DETAILED ACTION
Claims 1-16 are presented on 03/28/2025 for examination on merits. Claims 1 and 13 are independent base claims.
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 .
Examiner's Instructions for filing Response to this Office Action
When the Applicant submits amendments regarding to the claims in response the Office Action, the Examiner would appreciate Applicant if a clean copy of the claims is provided to facilitate the prosecution which otherwise requires extra time for editing the marked-up claims from OCR.
Please submit two sets of claims:
Set #1 as in a typical filing which includes indicators for the status of claim and all marked amendments to the claims; and
Set #2 as an appendix to the Arguments/Remarks for a clean version of the claims which has all the markups removed for entry by the Examiner.
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.
First,
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of Patent No. US 11943239 B2 (USPAT 239).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the Patent contain every element of the claims of the instant application and as such anticipate the claims of the instant application.
USPAT 239 anticipates:
1. A method, comprising:
receiving, using a computing system and from a first router among a plurality of routers in a network, first session initiation protocol ("SIP") data, the first SIP data indicating a request to initiate a SIP-based media communication session between a calling party at a source address in an originating network and a called party at a destination address in the network (USPAT 239, CLM. 1: receiving, using a computing system and from a first router among a plurality of routers in a network, first session initiation protocol (“SIP”) data, the first SIP data indicating a request to initiate a SIP-based media communication session between a calling party at a source address in an originating network and a called party at a destination address in the network);
analyzing, using the computing system, the received first SIP data to determine whether the received first SIP data comprises any abnormalities indicative of potential fraudulent or malicious actions (USPAT 239, CLM. 1: analyzing, using the computing system, the received first SIP data to determine whether the received first SIP data comprises any abnormalities indicative of potential fraudulent or malicious actions;);
based on a determination that the received first SIP data comprises at least one abnormality indicative of potential fraudulent or malicious actions, rerouting, using the computing system, the first SIP data to a security deep packet inspection ("DPI") engine (USPAT 239, CLM. 1: based on a determination that the received first SIP data comprises at least one abnormality indicative of potential fraudulent or malicious actions, rerouting, using the computing system, the first SIP data to a security deep packet inspection (“DPI”) engine);
performing, using the security DPI engine, a deep scan of the received first SIP data to identify any known fraudulent or malicious attack vectors contained within the received first SIP data and to determine whether the calling party is a known malicious entity or whether the source address is associated with a known malicious entity (USPAT 239, CLM. 1: performing, using the security DPI engine, a deep scan of the received first SIP data to identify any known fraudulent or malicious attack vectors contained within the received first SIP data and to determine whether the calling party is a known malicious entity or whether the source address is associated with a known malicious entity; in response to the security DPI engine identifying at least one known fraudulent or malicious attack vector contained within the received first SIP data, initiating one or more mitigation actions), and
in response to the security DPI engine identifying at least one known fraudulent or malicious attack vector contained within the received first SIP data, initiating one or more mitigation actions (USPAT 239, CLM. 1: normalizing, using the computing system and after initiating the one or more mitigation actions);
Independent claim 13 is rejected for the same reason as claim 1, because of the same limitations recited as found in claim 1 in similar language.
Regarding dependent claims of the present application, they are obvious variants of the same subject matter as found in the reference application, and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
Secondly,
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of Patent No. US 12267342 B2 (USPAT 342).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the Patent contain every element of the claims of the instant application and as such anticipate the claims of the instant application.
