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 statement (IDS) submitted on 10/09/24 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim(s) 1, 4-7, 14, 16-18 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2022/0311809 by Somes et al. (Somes).
With respect to claim 1, Somes teaches a method comprising:
receiving a Session Initiation Protocol (SIP) message sent from an originating User Equipment (UE) for delivery to a terminating UE (Paragraph 7, first 4 lines) ;
determining routing information for the SIP message based on E.164 Number Mapping (ENUM); (Paragraph 7, 18- 20 – in this example, a determination is made based on included parameters of the SIP message, and a ENUM query of an E.164 number to URI mapping is used for routing the SIP message)
transferring the SIP message for delivery to the terminating UE based on the routing information. (Fig. 1a Paragraph 7, 18- 20 – in this example, a determination is made based on included parameters of the SIP message, and a ENUM query of an E.164 number to URI mapping is used for routing the SIP message, toward user device 105-2 step 135 )
With respect to claim 4, Somes teaches the method of claim 1 wherein determining the routing information based on the ENUM for the terminating UE comprises determining a Uniform Resource Indicator (URI). (Paragraph 7 - the CSCF may perform an E.164 number to URI mapping (ENUM) query using the information included in the user information portion.)
With respect to claim 5, Somes teaches the method of claim 1 wherein: determining the routing information based on the ENUM for the terminating UE comprises determining a Uniform Resource Indicator (URI) for a SIP system that serves the terminating UE; and transferring the SIP message for delivery to the terminating UE based on the routing information comprises transferring the SIP message to the SIP system based on the URI. (Paragraph 17 – CSCF may determine a destination address associated with an I-CSCF of another IMS network, based on performing the ENUM query. CSCF 115 may provide the SIP message to the I-CSCF to cause the I-CSCF to route the SIP message, such as to cause the I-CSCF to route the SIP message toward user device 105-2.)
With respect to claim 6, Somes teaches the method of claim 1 wherein: determining the routing information based on the ENUM for the terminating UE comprises translating a number for the terminating UE into a Uniform Resource Indicator (URI) for a SIP system that serves the terminating UE; and transferring the SIP message for delivery to the terminating UE based on the routing information comprises transferring the SIP message to the SIP system based on the URI. (Paragraph 16-17 – ENUM query is based on a number found in the formatting of either Tel or SIP URI)
With respect to claim 7, Somes teaches the method of claim 1 wherein the SIP message comprises one of a voice call invite, video call invite, and text message. (Paragraph 1,15 multimedia applications and/or voice applications, call session with UE or chatbot)
Claims 14, 16, 17 are similar in scope to claims 1, and 4-7 and are rejected based on the same rationale.
With respect to claim 18, Somes teaches the IP system of claim 14 wherein: the ENUM system is to identify a Session Border Controller (SBC); and the SIP system is to transfer the SIP message and the routing information to the SBC; and the SBC is to transfer the SIP message for delivery to the terminating UE based on the routing information. (Somes Paragraph 25, 29, interactions occur with a SBC)
With respect to claim 20, Somes teaches the IP system of claim 14 wherein: the SIP system comprises a Call Session Control Function (CSCF) (Fig 1a – CSCF 115); and the ENUM system comprises a Telephony Application Server (TAS). (Paragraph 29 TAS)
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.
Claim(s) 2, 3, 8-13, 15, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Somes in view of US 2008/0019267 by Ku et al. (Ku).
With respect to claim 2, Somes teaches the method of claim 1 further comprising: receiving an error message for the SIP message (Paragraph 9, notification indicating that the SIP message cannot be routed).
Somes does not explicitly disclose determining retry indicator for the terminating UE and retransferring a SIP message for delivery to the terminating UE in response to the retry indicator and the error message. Ku teaches determining a retry indicator and retransferring a URI communication message for delivery to a terminating UE in response to the retry indicator and the error message (Paragraph 18, 43, Fig. 7 – determination of available alternate URIs is determination of retry indicator. When an initial communication attempt fails, a retransfer of the URI communication will be done based on if there are available alternate/additional URIs)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the SIP messaging system of Somes include a retry indicator and retransfer mechanism as in Ku. One would be motivated to have this as it is desirable to provide communication redundancy for a user (Ku paragraphs 44-45).
With respect to claim 3, Somes teaches the method of claim 1 further comprising: receiving an error message for the SIP message (Paragraph 9, notification indicating that the SIP message cannot be routed).
Somes does not explicitly disclose determining realm information for the terminating UE; and retransferring the SIP message for delivery to the terminating UE based on the realm information and in response to the error message.
