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 .
DETAILED ACTION
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,126,760. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim limitations of the present claims similar in scope and are broader than that of the claims of U.S. Patent No. 12,126,760. For example:
Claim 1 of the present invention
Claim 1 of U.S. Patent No. 12,126,760
A secure facility telecommunications system comprising
a monitored phone,
an outside telecommunication line,
an audio monitoring station communicatively connectible to the monitored phone and the outside telecommunication line,
and means to mute an audio channel which the audio monitoring station receives from the phone to be monitored or an external phone connected to the outside telecommunication line.
A secure facility telecommunications system for monitoring telephone audio calls between an internal caller detained in the secure facility and an external caller located outside of the secure facility,
comprising, a monitored phone disposed inside the secure facility for use by the internal caller detained in the secure facility,
an outside telecommunication line connectible to the monitored phone and to an external phone used by the external caller located outside the secure facility,
an audio monitoring station communicatively connectible to the monitored phone and to the external phone connected to the outside telecommunication line,
the audio monitoring station receiving an internal audio channel from the monitored phone and an external audio channel from the external phone,
and means to mute the external audio channel which the audio monitoring station receives from the external phone connected to the outside telecommunication line,
whereby distorting sounds being transmitted to the audio monitoring station over the external audio channel may be muted so that a user of the audio monitoring station will hear words or sounds being spoken by the detained internal caller and being transmitted over the internal audio channel.
From the above claim comparison, the limitations of claim 1 of the present invention is anticipated/covered by that of claim 1 of U.S. Patent No. 12,126,760. The limitations of independent claim 10 are also anticipated/covered by that of claim 10 of U.S. Patent No. 12,126,760. The remaining claims are directly or indirectly taught by at least the dependent claims of U.S. Patent No. 12,126,760.
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 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 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sidler et al (2016/0239932).
Consider claim 1, Sidler et al teach a secure facility telecommunications system (Fig. 1; controlled environment information management system; par. 0061) comprising a monitored phone (par. 0066; “user terminals 121-1 through 121-N”), an outside telecommunication line (par. 0066; “outside the walls of the facility (such as network 130 and user terminals 131-1 through 131-P”), an audio monitoring station communicatively connectible to the monitored phone and the outside telecommunication line (Fig. 2; par. 0043; “Fig. 3; par. 0012-0015; “an investigator may be allowed to monitor a live call and/or participate in the call”; 0049; ), and means to mute an audio channel which the audio monitoring station receives from the phone to be monitored or an external phone connected to the outside telecommunication line (par. 0014; “An investigator or other individual may be enabled to listen to the call in progress, himself being muted from the call (such as to prevent the calling party and/or calling party being alerted to the monitoring by background noise associated with the investigator). The investigator may be provided various controls with respect to the monitored call, such as particular dual-tone multiple frequency (DTMF) inputs to control switching from monitoring only (investigator muted) to barging into the call (investigator in duplex communication with one or more parties to the call), disconnecting the call between one or more of the parties to the call, marking positions in the call with “bookmarks” or tags for locating later in the call recording, disconnect the investigator from the call, etcetera”). [.]
Consider claim 2, Sidler et al teach wherein the secure facility is a jail (par. 0017; “Information management and retrieval systems of the present invention may be deployed for use with respect to a variety of controlled environment facilities, including inmate facilities (e.g., municipal jails, county jails, state prisons, federal prisons, military stockades, juvenile facilities, and detention camps), hospitals, nursing homes, camps, and the like”).
Consider claim 3, Sidler et al teach wherein the monitored phone is an inmate phone adapted to be used by an inmate of a jail (par. 0040; 0110; “User terminal equipment utilized according to preferred embodiments of the present invention may include personal computers, personal digital assistants (PDAs), pagers, telephones (wireline and wireless), facsimile machines, kiosks, automatic teller machines (ATMs), and the like”; par. 0049; “call monitoring (whether real-time or recorded, and whether monitoring a particular call or a plurality of calls)”).
Consider claim 4, Sidler et al teach wherein the audio monitoring station is adapted to be used by an authorized jail officer (par. 0043; 0087; “an investigator or other personnel attempting to invoke the translation service may be validated to confirm that this person has authorization to monitor the communication”).
Consider claim 5, Sidler et al teach wherein the outside telecommunications line is a VOIP line (par. 0044; 0091).
Consider claim 6, Sidler et al teach wherein the outside telecommunications line is a POTS line (par. 0044; 0091).
Consider claim 7, Sidler et al teach wherein the audio channel muted is from an external phone connected to the outside telecommunication line that contains a loud sound source (par. 0014; 0095; 0110).
