DETAILED ACTION
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 .
Response to Amendment
This action is in response to the communications and remarks filed on 7/14/2026. Claims 1, 3-11, and 13-20 are presently pending for examination.
Response to Arguments
Applicant's arguments, see pages 6-9, filed 7/14/2026, regarding the 112 rejections of Claims 1 and 11, have been fully considered and are persuasive. The rejections have been withdrawn in view of the amended claims.
The Double Patenting rejection of Claims 1-20 is maintained as no terminal disclaimer has yet been filed and approved.
Applicant's arguments, see pages 6-9, filed 7/14/2026, regarding the U.S.C. 102 and 103 rejections of Claims 1, 3, 5, 7-8, 10-11, 13, 15, 17-18, and 20 have been fully considered and are not persuasive. Applicant argues that "Applicant's Specification discloses that particular embodiments solve the problem with LI data associated with a service provided to an LI target if interception at service/application level is unavailable. LI data is instead extracted from communications at network level (i.e., communications of the LI target with core functions of the network). Specification at 0042. Attanasio discloses lawful intercept, but the solutions described in Attanasio are based on deep packet inspection. Attanasio at 0002. Claim 1 is amended above to clarify that the determination that there is an association between the LI data and a service provided to the LI target via the network is determined by a service function using a service description of a service, which is not disclosed in Attanasio...Accordingly, Attanasio at least fails to disclose, teach or suggest "determining, by a service function, SF, using a service description of a service, whether there is an association between the LI data and the service provided to the LI target via the network," as recited in amended claim 1."
Applicant s interpretation of the reference has been noted; however, examiner respectfully disagrees. The claims do not limit obtaining information via deep packet inspection. Attanasio teaches, wherein the determining is performed by a service function, SF, using a collection of service descriptions. [paragraphs 0040-0042, Received CC packets associated with MMS are forwarded to the Packet Inspection Feature PIF that in this example is located within the Delivery Function DF3. To be noted is that the PIF as well might be located outside the DF3. [0041] The Packet Inspection Feature PIF parses the received packets and detects that multimedia messaging service MMS is associated with the parsed CC. [0042] The delivery Function DF3 compares the result of the parsing with stored services and finds a match between services MMS in parsed packets and stored services associated to CC that is of interest for the agency to monitor] The parsing of packets would also produce service descriptions of a service. Therefore, the rejection is maintained.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3-11, and 13-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U.S. Patent 12,184,701. Although the claims at issue are not identical, they are not patentably distinct from each other because aside from a few minor differences, these claims contain the same limitations and perform the same functions.
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)(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.
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.
Claims 1, 3, 5, 7-8, 10-11, 13, 15, 17-18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Attanasio et al., (US 20090207751 A1) hereinafter referred to as Attanasio.
Regarding Claims 1 and 11, Attanasio discloses A method for lawful interception, LI, performed by a device of a communication service provider, CSP, the device having access to a communication of an LI target interacting with at least one core function of a network, [paragraph 0004, In the current Lawful Interception LI standard solution, when intercepting in some nodes, like the GGSN nodes, the Broadband Remote Access Server BRAS nodes, etc. . . . the intercepted Content of Communication carries different types of services/applications (WAP, HTTP, RTP, . . . ). Some lawful authorities could be interested to activate the interception of Content of Communication only for some specific services]
the method comprising: obtaining data from the communication; [paragraph 0002, The Deep Packet Inspection module in the SASN parses incoming user traffic, delimits the flows according to the protocol being used, and extracts several parameters that are used by a traffic classification engine, according to some configurable classification rules]
determining, by a service function, SF, using a service description of a service, whether there is an association between the LI data and the service provided to the LI target via the network; [paragraph 0035, only CC packets associated with Multimedia Messaging Service MMS are of interest for an agency to monitor] [paragraphs 0040-0042, Received CC packets associated with MMS are forwarded to the Packet Inspection Feature PIF that in this example is located within the Delivery Function DF3. To be noted is that the PIF as well might be located outside the DF3. [0041] The Packet Inspection Feature PIF parses the received packets and detects that multimedia messaging service MMS is associated with the parsed CC. [0042] The delivery Function DF3 compares the result of the parsing with stored services and finds a match between services MMS in parsed packets and stored services associated to CC that is of interest for the agency to monitor]
and forwarding one or more service-LI messages, based on determining the association between the L1 data and the service exists which include service-specific information besides the LI data, to a law enforcement agency, LEA, wherein the LI data includes at least one of Intercept Related Information, IRI, and Content of Communication, CC. [paragraphs 0040-0042, Received CC packets associated with MMS are forwarded to the Packet Inspection Feature PIF that in this example is located within the Delivery Function DF3. To be noted is that the PIF as well might be located outside the DF3. [0041] The Packet Inspection Feature PIF parses the received packets and detects that multimedia messaging service MMS is associated with the parsed CC. [0042] The delivery Function DF3 compares the result of the parsing with stored services and finds a match between services MMS in parsed packets and stored services associated to CC that is of interest for the agency to monitor] [paragraph 0043, The CC associated with Multimedia Messaging Service MMS is forwarded 4 from DF3 to LEMF via a Handover Interface HI3]
