DETAILED ACTION
This is a non-final Office action in response to communications received on 3/27/2025 and 11/30/2025. Claims 1-75 were cancelled via preliminary amendment on 11/30/2025. New claims 76-80 were added. Claims 76-80 are pending and are examined. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
The drawings filed 3/27/2025 are acknowledged.
Priority or Provisional
Priority to 8/22/2016 is recognized.
Claim Rejections - 35 USC § 112, second paragraph
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.
Claim 79-80 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 79-80 are rejected as indefinite because the elements “software module for receiving a verification signal”, “software module for receiving a communication”, “software module for determining” are limitations that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding hardware/structure described in the specification as performing the claimed function, and equivalents thereof. The claim elements are indefinite because they are clearly identified as being “software modules” when, under 35 USC 112(f), they are meant to refer to structure/hardware for performing the function. In addition, the written description fails to disclose the corresponding structure, material, or acts for the claimed functions. The Specification discloses that a communication apparatus may be a call center (para. [0069]), which uses a software application that has the modules disclosed in the claims (app 100 disclosing modules in paras. [0072], [0075], [0077]). There is nothing in the Specification to indicate that the call center or software application are hardware. As such, the Specification fails to explicitly disclose the hardware (i.e. corresponding structure) for performing the functionality of the modules.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Interpretation under 112, sixth paragraph
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The claims elements “module for receiving a verification signal”, “module for receiving a communication”, “module for determining” in this application do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder (module) that is coupled with functional language (receiving or determining) without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are claims 79 and 80.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later 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 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 76-80 are rejected under 35 U.S.C. 103 as being unpatentable over Danis (US 9, 277,049) in view of Farris (US 2015/0043724) and Weinstein (US 2001/0026609).
Regarding claim 76, Danis discloses the limitations substantially as follows:
A method of verifying the identity of a communicating party at a user device, the method comprising the steps of:
receiving a verification signal, from the communicating party, at the user device, wherein the verification signal specifies one or more conditions relating to a communication from the communicating party upon receipt of the verification signal at the user device (col. 10, ll. 20-21; col. 30, ll. 10-45 & 60-66; col. 31, ll. 10-15 & 18-36; col. 31. l. 64-col. 32, l. 7: receiving at the authentication device that is integrated into the telephone (i.e. at a user device) a calling status message with a password to be verified (i.e. verification signal), where the calling status message specifies a password to be used by the caller in subsequent communications (i.e. specified condition relating to the communication from the communicating party) after the password has been received by the authentication device);
receiving the communication at the user device, wherein the communication comprises information identifying the communicating party (col. 10, ll. 20-21; col. 11, ll. 29-32; col. 30, ll. 10-45 & 60-66; col. 31, ll. 10-15 & 18-36; col. 31, l. 64-col. 32, l. 7: receiving at an authentication device integrated with a telephone (i.e. user device) a message/certification password request (i.e. communication) comprising the phone number/caller ID information of the caller (i.e. identifying the communicating party)); and
determining whether the communication satisfies the specified one or more conditions thereby to verify the identity of the communicating party (col. 30, ll. 10-45; col. 31, ll. 20-36: determining whether the message/certification password request contains the valid certification password in order to authenticate the identity of the second authentication device (i.e. verify identify of the communicating party).
