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 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 Patent No. 12,244,774 B2.
Although the conflicting claims are not identical, they are not patentably distinct from each other because claims in the continuations are broader than the ones in patent, broad claims in the continuation application are rejected previously patented narrow claims. For example, claim 1 of the present invention is the same as claim 1 of Patent No. 12,244,774 B2 except that “determining, by the soft switch, whether the diverted call invite matches the stored identity information associated with the original call invite.” Therefore, claim 1 of the present invention is broader than the patented claim 1.
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.
Claims 1-20 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by U.S Pub. 2021/0203700 A1 to Asveren et al. (hereinafter “Asveren”).
Regarding claim 1, Dan teaches Regarding claim 1, Dan teaches a method, comprising:
receiving, by a soft switch, an original call invite initiated by a calling device and directed to a called device, wherein the original call invite includes an original identity header (Abstract and paragraphs [0010] and [0042]; receiving, at a first Session Border Controller (SBC), a diverted Session Initiation Protocol (SIP) INVITE message corresponding to a first call, said diverted SIP INVITE message not including an Identity header; obtaining an original Identity header or information from the original Identity header (e.g., attestation level) corresponding to the first call);
storing, by the soft switch, identity information associated with the original call invite in association with customer data associated with the called device (Paragraphs [0011], [0016]and [0059]; SBC N, storage device 205 and endpoint device 214 are all connected to the network 250 allowing these system elements to communicate with one another. In some embodiments the storage device 205 is a data base with a processor and memory which is used to store records with call identifying information and an Identity header from a call);
routing, by the soft switch, the original call invite to the called device (paragraphs [0042]-[0043] and [0045]; Call diversion is a common scenario in communication networks where the called party forwards the call to another party);
receiving, by the soft switch, a diverted call invite including an indication that the called device is a forwarding device of the diverted call invite and an indication that a forward-to destination is an intended recipient of the diverted call invite (Abstract, paragraphs [0040]-[0042]; the first SBC knows that the destination identified in the To header TN-b is a trusted end point device, e.g., an IP-PBX, located in the Service Provider-b network or serviced by the Service Provider-b network that has the ability to reflect back parameters attached to at least one header, e.g., the FROM header in a diverted SIP INVITE message but does not pass Identity headers when diverting, e.g., forwarding, a received SIP INVITE message or call) ;
attaching, by the soft switch, the original identity header to the diverted call invite; and routing, by the soft switch, the diverted call invite to the forward-to destination (Abstract, paragraphs [0040]-[0042]; the first SBC knows that the destination identified in the To header TN-b is a trusted end point device, e.g., an IP-PBX, located in the Service Provider-b network or serviced by the Service Provider-b network that has the ability to reflect back parameters attached to at least one header, e.g., the FROM header in a diverted SIP INVITE message but does not pass Identity headers when diverting, e.g., forwarding, a received SIP INVITE message or call).
Regarding claim 2, Dan teaches the method of claim 1, wherein determining whether the called device is likely to forward the original call invite comprises determining, based on observed historic call data, whether the called device forwards calls at a rate that meets or exceeds a threshold call forwarding rate (paragraphs [0047] and [0135]]; the SIP INVITE message 614 includes a Diversion header or a history-info header indicating that the SIP INVITE message has been diverted as well as the x-parameter: storage-id; hash(storage-id). The endpoint device 608 transmits the diverted SIP INVITE message 614 to the SBC-B 604 which along with SBC-A 602 provides services to endpoint device 608. SBC-B 604 receives the diverted SIP INVITE message 614 from the endpoint device 608).
Regarding claim 3, Dan teaches the method of claim 1, wherein storing identity information associated with the original identity header comprises storing:
the original identity header; or one or more identity characteristics included in the original identity header (paragraphs [0014]-[0016] and [0059]; , SBC N, storage device 205 and endpoint device 214 are all connected to the network 250 allowing these system elements to communicate with one another. In some embodiments the storage device 205 is a data base with a processor and memory which is used to store records with call identifying information and an Identity header from a call, e.g., a call context or session context record).
Regarding claim 4, Dan teaches the method of claim 3, wherein the original identity header comprises an original SHAKEN identity header and storing one or more identity characteristics included in the original SHAKEN identity header comprises storing an attestation level assigned to the original call invite (Abstract and paragraphs [0037]-[0039]; Shaken/Stir protocols the originating operator or service provider authenticates or verifies the calling/called party. The originating operator or service provider equipment checks information in the received SIP INVITE request and verifies no spoofing is going on. However, the message or call can pass through different networks in the path to its destination. In Shaken/Stir, the originating operator uses its private key to sign a portion of the SIP information which includes the calling and called party and places this information in a SIP message Identity header).