Regarding Claims 3 and 13, Attanasio discloses wherein the service description includes a service-identification rule, a service feature and a service policy. [paragraph 0054, Received CC packets associated with FTP are forwarded to the Packet Inspection Feature PIF in DF3 where the packets are parsed. The delivery Function DF3 compares the result of the parsing with stored services but finds no match between the services FTP in parsed packets and stored services associated to packets and defined as desired (or undesired) packets – the “services” include service features]
Regarding Claims 5 and 15, Attanasio discloses wherein the method further includes when the communication contains user-related signaling, forwarding a service-IRI, which is one of the service-LI messages, to the LEA, the service-IRI including the service-specific information besides the IRI extracted from the communication. [paragraph 0003, Monitoring of Interception Related Information IRI and Content of Communication CC for a target is part of prior art. Content of Communication is defined as information such as speech and data and Intercept Related Information is defined as signaling information related to target subscribers…The Delivery Function DF2 receives Intercept Related Information IRI from the network via the X2 interface, and DF2 is used to distribute the IRI to relevant Law Enforcement Agencies via the HI2 interface. The Delivery Function DF3 receives Content of Communication CC, i.e. speech and data]
Regarding Claims 7 and 17, Attanasio discloses wherein the service-IRI is delivered via an LI handover interface for IRI reporting, HI2. [paragraph 0003, Monitoring of Interception Related Information IRI and Content of Communication CC for a target is part of prior art. Content of Communication is defined as information such as speech and data and Intercept Related Information is defined as signaling information related to target subscribers…The Delivery Function DF2 receives Intercept Related Information IRI from the network via the X2 interface, and DF2 is used to distribute the IRI to relevant Law Enforcement Agencies via the HI2 interface. The Delivery Function DF3 receives Content of Communication CC, i.e. speech and data]
Regarding Claims 8 and 18, Attanasio discloses wherein the method further includes when the communication contains user-related content, forwarding a service-CC, which is also one of the service-LI messages, to the LEA, the service-CC including the service-specific information besides the CC extracted from the communication. [paragraph 0003, Monitoring of Interception Related Information IRI and Content of Communication CC for a target is part of prior art. Content of Communication is defined as information such as speech and data and Intercept Related Information is defined as signaling information related to target subscribers…The Delivery Function DF2 receives Intercept Related Information IRI from the network via the X2 interface, and DF2 is used to distribute the IRI to relevant Law Enforcement Agencies via the HI2 interface. The Delivery Function DF3 receives Content of Communication CC, i.e. speech and data]
Regarding Claims 10 and 20, Attanasio discloses wherein the service-CC is delivered via an LI handover interface for CC reporting, HI3. [paragraph 0003, Monitoring of Interception Related Information IRI and Content of Communication CC for a target is part of prior art. Content of Communication is defined as information such as speech and data and Intercept Related Information is defined as signaling information related to target subscribers…The Delivery Function DF2 receives Intercept Related Information IRI from the network via the X2 interface, and DF2 is used to distribute the IRI to relevant Law Enforcement Agencies via the HI2 interface. The Delivery Function DF3 receives Content of Communication CC, i.e. speech and data]
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.
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.
Claims 4 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Attanasio, as applied to Claims 1 and 11, respectively, above, in view of Fiorillo et al., (EP 2792182 B1) hereinafter referred to as Fiorillo.
Regarding Claims 4 and 14, Attanasio does not explicitly teach wherein the service-specific information is generated according to the service policy.
Fiorillo teaches wherein the service-specific information is generated according to the service policy. [paragraph 0006, The interception NE reports user plane data of corresponding service sessions of the interception targets satisfying an interception reporting policy according to the received interception task and the configured interception reporting policy]
Before the effective filing date of the claimed invention, it would have been obvious to one with ordinary skill in the art to combine the teachings of Fiorillo with the disclosure of Attanasio. The motivation or suggestion would have been “for providing a Law Enforcement Agency with payload data of an intercepted Internet Protocol flow.” (Abstract)
Allowable Subject Matter
Claims 6, 9, 16, and 19 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if the Double Patenting rejection was obviated.
The following is an examiner’s statement of reasons for allowance:
Regarding Claims 6 and 16, the closest prior art of record, Attanasio et al., (US20090207751 A1) and Fiorillo et al., (EP 2792182 B1) does not explicitly teach nor suggest in detail, wherein the service-IRI includes a communication session identifier, an origin-message type, a service identifier, a user-related- signaling type, the IRI extracted from the communication and a correlation identifier usable to correlate the IRI with other LI data in view of other limitations of the intervening claims.
Regarding Claims 9 and 19, the closest prior art of record, Attanasio et al., (US20090207751 A1) and Fiorillo et al., (EP 2792182 B1) does not explicitly teach nor suggest in detail, wherein the service-CC includes a communication session identifier, an origin-message type, a service identifier, a user-related- content type, the CC and a correlation identifier usable to correlate the CC with other LI data in view of other limitations of the intervening claims.
Thus the prior arts of record taking singly or in combination do not teach or suggest the above-stated limitations taking wholly in combination with all the elements of each independent claim.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J STEINLE whose telephone number is (571)272-9923. The examiner can normally be reached M-F 10am-6pm CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eleni Shiferaw can be reached at (571) 272-3867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW J STEINLE/Primary Examiner, Art Unit 2497
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