Danis does not explicitly disclose the remaining limitations of claim 76 as follows:
wherein the verification signal specifies one or more conditions relating to a communication from the communicating party and at least one of the conditions relate to whether the communication is received within a predetermined time period specified in the verification signal, said predetermined time period commencing upon receipt of the verification signal;
However, in the same field of endeavor, Farris discloses the remaining limitations of claim 76 as follows:
wherein the verification signal specifies one or more conditions relating to the communication from the communicating party and at least one of the conditions relate to whether the communication is received within a predetermined time period, said predetermined time period commencing upon receipt of the verification signal (paras. [0034], [0036], [0057], [0060]: wherein the received final ID information (i.e. verification signal) specifies a time that the final ID information was received must be within a threshold time (i.e. condition relating to predetermined time period), wherein the time in the final ID information must be within a threshold time of the time identified in the initial ID information (i.e. condition relating to whether communication containing the final ID information was received within the threshold) for the sending device to be verified, the threshold beginning at the time at which the initial ID information is received);
determining whether the communication satisfies the specified one or more conditions thereby to verify the identity of the communicating party (paras. [0056], [0060]-[0061]: verifying the sending device/caller (I.e. identity of the communicating party) based upon determining whether the final ID information was received within the threshold time identified in the initial ID information)
Danis is combinable with Farris because both are from the same field of endeavor of using caller identification information to respond to a call. It would have been obvious to one of ordinary skill in the art at the time of the invention to integrate Ferro’s method of having the initial ID information specify a threshold period of time within which the final ID information must be received with the system of Danis in order to enable the system to detect when the final ID information received has been spoofed/falsified.
Neither Danis or Farris disclose the limitations of claim 76 as follows:
conditions relate to whether the communication is received within a predetermined time period specified in the verification signal
However, in the same field of endeavor, Weinstein discloses the remaining limitations of claim 76 as follows:
conditions relate to whether the communication is received within a predetermined time period specified in the verification signal (paras. [0053], [0056]: receiving contact information (i.e. verification signal) specifying as condition the time period during which calls will be accepted/verified, wherein the time period during which calls are accepted/verified is included as part of the contact information (i.e. within the verification signal)).
Weinstein is combinable with Danis and Farris because all three are from the same field of endeavor of enabling secure calls and validating caller identification information. It would have been obvious to one of ordinary skill in the art at the time of the invention to integrate Weinstein’s method of specifying the time period during which communications must be received in the verification signal so that the time period information is readily available for verification without requiring additional computations.
Regarding claim 77, Danis, Farris and Weinstein disclose the limitations of claim 76.
Danis discloses the limitations of claim 92 as follows:
A method according to Claim 76, wherein the communication is a telephone call and the information identifying the communicating party is caller ID information (col. 30, ll. 10-45; col. 31, ll. 20-36: where the communication is a telephone call and the information identifying the sending device/second authentication device is caller id information and a certification password);
wherein the method further comprises displaying whether the identity of the communicating party has been verified on an incoming call screen of the user device (col. 15, l. 59 – col. 16, l. 14: displaying an “A” and changing color to indicate that the identity of the calling device (i.e. communicating party) has been verified on a call screen of the telephone/user device).
Regarding claim 78, Danis, Farris and Weinstein disclose the limitations of claim 76.
Danis discloses the limitations of claim 78 as follows:
A method according to Claim 76, further comprising blocking the communication upon determining that the communication does not satisfy the one or more conditions (col. 44, ll. 35-44: blocking communication attempts upon determining that the communications do not have the valid certification password (i.e. do not meet the one or more conditions)).
Regarding claim 79, Danis discloses the limitations substantially as follows:
Apparatus for verifying the identity of a communicating party; comprising:
a user hardware device implementing a software application, the software application, comprising:
a software module for receiving a verification signal from a communicating party at a user device, wherein the verification signal specifies one or more conditions relating to a communication from the communicating party upon receipt of the verification signal at the user device (col. 10, ll. 20-21; col. 30, ll. 10-45 & 60-66; col. 31, ll. 10-15 & 18-36; col. 31. l. 64-col. 32, l. 7: receiving at the authentication device that is integrated into the telephone (i.e. at a user device) a calling status message with a password to be verified (i.e. verification signal), where the calling status message specifies a password to be used by the caller in subsequent communications (i.e. specified condition relating to the communication from the communicating party) after the password has been received by the authentication device);
a software module for receiving the communication at a user device, wherein the communication comprises information identifying a communicating party (col. 10, ll. 20-21; col. 11, ll. 29-32; col. 30, ll. 10-45 & 60-66; col. 31, ll. 10-15 & 18-36; col. 31, l. 64-col. 32, l. 7: receiving at an authentication device integrated with a telephone (i.e. user device) a message/certification password request (i.e. communication) comprising the phone number/caller ID information of the caller (i.e. identifying the communicating party)); and
a software module for determining whether the communication satisfies the specified one or more conditions thereby to verify the identity of the communicating party (col. 30, ll. 10-45; col. 31, ll. 20-36: determining whether the message/certification password request contains the valid certification password in order to authenticate the identity of the second authentication device (i.e. verify identify of the communicating party).
