action should be mailed or handed carry deliveries to:
Commissioner of Patents and Trademarks
401 Dulany Street
Alexandria, VA 22314
Or faxed to: (571) 273-8300
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (FAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the FAIR system, see fitp://nair-direct.usoto.aqev. If you have any questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/Binh Kien Tieu/Primary Examiner, Art Unit 2694
Date: August 2026
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