www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`18/383,773
`
`STE
`
`10/25/2023
`
`Stephen HODGE
`
`3210.037000D
`
`4196
`
`SLI
`
`TEIN&
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1101 K Street, NW
`10th Floor
`WASHINGTON,DC 20005
`
`SIVIL, NIZAR N
`
`2647
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/3 1/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`eoffice @sternekessler.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`2-21 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C} Claim(s)__ is/are allowed.
`Claim(s) 2-21is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11) The drawing(s) filed on 10/25/2023 is/are: a)[¥) accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)£) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)Q) All
`1.1) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No. |
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240430
`
`Application No.
`Applicant(s)
`18/383,773
`HODGE etal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`NIZAR N SIVJI
`2647
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 3/8/2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 18/383,773
`Art Unit: 2647
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined
`
`underthe first inventor to file provisions of the AIA.
`
`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 timelyfiled 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 madeas a result of
`
`activities undertaken within the scope of a joint research agreement. See MPEP §
`
`717.02 for applications subject to examination underthe first inventor to file provisions
`
`

`

`Application/Control Number: 18/383,773
`Art Unit: 2647
`
`Page 3
`
`of the AIA as explained in MPEP § 2159. See MPEP § 2146et seq. for applications not
`
`subject to examination underthe first inventor to file provisions of the AIA. A terminal
`
`disclaimer must be signed in compliance with 37 CFR 1.321 (b).
`
`The USPTOInternet website contains terminal disclaimer forms which may be used.
`
`Please visit www.uspto.gov/patent/patents-forms. Thefiling 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
`
`
`
`Patent No. US 9667663 B2
`
`Claim 2-21 are rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 1-28 of Patent No. US 9667663 B2. Although the claims at
`
`issue are notidentical, they are not patentably distinct from each other because all the
`
`claimedlimitations recited in pending application are transparently found in Patent No.
`
`US 9667663 B2 with obvious wording variation. For example, compare Claim 12 of
`
`pending application with claim 1 of Patent No. US 9667663 B2, they both recite
`
`A communication method, comprising (A secure electronic message exchange
`
`system, comprising):
`
`receiving an outgoing message from an inmate of a controlled environment
`
`directed to an outside party (when the inmate attempts to login to the safe terminal,
`
`

`

`Application/Control Number: 18/383,773
`Art Unit: 2647
`
`Page 4
`
`generate an electronic message for a user based on input from the inmate; the user
`
`being externalto the institution);
`
`determining a message type (claim 5, the plurality of formats includes at least
`
`one of a text message, an e-mail, a voice call, and a voice message i.e., message type)
`
`of the outgoing message (generate an electronic message for a user based on input
`
`from the inmate i.e., outgoing message);
`
`determining that the message typeis one requiring opt-in (perform an automated
`
`security scan of the electronic messagei.e., determining, authenticate the user by
`
`determining whetherthe user is an approved contactfor the inmate i.e., message type
`
`is one requiring opt-in);
`
`determining, from the database, whetherthe outside party has optedin to
`
`messages of the message type (authenticate the user by determining whether the user
`
`is an approved contactfor the inmate, and based on the automated security scan and
`
`the authentication of the user, forward the electronic message to the secure platform);
`
`and
`
`route the messageto the outside party or withhold the message from the outside
`
`party based on whetherthe outside party has opted in (forward the electronic message
`
`to the secure platform, and forward a notification associated with the electronic
`
`message to a device associated with the user).
`
`

`

`Application/Control Number: 18/383,773
`Art Unit: 2647
`
`Page 5
`
`Further, analyzing and comparing dependent claims 13-21 of the pending
`
`application with claims 2-14 of Patent No. US 9667663 B2 it was found that they recite
`
`the same limitation with wording changes.
`
`Similarly, analyzing and comparing independentclaims 1-12 of the pending
`
`application including its dependent claims with claims 15-28 including its dependent
`
`claims of Patent No. US 9667663 B2 it was found that they recite the samelimitation
`
`with wording changes.
`
`Note the issued claims of Patent No. US 9667663 B2 are narrower in scope such
`
`that the claimed limitations as recited in pending application are encompassed by
`
`Patent No. US 9667663 B2.
`
`Patent No. US 9680878 B2
`
`Claim 2-21 rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 1-25 of Patent No. US 9680878 B2. Although the claims at
`
`issue are notidentical, they are not patentably distinct from each other becauseall the
`
`claimedlimitations recited in pending application are transparently found in Patent No.
`
`US 9680878 B2 with obvious wording variation. For example, compare Claim 1 and 12
`
`of pending application with claim 1 and 19 of Patent No. US 9680878 B2, they both
`
`recite
`
`A communication method, comprising (A computer-implemented method for
`
`transmitting messages from a secured inmatefacility, the method comprising):
`
`receiving an outgoing message from an inmate of a controlled environment
`
`directed to an outside party (receiving, via a wireless connection, a local user message
`
`

