DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
1. This is in response to communication filed on 1/05/25 in which claims 1-26 are pending.
Specification
2. The abstract of the disclosure is objected to because the submitted abstract is not a concise statement of what is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art. If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
3. The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01. Appropriate correction is required.
Information Disclosure Statement
4. Applicant is reminded that an applicant's duty of disclosure of material and information is NOT satisfied by presenting a patent examiner with "a mountain of largely irrelevant [material] from with he is presumed to have been able, with his expertise and with adequate time, to have found the critical [material]. It ignores the real world conditions under which examiners work." Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2.d 1556, 1573 [ 220 USPQ 289 ] (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). (Emphasis in original). Patent applicant has a duty not just to disclose pertinent prior art references but to make a disclosure in such a way as not to "bury" it within other disclosures of less relevant prior art; See Golden Valley Microwave Foods Inc. v. Weaver Popcorn Co. Inc., 24 USPQ2d 1801 (N.D. Ind. 1992); Molins PLC v. Textron Inc., 26 USPQ2d 1889, at 1899 (D.Del. 1992); Penn Yan Boats, Inc. v. Sea Lark Boats, Inc. et al., 175 USPQ 260, at 272 (S.D. Fl. 1972). Applicant is respectfully advised to eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant's attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F- Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aft'd, 479 F.2d 1338, 178 USPQ 577 (5t" Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F. 3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995). Examiner has made a best effort to consider the large number of references submitted but applicant is requested to include a concise explanation of relevance indicating the references to be of most significance.
Claim Rejections - 35 USC § 112
5. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01.
The omitted steps are: The claimed language fails to recite the first device sending “a second message” that is received by the first server.
The claimed language fails to recite the first server receiving “a first message” sent by the first device.
One with ordinary skill in the art can not confidently conclude from the claimed language the relation and the distinction between the first message and second message .
Double Patenting
5. 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.
6. Claims 1-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 19/303597 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim the same invention of sending messages over a cellular network.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
U.S. Application No. 19/303597
U.S. Application No. 19/010075
A non-transitory computer readable medium comprising instructions which, when executed by one or more first hardware processors in a first cellular telephone device, cause performance of steps comprising:
receiving, by the first cellular telephone device from a first device over a first wireless network, an identifier of the first device; and sending, by the first cellular telephone device to a first server over the Internet, using a second wireless network that is different from the first wireless network, the received identifier, wherein the non-transitory computer readable medium further comprising instructions which, when executed by one or more second hardware processors in a second cellular telephone device that is different from the first cellular telephone device, cause performance of steps comprising: receiving, by the second cellular telephone device from the first server over the Internet using a third wireless network that is different from the first and second wireless network, the identifier, wherein the first wireless network comprises, is based on, or uses, a Personal Area network (PAN), and wherein the PAN comprises, is based on, or uses, Bluetooth or Ultra-Wideband (UWB), and wherein the second or third wireless network comprises, is based on, or uses, a cellular network.
1. A method comprising:
sending, by a first device to a first cellular telephone set over a first wireless network, a first message that comprises a first identifier that identifies the first device;
receiving, by a first server from the first device via the first cellular telephone set over the Internet, a second message that includes the first identifier, in response to the sending of the first message;
sending, by the first server to a second cellular telephone set over the Internet, a third message that comprises the first identifier, in response to the receiving of the second message;
and receiving and storing, by the second cellular telephone set from the first server over the Internet using a third wireless network, the third message, in response to the sending of the third message.
18. The method according to claim 1, wherein the first, second, or third wireless network comprises, is based on, or uses, a Personal Area network (PAN).
22. The method according to claim 1, wherein the first, second, or third wireless network comprises, is based on, or uses, Ultra-Wideband (UWB).
20. The method according to claim 1, wherein the first, second, or third wireless network comprises, is based on, or uses, a cellular network.
It would have been obvious to one with ordinary skill in the art to incorporate the dependent claims 18, 20 and 22 into the independent claim 1 of this present invention in order to recite the same invention as the independent claim of U.S. Application No. 19/01075.
7. Claims 1-26 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending Application No. 18/545489 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim the same invention of sending messages over a cellular network.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
U.S. Application No. 18/545489
U.S. Application No. 19010075
A method for a communication path from a portable device that is identified by a first identifier, via a first cellular telephone set and a first server, to a second cellular telephone set, wherein the portable device and the second cellular telephone set are paired as a sender and a recipient, the method comprising: sending, by the portable device to the first cellular telephone set over a first wireless network, a first message that comprises the first identifier;
receiving, by the first cellular telephone set from the portable device over the first wireless network, the first message, in response to the sending of the first message;
sending, by the first cellular telephone set to the first server over the Internet using a second wireless network, a second message that comprises the received first identifier;
receiving, by the first server from the first cellular telephone set over the Internet, the second message, in response to the sending of the second message; sending, by the first server to the second cellular telephone set over the Internet, a third message that comprises the first identifier, in response to the receiving of the second message; and receiving and storing, by the second cellular telephone set from the first server over the Internet using a third wireless network, the third message, in response to the sending of the third message.