USPAT 342 anticipates:
1. A method, comprising:
receiving, using a computing system and from a first router among a plurality of routers in a network, first session initiation protocol ("SIP") data, the first SIP data indicating a request to initiate a SIP-based media communication session between a calling party at a source address in an originating network and a called party at a destination address in the network (USPAT 342, CLM. 1: receiving, … first session initiation protocol (“SIP”) data);
analyzing, using the computing system, the received first SIP data to determine whether the received first SIP data comprises any abnormalities indicative of potential fraudulent or malicious actions (USPAT 342, CLM. 1: analyzing, … the received first SIP data to determine whether the received first SIP data comprises any abnormalities indicative of potential fraudulent or malicious actions;);
based on a determination that the received first SIP data comprises at least one abnormality indicative of potential fraudulent or malicious actions, rerouting, using the computing system, the first SIP data to a security deep packet inspection ("DPI") engine (USPAT 342, CLM. 1: based on a determination that the received first SIP data comprises at least one abnormality indicative of potential fraudulent or malicious actions, rerouting, using the computing system, the first SIP data to a security deep packet inspection (“DPI”) engine);
performing, using the security DPI engine, a deep scan of the received first SIP data to identify any known fraudulent or malicious attack vectors contained within the received first SIP data and to determine whether the calling party is a known malicious entity or whether the source address is associated with a known malicious entity (USPAT 342, CLM. 1: performing, using the security DPI engine, a deep scan of the received first SIP data to identify any known fraudulent or malicious attack vectors contained within the received first SIP data and to determine whether the calling party is a known malicious entity or whether the source address is associated with a known malicious entity), and
in response to the security DPI engine identifying at least one known fraudulent or malicious attack vector contained within the received first SIP data, initiating one or more mitigation actions (USPAT 342, CLM. 1: in response to the security DPI engine identifying at least one known fraudulent or malicious attack vector contained within the received first SIP data, initiating one or more mitigation actions);
Independent claim 13 is rejected for the same reason as claim 1, because of the same limitations recited as found in claim 1 in similar language.
Regarding dependent claims of the present application, they are obvious variants of the same subject matter as found in the reference application, and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
Claim Objections
Claims 1, 8, and 13 are objected to because of the following informalities:
Claims 1 and 13 each recite the limitation “based on a determination that the received first SIP data comprises at least one abnormality indicative of potential fraudulent or malicious actions, rerouting, using the computing system, the first SIP data to a security deep packet inspection ("DPI") engine” deficiently. It appears that Applicant specifies the received first SIP data after the receiving step to indicate the data is in a SIP-based media communication that has been initiated. As such, the second instance of the first SIP data should be the received first SIP data for consistency and formality reasons.
Claim 8 is similarly objected for the aforementioned reasons.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 9 is 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.
The rejection(s) under 35 U.S.C. 112(b) is/are determined by the following reasons:
Claim 9 recites “wherein receiving the first SIP data is performed by the data collection engine” without linking to the same receiving step in claim 1. The Examiner suggests changing it to “wherein the receiving the first SIP data is performed by the data collection engine” for clarity.
Allowable Subject Matter
Claims 1-16 are allowable over prior art for the following reasons:
Independent claims 1 and 13 each repeat a substantial portion of the allowable subject matter of the parent case Application No. 18/611189, filed 03/20/2024, now U.S. Patent # 12267342. The claims recite elements of analyzing, using the computing system, the received first SIP data to determine whether the received first SIP data comprises any abnormalities indicative of potential fraudulent or malicious actions; based on a determination that the received first SIP data comprises at least one abnormality indicative of potential fraudulent or malicious actions, rerouting, using the computing system, the first SIP data to a security deep packet inspection ("DPI") engine; performing, using the security DPI engine, a deep scan of the received first SIP data to identify any known fraudulent or malicious attack vectors contained within the received first SIP data and to determine whether the calling party is a known malicious entity or whether the source address is associated with a known malicious entity; and
in response to the security DPI engine identifying at least one known fraudulent or malicious attack vector contained within the received first SIP data, initiating one or more mitigation actions. These features, in combination with the other limitations in the claim(s), are not anticipated by, nor made obvious over the prior art of record.
Therefore, independent claims 1 and 13 are allowable. Dependent claims are allowed by virtue of their dependencies on claims 1 and 13 as they further limit the scope of the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure as the prior art additionally discloses certain parts of the claim features (See “PTO-892 Notice of Reference Cited”).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DON ZHAO whose telephone number is (571)272.9953. The examiner can normally be reached on Monday to Friday, 7:30 A.M to 5:00 P.M EST.
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/Don G Zhao/Primary Examiner, Art Unit 2493 06/10/2026
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