Regarding claim 5, Dan teaches the method of claim 3, wherein in response to determining the identity information associated with the original call invite includes one or more identity characteristics from the original identity header, including:
one or more identity characteristics in a SHAKEN authentication request; and a resulting forwarding party-generated SHAKEN identity header in the diverted call invite (Abstract and paragraphs [0037]-[0039]; Shaken/Stir protocols the originating operator or service provider authenticates or verifies the calling/called party. The originating operator or service provider equipment checks information in the received SIP INVITE request and verifies no spoofing is going on. However, the message or call can pass through different networks in the path to its destination. In Shaken/Stir, the originating operator uses its private key to sign a portion of the SIP information which includes the calling and called party and places this information in a SIP message Identity header).
Regarding claim 6, Dan teaches the method of claim 1, wherein storing identity information associated with the original identity header comprises: storing the identity information for a limited time duration; and after the limited time duration, deleting the identity information (paragraph [0126]; FIFO is deleted if there are no remaining entries [0130] When network equipment receives INVITE at point [4], the network equipment performs a lookup on stored Identity(shaken) headers based on Tn-a/Tn-b [0131] If a match is found get the first entry of FIFO and use it [0132] If more than one SP-b network equipment acts as directly communicating with IP-PBX then the FIFO information is shared among the SP-b network equipment which directly communicate with the IP-PBX).
Regarding claim 7, Dan teaches the method of claim 1, wherein determining whether the diverted call invite matches the stored identity information associated with the original call invite comprises matching a calling number included in the diverted call invite to a claimed originator of the original call invite (paragraphs [0039] and [0126]; the message or call can pass through different networks in the path to its destination. In Shaken/Stir, the originating operator uses its private key to sign a portion of the SIP information which includes the calling and called party and places this information in a SIP message Identity header. The terminating network equipment will identify calling and called party information in the SIP message and determine if the call signature in the Identity header matches).
Regarding claim 8, Dan teaches the method of claim 1, wherein determining whether the diverted call invite matches the stored identity information associated with the original call invite comprises matching a call forwarding number included in an indication that the called device is the forwarding device of the diverted call invite to a claimed destination of the original call invite (Abstract, paragraphs[0060] and [0096]-[0098]; The endpoint device 212 telephone number TN-b does not pass or forward SIP identity headers when it diverts, re-targets or forwards a SIP message, e.g., a SIP INVITE message. The endpoint device 212 is configured to divert or re-target SIP messages or calls directed to it to the endpoint device 214 with telephone number TN-c).
Regarding claim 9, Dan teaches the method of claim 8, wherein determining whether the diverted call invite matches the stored identity information associated with the original call invite comprises matching a terminating trunk group identifier of a network device used to receive the diverted call invite from the called device to a terminating trunk group identifier associated with the claimed destination of the original call invite (paragraph [0039]; In Shaken/Stir, the originating operator uses its private key to sign a portion of the SIP information which includes the calling and called party and places this information in a SIP message Identity header. The terminating network equipment will identify calling and called party information in the SIP message and determine if the call signature in the Identity header matches. The terminating operator verifies the signature by using the public key of the originating operator. An attestation level corresponds to how certain the signature is valid or message is valid)
Regarding claim 10, Dan teaches the method of claim 1, wherein determining whether the diverted call invite matches the stored identity information associated with the original call invite comprises determining whether a timestamp associated with the stored identity information is within a time window of receiving the diverted call invite (Abstract and paragraph [0039]; In Shaken/Stir, the originating operator uses its private key to sign a portion of the SIP information which includes the calling and called party and places this information in a SIP message Identity header. The terminating network equipment will identify calling and called party information in the SIP message and determine if the call signature in the Identity header matches. The terminating operator verifies the signature by using the public key of the originating operator. An attestation level corresponds to how certain the signature is valid or message is valid).