`

`Application/Control Number: 18/383,773
`Art Unit: 2647
`
`Page 6
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`in a voice format generated using a voice input at a wireless safe terminal; transmitting
`
`the voice message from the safe terminal to a control platform; converting the voice
`
`message from the voice format into a text format using speech recognition);
`
`determining a message type of the outgoing message (transmitting the voice
`
`message from the safe terminal to a control platform; converting the voice message
`
`from the voice formatinto a text format using speech recognition i.e., determining a
`
`message type is a voice message and need to be changed to text message of the
`
`outgoing message);
`
`determining that the message typeis one requiring opt-in (identifying, from the
`
`converted message, account information of a remote user);
`
`determining, from the database, whetherthe outside party has opted in to
`
`messages of the message type (obtaining contact information related to the remote user
`
`from a database, based on the identified account information of the remote user; and
`
`transmitting the converted message to the remote user based on the obtained contact
`
`information of the remote user); and
`
`route the messageto the outside party or withhold the message from the outside
`
`party based on whetherthe outside party has opted in (only after the converted
`
`message has passed a security check, wherein the wireless safe terminal accesses
`
`secure communications platform software only and blocksthe local user from accessing
`
`the internet).
`
`Further, analyzing and comparing dependent claims 3-11 and 13-21 of the
`
`pending application with claims 2-12 of Patent No. US 9680878 B2 it was foundthat
`
`they recite the same limitation with wording changes.
`
`

`

`Application/Control Number: 18/383,773
`Art Unit: 2647
`
`Page 7
`
`Note the issued claims of Patent No. US 9680878 B2 are narrower in scope such
`
`that the claimed limitations as recited in pending application are encompassed by
`
`Patent No. US 9680878 B2.
`
`1. Patent No. US 9807123 B2
`
`Claim 2-21 rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 1-25 of Patent No. US 9807123 B2. Although the claims at
`
`issue are notidentical, they are not patentably distinct from each other becauseall the
`
`claimedlimitations recited in pending application are transparently found in Patent No.
`
`US 9807123 B2 with obvious wording variation. For example, compare Claim 12 of
`
`pending application with claim 1 of Patent No. US 9807123 B2, they both recite
`
`A communication method, comprising (A secure electronic message exchange
`
`system usable inside a secured inmate facility, the secure electronic message
`
`exchange system comprising):
`
`receiving an outgoing message from an inmate of a controlled environment
`
`directed to an outside party (receive the instant message from the safe terminal);
`
`determining a message type of the outgoing message (claim 2, safe terminalis
`
`further configured to allow the local user to generate the instant message using text
`
`input or voice input);
`
`determining that the message typeis one requiring opt-in (convert the instant
`
`message into a format suitable for an automated security scan and transmission of the
`
`instant message; perform the automated security scan of the instant message,
`
`authenticate a remote user);
`
`

`

`Application/Control Number: 18/383,773
`Art Unit: 2647
`
`Page 8
`
`determining, from the database, whetherthe outside party has optedin to
`
`messagesof the message type (perform the automated security scan of the instant
`
`message, authenticate a remote user); and
`
`route the messageto the outside party or withhold the message from the outside
`
`party based on whether the outside party has opted in (based on the automated security
`
`scan, transmit the instant message to a device associated with the authenticated
`
`remote useror transmit a notification to an administrator and store the instant message
`
`in a database,the control platform including a central computer control platform
`
`configured to allow the local user and the remote user to communicate via electronic
`
`messages).
`
`Further, analyzing and comparing dependent claims 13-21 of the pending
`
`application with claims 2-11 of Patent No. US 9807123 B2 it was found that they recite
`
`the same limitation with wording changes.
`
`Similarly, analyzing and comparing independentclaims 2-11 of the pending
`
`application including its dependent claims with claims 20-25 including its dependent
`
`claims of Patent No. US 9807123 B2 it was found that they recite the samelimitation
`
`with wording changes.
`
`Note the issued claims of Patent No. US 9807123 B2 are narrower in scope such
`
`that the claimed limitations as recited in pending application are encompassed by
`
`Patent No. US 9807123 B2.
`
`Patent No. US 9967291 B1
`
`

`

`Application/Control Number: 18/383,773
`Art Unit: 2647
`
`Page 9
`
`Claim 2-21 rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 1-30 of Patent No. US 9967291 B1. Although the claims at
`
`issue are notidentical, they are not patentably distinct from each other becauseall the
`
`claimed limitations recited in pending application are transparently found in Patent No.
`
`US 9967291 Bi with obvious wording variation. For example, compare Claim 12 of
`
`pending application with claim 1 of Patent No. US 9967291 B1, they both recite
`
`A communication method, comprising (A method for secure electronic message
`
`exchange, comprising):
`
`receiving an outgoing message from an inmate of a controlled environment
`
`directed to an outside party (generating, by the safe terminal, an electronic message for
`
`a user based on input from the inmate, the user being externalto the institution);
`
`determining a message type of the outgoing message (an electronic message for
`
`a user based on input from the inmate);
`
`determining that the message typeis one requiring opt-in (performing, by the
`
`control platform, an automated security scan of the electronic message; authenticating,
`
`by the control platform, the user by determining whether the user is an approved contact
`
`far the inmate);
`
`determining, from the database, whetherthe outside party has optedin to
`
`messages of the message type (authenticating, by the control platform, the user by
`
`determining whetherthe user is an approved contact far the inmate; based on the
`
`automated security scan and the authentication of the user); and
`
`route the messageto the outside party or withhold the message from the outside
`
`party based on whetherthe outside party has opted in (forwarding, by the control
`
`