Danis does not explicitly disclose the remaining limitations of claim 79 as follows:
wherein the verification signal specifies one or more conditions relating to the communication from the communicating party and at least one of the conditions relate to whether the communication is received within a predetermined time period specified in the verification signal, said predetermined time period commencing upon receipt of the verification signal;
However, in the same field of endeavor, Farris discloses the remaining limitations of claim 79 as follows:
wherein the verification signal specifies one or more conditions relating to the communication from the communicating party and at least one of the conditions relate to whether the communication is received within a predetermined time period, said predetermined time period commencing upon receipt of the verification signal (paras. [0056], [0057], [0060]: wherein the received initial ID information (i.e. verification signal) specifies a threshold time (i.e. condition relating to predetermined time period) during which the final ID information (i.e. communication received from the sending party) must be received in order for the sending device to be verified, the threshold beginning at the time at which the initial ID information is received);
determining whether the communication satisfies the specified one or more conditions thereby to verify the identity of the communicating party (paras. [0056], [0060]-[0061]: verifying the sending device/caller (I.e. identity of the communicating party) based upon determining whether the final ID information was received within the threshold time identified in the initial ID information)
Danis is combinable with Farris because both are from the same field of endeavor of using caller identification information to respond to a call. It would have been obvious to one of ordinary skill in the art at the time of the invention to integrate Ferro’s method of having the initial ID information specify a threshold period of time within which the final ID information must be received with the system of Danis in order to enable the system to detect when the final ID information received has been spoofed/falsified.
Neither Danis or Farris disclose the limitations of claim 79 as follows:
conditions relate to whether the communication is received within a predetermined time period specified in the verification signal
However, in the same field of endeavor, Weinstein discloses the remaining limitations of claim 79 as follows:
conditions relate to whether the communication is received within a predetermined time period specified in the verification signal (paras. [0053]: receiving new contact time information (i.e. verification signal) specifying the time period during which calls will be accepted, wherein the time period during which calls are accepted is included within the new contact time information (i.e. within the verification signal)).
Weinstein is combinable with Danis and Farris because all three are from the same field of endeavor of enabling secure calls and validating caller identification information. It would have been obvious to one of ordinary skill in the art at the time of the invention to integrate Weinstein’s method of specifying the time period during which communications must be received in the verification signal so that the time period information is readily available for verification without requiring additional computations.
Regarding claim 80, Danis discloses the limitations substantially as follows.
