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 .
This office correspondence is in response to the application filed on January 17, 2025.
Claims 1-19 are pending.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,212,628. Although the claims at issue are not identical, they are not patentably distinct from each other.
“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 Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
d
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Rutten et al. (US Publication 2014/0181312) hereafter Rutten, in view of Fratti et al. (US Publication 2008/0235778) hereafter Fratti.
As per claim 1, Rutten discloses a method for conducting direct peer-to-peer real time communications, comprising a domain communication server performing actions including: initiating, a direct peer-to-peer communication session between a first user and a second user (paragraph 30, 37, 39: providing and routing user request); if the domain communication server determines that the first user is unauthorized: generating for the first user (i) an evanescent domain name, that expires after a pre-defined duration, registered on behalf of the first user with a domain name server, and (ii) an authorization by sending an authorization code that was generated with a pseudo-random number to the first user wherein an authorization record includes the authorization code (paragraphs 93, 96, 109: message authentication code); and authorizing the first user based upon the evanescent domain name, when the authorization code in the authorization record of the first user with the domain name server matches the authorization code sent to the first user; otherwise, if the domain communication server determines the first user is authorized: using a domain name of the first user to conduct the direct peer-to-peer communication session without generating an evanescent domain name for the first user (paragraphs 34-35, 109-110); generating a call identifier for the direct peer-to-peer communication session between the first user and the second user (paragraphs 45, 110); upon an indication of acceptance from the second user, sending the call identifier to the first user; and completing setup of the direct peer-to-peer communication session (paragraphs 0109-110, 118-121). Although, Rutten discloses peer-to-peer communication using IP multimedia system with authorization credentials using authentication request but does not expressly disclose if the first user is unauthorized: when the authorization code in the authorization record of the first user with the domain name server matches the authorization code sent to the first user.
However, in the same field of the endeavor, Fratti expressly discloses the claimed limitation if the first user is unauthorized: when the authorization code in the authorization record of the first user with the domain name server matches the authorization code sent to the first user (paragraphs 0087-88, 0093-94, 0098-100).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate Frattis’ invention of authentication server to authorize accessing network element and peer-to-peer communication between the first and second user equipments, with the teachings of Rutten. One would be motivated to have both first and second users registered with domain name server in order to establish a direct P2P communication session to reduce complexity and improve flexibility and efficiency in performance.
As per claim 2, Rutten discloses the method wherein the domain name of the second user is an address string that identifies an Internet Protocol resource such as a server to access services provided by the server on behalf of the second user (paragraphs 0119-120, 0129).
As per claim 3, Rutten discloses the method further including: implementing customer relationship management (CRM) functionality that identifies the first user to the second user based upon the domain name registered with the domain name server and providing to the second user, user information of the first user; wherein the user information includes at least one of a username, user address, date and time of a last communication with the first user, and any products and services purchased by the first user (paragraphs 0118-121, 0126).
As per claim 4, Rutten discloses the method further including implementing a pre-call assistant that indicates to the second user an intent of the call (paragraphs 0029-31, 0037).
As per claim 5, Rutten discloses the method further including the domain communication server removing expired domain name records (paragraphs 0093, 0145).
As per claim 6, Rutten discloses the method wherein initiating, a direct peer-to-peer communication session is in response to a request to conduct a voice call (paragraphs 0074, 0081).
As per claim 7, Rutten discloses the method wherein initiating, a direct peer-to-peer communication session is in response to a request to conduct a video call (paragraphs 0034, 0094, 0104).
As per claim 8, Rutten discloses the method wherein initiating, a direct peer-to-peer communication session is in response to a request to conduct a data call (paragraphs 0094, 0104).
As per claim 9, Rutten discloses the method wherein initiating, a direct peer-to-peer communication session is in response to a request to conduct messaging (paragraphs 0074, 0094, 0104).
As per claim 10, Rutten discloses the method wherein authorizing, by the domain communication server, users to participate in the direct peer-to-peer real time communications using the domain name further includes authorizing users to conduct (i) initiating direct peer-to-peer real time communications; and (ii) receiving direct peer-to-peer real time communications (paragraphs 0039, 0045, 0109-110).
As per claim 11, Rutten discloses the method further including implementing a schedule function enabling the direct peer-to-peer real time communications to be scheduled (paragraphs 0118-121).
As per claim 12, Rutten discloses the method further including implementing an Out-of-office mode thereby enabling the second user to establish availability to attend calls (paragraphs 0074, 0094, 0104).
As per claim 13, Rutten discloses the method further including implementing a reward system for users that compensates for waiting in picking up calls, by: tracking wait times using a timer started upon receipt of an incoming call and stopped upon initiating the direct peer-to-peer communication session; determining a reward; and providing the reward to a waiting user (paragraphs 0045, 0078, 0109-110).
As per claim 14, Rutten discloses the method wherein a request to initiate the direct peer-to-peer communication session is received via a first instance of a web page (paragraphs 0044-45, 0109-110).
As per claim 15, Rutten discloses the method further including offering the second user to initiate direct peer- to-peer communications with the first user via at least one of (i) a second instance of a web page and (ii) a first instance of a mobile application (paragraphs 0044-45, 0109-110).
As per claim 16, Rutten discloses the method wherein a request to initiate the direct peer-to-peer communication session is received via a first instance of a mobile application (paragraphs 0044-45, 0109-110).
As per claim 17, Rutten discloses the method wherein offering to initiate direct peer-to-peer communications with the first user is offered via at least one of: (i) a second instance of a mobile application and (ii) a first instance of a web page (paragraphs 0077, 0084).
Claim 18 is an Independent claim with similar limitation but different in preamble and hence are rejected based on the rejection provided in claim 1.
Claim 19 is an Independent claim with similar limitation but different in preamble and hence are rejected based on the rejection provided in claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Johnson et al. (US Publication 2015/0113172) discloses deploying and maintaining Internet-connected networked devices. The claimed embodiments address the problem of deploying and managing Internet-connected devices. The disclosure and claims thereto advance the technical fields for addressing the problem of deploying and managing Internet-connected devices.
Balasaygun et al. (US Publication 2011/0044440) authenticated using an authentication metric such as a face print or voice print. A single telecommunication address (or one for each participant) that is not associated with a communication device and is associated with at least one of the participants is determined. The telecommunication address (or addresses) is sent during the initiation of a communication session. Other embodiments provide for sending a single associated telecommunications address, individual identifiers of each of the participants, and a communication device name to better identify exactly who is calling. The system can also detect when an additional participant has joined the communication session and when a participant leaves the communication session.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARZANA B HUQ whose telephone number is (571)270-3223. The examiner can normally be reached Monday - Friday: 8:30-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emmanuel L Moise can be reached at 571-272-3865. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FARZANA B HUQ/Primary Examiner, Art Unit 2455
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