Regarding claim 11, Dan teaches a system, comprising: at least one processor; and memory storing instructions that, when executed by the at least one processor, cause the system to: receive an original call invite initiated by a calling device and directed to a called device, wherein the original call invite includes an original identity header (Abstract and paragraphs [0010] and [0042]; receiving, at a first Session Border Controller (SBC), a diverted Session Initiation Protocol (SIP) INVITE message corresponding to a first call, said diverted SIP INVITE message not including an Identity header; obtaining an original Identity header or information from the original Identity header (e.g., attestation level) corresponding to the first call);
store identity information associated with the original call invite in association with customer data associated with the called device (Paragraphs [0011], [0016]and [0059]; SBC N, storage device 205 and endpoint device 214 are all connected to the network 250 allowing these system elements to communicate with one another. In some embodiments the storage device 205 is a data base with a processor and memory which is used to store records with call identifying information and an Identity header from a call);
route the original call invite to the called device (paragraphs [0042]-[0043] and [0045]; Call diversion is a common scenario in communication networks where the called party forwards the call to another party);
receive a diverted call invite including an indication that the called device is a forwarding device of the diverted call invite and an indication that a forward- to destination is an intended recipient of the diverted call invite; attach the original identity header to the diverted call invite (Abstract, paragraphs [0040]-[0042]; the first SBC knows that the destination identified in the To header TN-b is a trusted end point device, e.g., an IP-PBX, located in the Service Provider-b network or serviced by the Service Provider-b network that has the ability to reflect back parameters attached to at least one header, e.g., the FROM header in a diverted SIP INVITE message but does not pass Identity headers when diverting, e.g., forwarding, a received SIP INVITE message or call); and
route the diverted call invite to the forward-to destination, wherein the diversion identity header and the original identity header provide end-to-end call identity validation of the diverted call invite (Abstract, paragraphs [0040]-[0042]; the first SBC knows that the destination identified in the To header TN-b is a trusted end point device, e.g., an IP-PBX, located in the Service Provider-b network or serviced by the Service Provider-b network that has the ability to reflect back parameters attached to at least one header, e.g., the FROM header in a diverted SIP INVITE message but does not pass Identity headers when diverting, e.g., forwarding, a received SIP INVITE message or call).
Regarding claim 12, Dan teaches the system of claim 11, wherein in determining whether the called device is likely to forward the original call invite, the instructions cause the system to determine, based on observed historic call data, whether the called device forwards calls at a rate that meets or exceeds a threshold call forwarding rate (paragraphs [0047] and [0135]]; the SIP INVITE message 614 includes a Diversion header or a history-info header indicating that the SIP INVITE message has been diverted as well as the x-parameter: storage-id; hash(storage-id). The endpoint device 608 transmits the diverted SIP INVITE message 614 to the SBC-B 604 which along with SBC-A 602 provides services to endpoint device 608. SBC-B 604 receives the diverted SIP INVITE message 614 from the endpoint device 608).
Regarding claim 13, Dan teaches the system of claim 11, wherein the stored identity information associated with the original identity header comprises: the original identity header; or one or more identity characteristics included in the original identity header (paragraphs [0014]-[0016] and [0059]; , SBC N, storage device 205 and endpoint device 214 are all connected to the network 250 allowing these system elements to communicate with one another. In some embodiments the storage device 205 is a data base with a processor and memory which is used to store records with call identifying information and an Identity header from a call, e.g., a call context or session context record).
Regarding claim 14, Dan teaches the system of claim 13, wherein: the original identity header comprises an original SHAKEN identity header; and the one or more identity characteristics include an attestation level assigned to the original call invite (Abstract and paragraphs [0037]-[0039]; Shaken/Stir protocols the originating operator or service provider authenticates or verifies the calling/called party. The originating operator or service provider equipment checks information in the received SIP INVITE request and verifies no spoofing is going on. However, the message or call can pass through different networks in the path to its destination. In Shaken/Stir, the originating operator uses its private key to sign a portion of the SIP information which includes the calling and called party and places this information in a SIP message Identity header).
Regarding claim 15, Dan teaches the system of claim 13, wherein in response to a determination that the identity information associated with the original call invite includes one or more identity characteristics from the original identity header, the instructions further cause the system to include: the one or more identity characteristics in a SHAKEN authentication request; and a resulting forwarding party-generated SHAKEN identity header in the diverted call invite (Abstract and paragraphs [0037]-[0039]; Shaken/Stir protocols the originating operator or service provider authenticates or verifies the calling/called party. The originating operator or service provider equipment checks information in the received SIP INVITE request and verifies no spoofing is going on. However, the message or call can pass through different networks in the path to its destination. In Shaken/Stir, the originating operator uses its private key to sign a portion of the SIP information which includes the calling and called party and places this information in a SIP message Identity header).
Regarding claim 16, Dan teaches the system of claim 15, wherein the forwarding party-generated SHAKEN identity header includes an attestation level assigned to the original call invite (Abstract and paragraphs [0037]-[0039]; Shaken/Stir protocols the originating operator or service provider authenticates or verifies the calling/called party. The originating operator or service provider equipment checks information in the received SIP INVITE request and verifies no spoofing is going on. However, the message or call can pass through different networks in the path to its destination. In Shaken/Stir, the originating operator uses its private key to sign a portion of the SIP information which includes the calling and called party and places this information in a SIP message Identity header).