1. A method comprising:
sending, by a first device to a first cellular telephone set over a first wireless network, a first message that comprises a first identifier that identifies the first device;
receiving, by a first server from the first device via the first cellular telephone set over the Internet, a second message that includes the first identifier, in response to the sending of the first message;
sending, by the first server to a second cellular telephone set over the Internet, a third message that comprises the first identifier, in response to the receiving of the second message;
and receiving and storing, by the second cellular telephone set from the first server over the Internet using a third wireless network, the third message, in response to the sending of the third message.
It would have been obvious to one with ordinary skill in the art to equate the recitation of the present claimed language to the claimed language of U.S. Application No. 18/545489 because the both recite the same invention of sending and receiving messages over a cellular network.
Claim Rejections - 35 USC § 102
8. 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 pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
9. Claims 1-11, 13-16, 20, 25 and 26 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by U.S. Patent No. 9064246 to Anderson et al.
a. As per claim 1, Anderson et al teaches a method comprising: sending, by a first device to a first cellular telephone set over a first wireless network, a first message that comprises a first identifier that identifies the first device (See col. 5, lines 41-48); receiving, by a first server from the first device via the first cellular telephone set over the Internet, a second message that includes the first identifier, in response to the sending of the first message (See col. 5, lines 41-67 and col. 6, lines 1-7); sending, by the first server to a second cellular telephone set over the Internet, a third message that comprises the first identifier, in response to the receiving of the second message (See col. 5, lines 41-67 and col. 6, lines 1-7); and receiving and storing, by the second cellular telephone set from the first server over the Internet using a third wireless network, the third message, in response to the sending of the third message (See col. 8, lines 51-63).
b. As per claim 2, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches displaying, by a screen in the second cellular telephone set, an information in response to the third message that is indicative of the first identifier (See col. 5, lines 41-67 and col. 12, lines 1-15).
c. As per claim 3, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches wherein the first and second cellular telephone sets are located at geographically disparate locations (See col. 9, lines 14-42).
d. As per claim 4, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches wherein the first and second cellular telephone sets are located in different cities, in different states, in different countries, or on different continents (See col. 9, lines 14-42).
e. As per claim 5, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches wherein the first and second cellular telephone sets are located at a same geographical location (See col. 9, lines 14-42).
f. As per claim 6, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches wherein the first and second cellular telephone sets are located in a same city, in a same state, or in a same country (See col. 9, lines 14-42).
g. As per claim 7, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches wherein the first, second, or third wireless network comprises a Local Area Network (LAN), Wide Area Network (WAN), Metropolitan Area Network (MAN), Next Generation Network (NGN), or an intranet (See col. 17, lines 1-20) .
h. As per claim 8, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches wherein the first device is integrated or co-located with a router, a NAT-enabled computer or a gateway (See fig 1).
i. As per claim 9, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches wherein the first device and the second cellular telephone set are paired as a sender and a recipient (See col 10, lines 45-57).
j. As per claim 10, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches wherein the receiving, by a first server of the second message comprises: receiving, by the first cellular telephone set from the first device over the first wireless network, the first message, in response to the sending of the first message (See col. 5, lines 41-67); and sending, by the first cellular telephone set to the first server over the Internet using a second wireless network, the second message that comprises the received first identifier (See col. 10, lines 7-14).
k. As per claim 11, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches wherein the first device is integrated or co-located with a security device (See col. 4, lines 31-52).
l. As per claim 13, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches wherein the first, second, or third message includes audio or video information (See col. 9, lines 25-42).
m. As per claim 14, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches wherein the respective first, second, or third message is part of VoIP, video conferencing, IPTV, Internet telephony service, or any combination thereof (See col. 9, lines 25-42).
n. As per claim 15, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches wherein the first device comprises a laptop (See col. 9, lines 13-24).
o. As per claim 16, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches further comprising encrypting, by the first cellular telephone set, the received first message, and wherein the second message comprises the encrypted first message (See col 9, lines 43-62).
p. As per claim 20, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches wherein the first, second, or third wireless network comprises, is based on, or uses, a cellular network (See col. 12, lines 58-67 and col. 13, lines 1-10).
q. As per claim 25, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches wherein the first, second, or third message is delivered as part of a real-time service (See col. 1, lines 20-42).
r. As per claim 26, Anderson et al teaches the claimed invention as described above. Furthermore, Anderson et al teaches where the first server comprises, is part of, or is integrated with, a web server, a database server, a mail server, an FTP server, a DHCP server, a DNS server, or any combination thereof (See col. 8, lines 51-67 and col. 9, lines 1-13, col. 13, lines 26-44)
Claim Rejections - 35 USC § 103
10. 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
11. Claims 12, 17-19, 21, 23-24 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over U.S. Patent No. 9064246 to Anderson et al in view of U.S. Publication No. 2013/0103939 to Radpour.
a. As per claim 12, Anderson et al teaches the claimed invention as described above. However, Anderson et al fails to teach wherein the security device is a firewall.