Consider claim 8, Sidler et al teach wherein the means to mute includes an phone switch (par. 0014; “An investigator or other individual may be enabled to listen to the call in progress, himself being muted from the call (such as to prevent the calling party and/or calling party being alerted to the monitoring by background noise associated with the investigator). The investigator may be provided various controls with respect to the monitored call, such as particular dual-tone multiple frequency (DTMF) inputs to control switching from monitoring only (investigator muted) to barging into the call (investigator in duplex communication with one or more parties to the call)”.
Consider claim 9, Sidler et al teach wherein the phone switch is located externally with respect to the secure facility, and contains call channel isolation logic (par. 0014; “An investigator or other individual may be enabled to listen to the call in progress, himself being muted from the call (such as to prevent the calling party and/or calling party being alerted to the monitoring by background noise associated with the investigator). The investigator may be provided various controls with respect to the monitored call, such as particular dual-tone multiple frequency (DTMF) inputs to control switching from monitoring only (investigator muted) to barging into the call (investigator in duplex communication with one or more parties to the call)”; par. 0017; Fig. 8; “Additionally, information management and retrieval systems of the present invention may be coupled to other systems, whether internal or external to the controlled environment facility, including networks (such as the public switched telephone network (PSTN) and the Internet), databases (such as demographic databases, consumer account databases, historical records databases, government databases, and judicial databases), and platforms (such as personal computers, computer networks, and even other information management systems of the present invention). It should be appreciated, however, that aspects of the present invention are useful without regard to controlled environment facilities, and therefore there is no limitation to use of embodiments of the present invention with respect to controlled environment facilities”).
Consider claim 10, Sidler et al teach a secure jail facility telecommunications system that permits muting of [incomming] incoming audio of one of the call parties between an inmate and an outside party to avoid efforts to disrupt conversation monitoring (par. 0014; “An investigator or other individual may be enabled to listen to the call in progress, himself being muted from the call (such as to prevent the calling party and/or calling party being alerted to the monitoring by background noise associated with the investigator)”), comprising a. a monitored inmate phone (par. 0066; “user terminals 121-1 through 121-N”), b. a VOIP outside telecommunication line (par. par. 0044; 0066; 0091; “outside the walls of the facility (such as network 130 and user terminals 131-1 through 131-P”), c. an audio monitoring station communicatively connectible to the monitored phone and the outside telecommunication line, the audio monitoring station is adapted to be used by an authorized jail officer (par. 0043; 0087; “an investigator or other personnel attempting to invoke the translation service may be validated to confirm that this person has authorization to monitor the communication”), and d. means to mute an audio channel which the audio monitoring station receives from the phone to be monitored or an external phone connected to the outside telecommunication line (par. 0014; “An investigator or other individual may be enabled to listen to the call in progress, himself being muted from the call (such as to prevent the calling party and/or calling party being alerted to the monitoring by background noise associated with the investigator). The investigator may be provided various controls with respect to the monitored call, such as particular dual-tone multiple frequency (DTMF) inputs to control switching from monitoring only (investigator muted) to barging into the call (investigator in duplex communication with one or more parties to the call), disconnecting the call between one or more of the parties to the call, marking positions in the call with “bookmarks” or tags for locating later in the call recording, disconnect the investigator from the call, etcetera”), wherein the means to mute includes an phone switch located externally with respect to the secure facility and contains call channel isolation logic(par. 0014; “An investigator or other individual may be enabled to listen to the call in progress, himself being muted from the call (such as to prevent the calling party and/or calling party being alerted to the monitoring by background noise associated with the investigator). The investigator may be provided various controls with respect to the monitored call, such as particular dual-tone multiple frequency (DTMF) inputs to control switching from monitoring only (investigator muted) to barging into the call (investigator in duplex communication with one or more parties to the call)”; par. 0017; Fig. 8; “Additionally, information management and retrieval systems of the present invention may be coupled to other systems, whether internal or external to the controlled environment facility, including networks (such as the public switched telephone network (PSTN) and the Internet), databases (such as demographic databases, consumer account databases, historical records databases, government databases, and judicial databases), and platforms (such as personal computers, computer networks, and even other information management systems of the present invention). It should be appreciated, however, that aspects of the present invention are useful without regard to controlled environment facilities, and therefore there is no limitation to use of embodiments of the present invention with respect to controlled environment facilities”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any response to this action should be mailed to:
Mail Stop ____(explanation, e.g., Amendment or After-final, etc.) Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Facsimile responses should be faxed to:
(571) 273-8300
Hand-delivered responses should be brought to:
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUOC DUC TRAN whose telephone number is (571) 272-7511. The examiner can normally be reached Monday-Friday 8:30am - 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, Duc Nguyen can be reached on (571) 272-7503. 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.
/Quoc D Tran/
Primary Examiner, Art Unit 2691
June 10, 2026
Prosecution Insights