Regarding claim 17, Dan teaches the system of claim 11, wherein in determining whether the diverted call invite matches the stored identity information associated with the original call invite, the instructions cause the system to perform at least one of: match a calling number included in the diverted call invite to a claimed originator of the original call invite (Abstract and paragraphs [0037]-[0039]; Shaken/Stir protocols the originating operator or service provider authenticates or verifies the calling/called party. The originating operator or service provider equipment checks information in the received SIP INVITE request and verifies no spoofing is going on. However, the message or call can pass through different networks in the path to its destination. In Shaken/Stir, the originating operator uses its private key to sign a portion of the SIP information which includes the calling and called party and places this information in a SIP message Identity header);
match a call forwarding number included in an indication that the called device is the forwarding device of the diverted call invite to a claimed destination of the original call invite (paragraph [0126]; FIFO is deleted if there are no remaining entries [0130] When network equipment receives INVITE at point [4], the network equipment performs a lookup on stored Identity(shaken) headers based on Tn-a/Tn-b [0131] If a match is found get the first entry of FIFO and use it [0132] If more than one SP-b network equipment acts as directly communicating with IP-PBX then the FIFO information is shared among the SP-b network equipment which directly communicate with the IP-PBX);
match a terminating trunk group identifier of a network device used to receive the diverted call invite from the called device to a terminating trunk group identifier associated with the claimed destination of the original call invite; and determine a timestamp associated with the stored identity information is within a time window of receiving the diverted call invite (Abstract and paragraph [0039]; In Shaken/Stir, the originating operator uses its private key to sign a portion of the SIP information which includes the calling and called party and places this information in a SIP message Identity header. The terminating network equipment will identify calling and called party information in the SIP message and determine if the call signature in the Identity header matches. The terminating operator verifies the signature by using the public key of the originating operator. An attestation level corresponds to how certain the signature is valid or message is valid).
Regarding claim 18, Dan teaches the system of claim 18, wherein the indication that the called device is the forwarding device includes a diversion header including contact information of the called device (Abstract, paragraphs[0060] and [0096]-[0098]; The endpoint device 212 telephone number TN-b does not pass or forward SIP identity headers when it diverts, re-targets or forwards a SIP message, e.g., a SIP INVITE message. The endpoint device 212 is configured to divert or re-target SIP messages or calls directed to it to the endpoint device 214 with telephone number TN-c).
Regarding claim 19, Dan teaches the system of claim 18, wherein the indication that the called device is the forwarding device includes a diversion header including contact information of the called device (Abstract, paragraphs [0040]-[0042]; the first SBC knows that the destination identified in the To header TN-b is a trusted end point device, e.g., an IP-PBX, located in the Service Provider-b network or serviced by the Service Provider-b network that has the ability to reflect back parameters attached to at least one header, e.g., the FROM header in a diverted SIP INVITE message but does not pass Identity headers when diverting, e.g., forwarding, a received SIP INVITE message or call).
Regarding claim 20, Dan teaches a non-transitory computer-readable storage medium storing instructions that, when executed by at least one processor, cause the at least one processor to: receive an original call invite initiated by a calling device and destined for a called device (Abstract and paragraphs [0010] and [0042]; receiving, at a first Session Border Controller (SBC), a diverted Session Initiation Protocol (SIP) INVITE message corresponding to a first call, said diverted SIP INVITE message not including an Identity header; obtaining an original Identity header or information from the original Identity header (e.g., attestation level) corresponding to the first call), wherein the original call invite includes an original SHAKEN identity header; temporarily store identity information associated with the original call invite in association with customer data associated with the called device; route the original call invite to the called device (Paragraphs [0011], [0016]and [0059]; SBC N, storage device 205 and endpoint device 214 are all connected to the network 250 allowing these system elements to communicate with one another. In some embodiments the storage device 205 is a data base with a processor and memory which is used to store records with call identifying information and an Identity header from a call);
receive a diverted call invite including an indication that the called device is a forwarding device of the diverted call invite and an indication that a forward-to destination is an intended recipient of the diverted call invite (Abstract, paragraphs [0040]-[0042]; the first SBC knows that the destination identified in the To header TN-b is a trusted end point device, e.g., an IP-PBX, located in the Service Provider-b network or serviced by the Service Provider-b network that has the ability to reflect back parameters attached to at least one header, e.g., the FROM header in a diverted SIP INVITE message but does not pass Identity headers when diverting, e.g., forwarding, a received SIP INVITE message or call);
attach the original SHAKEN identity header to the diverted call invite; and route the diverted call invite to the forward-to destination (Abstract and paragraphs [0037]-[0039]; Shaken/Stir protocols the originating operator or service provider authenticates or verifies the calling/called party. The originating operator or service provider equipment checks information in the received SIP INVITE request and verifies no spoofing is going on. However, the message or call can pass through different networks in the path to its destination. In Shaken/Stir, the originating operator uses its private key to sign a portion of the SIP information which includes the calling and called party and places this information in a SIP message Identity header).
Conclusion
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AKELAW TESHALE
Primary Examiner
Art Unit 2694
/AKELAW TESHALE/Primary Examiner, Art Unit 2694
Prosecution Insights