Ku teaches determining disclose determining realm information for the terminating UE and retransferring a URI communication message for delivery to a terminating UE in response to the retry indicator and the error message (Paragraph 18, 43, Fig. 7 – determination of available alternate URIs is determination of realm information for the terminating UE. When an initial communication attempt fails, a retransfer of the URI communication will be done based on if there are available alternate/additional URIs)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the SIP messaging system of Somes include realm information and retransfer mechanism as in Ku. One would be motivated to have this as it is desirable to provide communication redundancy for a user (Ku paragraphs 44-45).
Claim 15 is similar in scope to claim 3 and is rejected based on the same rationale.
With respect to claim 8, Somes teaches a method comprising: receiving a Session Initiation Protocol (SIP) message to transfer from an originating User Equipment (UE) to a terminating UE (Fig. 1A Paragraph 15 – SIP message 125 sent by UE 105-1 received by CSCF with intent of delivery to UE 105-2), and in response, determining a Uniform Resource Indicator (URI) (Paragraph 7, 18- 20 – in this example, a determination is made based on included parameters of the SIP message, and a ENUM query of an E.164 number to URI mapping is used for routing the SIP message);
transferring the SIP message to a SIP system for the terminating UE based on the URI (Fig. 1a Paragraph 7, 18- 20 – in this example, a determination is made based on included parameters of the SIP message, and a ENUM query of an E.164 number to URI mapping is used for routing the SIP message, toward user device 105-2 step 135 ) ; and
receiving an error message from the SIP system for the terminating UE(Paragraph 9, notification indicating that the SIP message cannot be routed)
Somes does not explicitly disclose determining a retry indicator and retransferring the SIP message to the SIP system for the terminating UE in response to the error message and the retry indicator. Ku teaches determining a retry indicator and retransferring a URI communication message for delivery to a terminating UE in response to the retry indicator and the error message (Paragraph 18, 43, Fig. 7 – determination of available alternate URIs is determination of retry indicator. When an initial communication attempt fails, a retransfer of the URI communication will be done based on if there are available alternate/additional URIs)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the SIP messaging system of Somes include a retry indicator and retransfer mechanism as in Ku. One would be motivated to have this as it is desirable to provide communication redundancy for a user (Ku paragraphs 44-45).
With respect to claim 9, Somes as modified teaches the method of claim 8 wherein transferring and retransferring the SIP message comprises transferring the SIP message to a Call Session Control Function (CSCF) and retransferring the SIP message to a different CSCF. (Paragraph 17 – CSCF may determine a destination address associated with an I-CSCF of another IMS network, based on performing the ENUM query. CSCF 115 may provide the SIP message to the I-CSCF to cause the I-CSCF to route the SIP message, such as to cause the I-CSCF to route the SIP message toward user device 105-2.)
With respect to claim 10, Somes as modified teaches the method of claim 8 wherein receiving the error message from the SIP system and retransferring the SIP message in response to the retry indicator comprises a Session Border Controller (SBC) receiving the error message from the SIP system and retransferring the SIP message in response to the retry indicator. (Based on the same logic of the combination of claim 8, Somes further teaches the interactions occur with a SBC paragraph 25, 29)
With respect to claim 11, Somes as modified teaches the method of claim 8 wherein: receiving the SIP message comprises a Call Session Control Function (CSCF) receiving the SIP message; and determining the URI and the retry indicator comprises an E.164 Number Mapping (ENUM) system determining the URI and the retry indicator. (Based on the same logic of the combination of 8, Ku teaches an ENUM system determines the available URIs (i.e. retry indicators) as a ENUM query returns the available URIs paragraph 33, 40)
With respect to claim 12, Somes as modified teaches the method of claim 8 wherein: transferring the SIP message comprises a Call Session Control Function (CSCF) transferring the SIP message to a Session Border Controller (SBC) and the SBC transferring the SIP message based on the URI; and receiving the error message and retransferring the SIP message comprises the SBC receiving the error message and retransferring the SIP message in response to the error message and the retry indicator. (Based on the same logic of the combination of claim 8, Somes further teaches the interactions occur with a SBC paragraph 25, 29)
Claim 19 is similar in scope to claim 12 and is rejected based on the same rationale.
With respect to claim 13, Somes as modified teaches the method of claim 8 wherein receiving and transferring the SIP message comprises an originating Internet Protocol Multimedia Subsystem (IMS) receiving the SIP message from the originating UE and transferring the SIP message to a terminating IMS for the terminating UE. (Somes Paragraph 17 – another CSCF of another IMS network)
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,149,566. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-20 of U.S. patent 12,149,566 contain every element of claims 1-20 of the instant application and thus anticipate the claims of the instant application. Claims 1-20 of the instant application therefore are not patently distinct from the earlier patent claims and as such are unpatentable over obvious-type double patenting. A later patent/application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim. "A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim." In re Lonqi, 759 F.2d at 896, 225 USPQ at 651.
Conclusion
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/DAVID R LAZARO/Primary Examiner, Art Unit 2455