Radpour teaches wherein the security device is a firewall (See paragraph [0054]).
It would have been obvious to one with ordinary skill in the art to incorporate the teaching of Radpour in the claimed invention of Anderson et al in order to secure the network.
b. As per claim 17, Anderson et al teaches the claimed invention as described above. However, Anderson et al fails to teach wherein the first server is identified in the Internet using a first IP address, wherein the first IP address is stored in the first cellular telephone set, and wherein the sending, by the first cellular telephone set to the first server over the Internet of the second message uses the stored first IP address.
Radpour teaches wherein the first server is identified in the Internet using a first IP address, wherein the first IP address is stored in the first cellular telephone set, and wherein the sending, by the first cellular telephone set to the first server over the Internet of the second message uses the stored first IP address (See paragraph [0052 and 0100]).
It would have been obvious to one with ordinary skill in the art to incorporate the teaching of Radpoiur in the claimed invention of Anderson et al in order to create connection and communication among devices.
c. As per claim 18, Anderson et al teaches the claimed invention as described above. However, Anderson et al fails to teach wherein the first, second, or third wireless network comprises, is based on, or uses, a Personal Area network (PAN).
Radpour teaches wherein the first, second, or third wireless network comprises, is based on, or uses, a Personal Area network (PAN) (See paragraph [0085[]).
It would have been obvious to one with ordinary skill in the art to incorporate the teaching of Radpoiur in the claimed invention of Anderson et al in order to create connection and communication among devices.
d. As per claim 19, Anderson et al teaches the claimed invention as described above. However, Anderson et al fails to teach wherein the PAN comprises, is based on, or uses, Bluetooth.
Radpour teaches wherein the PAN comprises, is based on, or uses, Bluetooth (See paragraph [0085[]).
It would have been obvious to one with ordinary skill in the art to incorporate the teaching of Radpoiur in the claimed invention of Anderson et al in order to create connection and communication among devices.
e. As per claim 21, Anderson et al teaches the claimed invention as described above. However, Anderson et al fails to teach wherein the cellular network comprises, is based on, or uses, Global System for Mobile communication (GSM), 2 G, 2.5 G, 3 G, 3.5 G, Enhanced Data rates for GSM Evolution (EDGE), or any combination thereof.
Radpour teaches wherein the cellular network comprises, is based on, or uses, Global System for Mobile communication (GSM), 2 G, 2.5 G, 3 G, 3.5 G, Enhanced Data rates for GSM Evolution (EDGE), or any combination thereof (See paragraph [0089]).
It would have been obvious to one with ordinary skill in the art to incorporate the teaching of Radpoiur in the claimed invention of Anderson et al in order to create connection and communication among devices.
f. As per claim 23, Anderson et al teaches the claimed invention as described above. However, Anderson et al fails to teach wherein the first identifier comprises a telephone number, a Mobile Equipment Identifier (MEID) number, an International Mobile Equipment Identity (IMEI) number, or an Electronic Serial Number (ESN).
Radpour teaches wherein the first identifier comprises a telephone number, a Mobile Equipment Identifier (MEID) number, an International Mobile Equipment Identity (IMEI) number, or an Electronic Serial Number (ESN) (See paragraph [0043]).
It would have been obvious to one with ordinary skill in the art to incorporate the teaching of Radpoiur in the claimed invention of Anderson et al in order to create connection and communication among devices.
g. As per claim 24, Anderson et al teaches the claimed invention as described above. However, Anderson et al fails to teach wherein the first identifier comprises a first Medium Access Control (MAC), or a first Internet Protocol (IP) address that identifies the first device in the Internet.
Radpour teaches wherein the first identifier comprises a first Medium Access Control (MAC), or a first Internet Protocol (IP) address that identifies the first device in the Internet (See paragraph [0043]).
It would have been obvious to one with ordinary skill in the art to incorporate the teaching of Radpoiur in the claimed invention of Anderson et al in order to create connection and communication among devices.
12. Claim 22 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over U.S. Patent No. 9064246 to Anderson et al in view of U.S. Publication No. 2011/0093285 to Dicks et al.
a. As per claim 22, Anderson et al teaches the claimed invention as described above. However, Anderson et al fails to teach wherein the first, second, or third wireless network comprises, is based on, or uses, Ultra-Wideband (UWB).
Dicks et al teaches wherein the first, second, or third wireless network comprises, is based on, or uses, Ultra-Wideband (UWB) (See paragraph [0062]).
It would have been obvious to one with ordinary skill in the art to incorporate the teaching of Dicks et al in the claimed invention of Anderson et al in order to transmit data among devices.
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Publication No. 2002/0133600 to Williams et al teaches method and apparatus for establishing a protocol proxy for a mobile host terminal.
U.S. Publication No. 2003/0187926 to Karjanlahti teaches Ip based voice communication in a mobile communication system
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DJENANE BAYARD whose telephone number is (571)272-3878. The examiner can normally be reached 9-5.
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, John Follansbee can be reached at (571)272-3964. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DJENANE M BAYARD/Primary Examiner, Art Unit 2444
Prosecution Insights