A system for verifying the identity of a communicating party comprising:
an apparatus for verifying the identity of a communicating party; comprising a user device implementing a software application; the software application comprising:
a module for receiving a verification signal from a communicating party at a user device, wherein the verification signal specifies one or more conditions relating to a communication from the communicating party upon receipt of the verification signal at the user device (col. 10, ll. 20-21; col. 30, ll. 10-45 & 60-66; col. 31, ll. 10-15 & 18-36; col. 31. l. 64-col. 32, l. 7: receiving at the authentication device that is integrated into the telephone (i.e. at a user device) a calling status message with a password to be verified (i.e. verification signal), where the calling status message specifies a password to be used by the caller in subsequent communications (i.e. specified condition relating to the communication from the communicating party) after the password has been received by the authentication device);
a software module for receiving the communication at the user device, wherein the communication comprises information identifying the communicating party (col. 10, ll. 20-21; col. 11, ll. 29-32; col. 30, ll. 10-45 & 60-66; col. 31, ll. 10-15 & 18-36; col. 31, l. 64-col. 32, l. 7: receiving at an authentication device integrated with a telephone (i.e. user device) a message/certification password request (i.e. communication) comprising the phone number/caller ID information of the caller (i.e. identifying the communicating party);
a software module for determining whether the communication satisfies the specified one or more conditions thereby to verify the identity of the communicating party (col. 30, ll. 10-45; col. 31, ll. 20-36: determining whether the message/certification password request contains the valid certification password in order to authenticate the identity of the second authentication device (i.e. verify identify of the communicating party);
a first communication apparatus for sending a verification signal (col. 30, ll: 10-45: sending device for sending a calling status message); and
a second communication apparatus for sending a communication (col. 30, ll. 10-45; col. 31, ll. 20-36: calling device/second communications device for sending communications).
Danis does not explicitly disclose the remaining limitations of claim 80 as follows:
wherein the verification signal specifies one or more conditions relating to the communication from the communicating party and at least one of the conditions relate to whether the communication is received within a predetermined time period, said predetermined time period commencing upon receipt of the verification signal;
However, in the same field of endeavor Farris discloses the remaining limitations of claim 80 as follows:
wherein the verification signal specifies one or more conditions relating to the communication from the communicating party and at least one of the conditions relate to whether the communication is received within a predetermined time period, said predetermined time period commencing upon receipt of the verification signal (paras. [0056], [0057], [0060]: wherein the received initial ID information (i.e. verification signal) specifies a threshold time (i.e. condition relating to predetermined time period) during which the final ID information (i.e. communication received from the sending party) must be received in order for the sending device to be verified, the threshold beginning at the time at which the initial ID information is received);
determining whether the communication satisfies the specified one or more conditions thereby to verify the identity of the communicating party (paras. [0056], [0060]-[0061]: verifying the sending device/caller (I.e. identity of the communicating party) based upon determining whether the final ID information was received within the threshold time identified in the initial ID information)
Danis is combinable with Farris because both are from the same field of endeavor of using caller identification information to respond to a call. It would have been obvious to one of ordinary skill in the art at the time of the invention to integrate Ferro’s method of having the initial ID information specify a threshold period of time within which the final ID information must be received with the system of Danis in order to enable the system to detect when the final ID information received has been spoofed/falsified.
Neither Danis or Farris disclose the limitations of claim 80 as follows:
conditions relate to whether the communication is received within a predetermined time period specified in the verification signal
However, in the same field of endeavor, Weinstein discloses the remaining limitations of claim 80 as follows:
conditions relate to whether the communication is received within a predetermined time period specified in the verification signal (paras. [0053]: receiving new contact time information (i.e. verification signal) specifying the time period during which calls will be accepted, wherein the time period during which calls are accepted is included within the new contact time information (i.e. within the verification signal)).
Weinstein is combinable with Danis and Farris because all three are from the same field of endeavor of enabling secure calls and validating caller identification information. It would have been obvious to one of ordinary skill in the art at the time of the invention to integrate Weinstein’s method of specifying the time period during which communications must be received in the verification signal so that the time period information is readily available for verification without requiring additional computations.
Prior Art Considered But Not Relied Upon
Prior art considered but not relied upon includes:
1) Bender (US 2015/0063552) disclosing authenticating the calling device when the call is made within a predetermined period of time, the predetermined period of time for which the future call is approved may be configurable as any period of time (see paras. [0016], [0067]).
Conclusion
For the above-stated reasons, claims 76-80 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON S LYNCH whose telephone number is (571)272-4583. The examiner can normally be reached on 10AM-6PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Taghi T Arani can be reached on 571-272-3787. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHARON S LYNCH/Primary Examiner, Art Unit 2438
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