`

`Application/Control Number: 18/383,773
`Art Unit: 2647
`
`Page 10
`
`platform, the electronic message to a secure platform, and forwarding a notification
`
`associated with the electronic message to a device associated with the user).
`
`Further, analyzing and comparing dependent claims 13-21 of the pending
`
`application with claims 2-6 of Patent No. US 9967291 B1 it was found that they recite
`
`the same limitation with wording changes.
`
`Similarly, analyzing and comparing independent claims 1-11 of the pending
`
`application including its dependent claims with claims 13-21 including its dependent
`
`claims of Patent No. US 9967291 B1 it was found that they recite the samelimitation
`
`with wording changes.
`
`Note the issued claims of Patent No. US 9967291 B1 are narrower in scope such
`
`that the claimed limitations as recited in pending application are encompassed by
`
`Patent No. US 9967291 B1.
`
`Patent No. US 10116707 B2
`
`Claim 2-21 rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 1-30 of Patent No. US 10116707 B2. Although the claims at
`
`issue are notidentical, they are not patentably distinct from each other becauseall the
`
`claimedlimitations recited in pending application are transparently found in Patent No.
`
`US 10116707 B2 with obvious wording variation. For example, compare Claim 12 of
`
`pending application with claim 1 of Patent No. US 10116707 B2, they both recite
`
`A communication method, comprising (A method for secure electronic message
`
`exchange, comprising):
`
`

`

`Application/Control Number: 18/383,773
`Art Unit: 2647
`
`Page 11
`
`receiving an outgoing message from an inmate of a controlled environment
`
`directed to an outside party (receiving, by the control platform, the electronic message
`
`from the wireless terminal);
`
`determining a message type of the outgoing message (performing, by the control
`
`platform, an automated security scan of the electronic message);
`
`determining that the message typeis one requiring opt-in (authenticating, by the
`
`control platform, the user by determining whether the user is an approved contactfor
`
`the inmate);
`
`determining, from the database, whetherthe outside party has optedin to
`
`messages of the message type (based on the automated security scan and the
`
`authentication of the user); and
`
`route the messageto the outside party or withhold the message from the outside
`
`party based on whetherthe outside party has opted in (forwarding, by the control
`
`platform, the electronic message to a secure platform, and forwarding a notification
`
`associated with the electronic message to a device associated with the user; receiving,
`
`by the secureplatform, a login request from the device associated with the userin
`
`responseto receiving the notification associated with the electronic message; approving
`
`the login requestfrom the user; providing, by the secure platform, secure web-based
`
`accessto the user upon approvalof the login request; and facilitating, by the secure
`
`platform, a subsequent electronic message conversation between the inmate and the
`
`user using the secure web-based access, wherein the secure platform is integrated
`
`within the control platform).
`
`

`

`Application/Control Number: 18/383,773
`Art Unit: 2647
`
`Page 12
`
`Further, analyzing and comparing dependent claims 13-21 of the pending
`
`application with claims 2-6 of Patent No. US 10116707 B2 it was found that they recite
`
`the same limitation with wording changes.
`
`Similarly, analyzing and comparing independentclaims 1-11 of the pending
`
`application including its dependent claims with claims 13-21 including its dependent
`
`claims of Patent No. US 10116707 B2 it was found that they recite the same limitation
`
`with wording changes.
`
`Note the issued claims of Patent No. US 10116707 B2 are narrowerin scope
`
`such that the claimed limitations as recited in pending application are encompassed by
`
`Patent No. US 10116707 B2.
`
`Patent No. US 11394751 B2
`
`Claim 2-21 rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 1-20 of Patent No. US 11394751 B2. Although the claims at
`
`issue are notidentical, they are not patentably distinct from each other becauseall the
`
`claimedlimitations recited in pending application are transparently found in Patent No.
`
`US 11290499 B2 with obvious wording variation. For example, compare Claim 12 of
`
`pending application with claim 11 of Patent No. US 11394751 B2, they both recite
`
`A communication method, comprising (A method for a secure exchange of a
`
`message at an institution, the method comprising):
`
`receiving an outgoing message from an inmate of a controlled environment
`
`directed to an outside party (the inmate to generate a message in one of a plurality of
`
`input methods);
`
`

`

`Application/Control Number: 18/383,773
`Art Unit: 2647
`
`Page 13
`
`determining a message type of the outgoing message (claim 15, wherein the
`
`message is a voice mail input at the safe terminal);
`
`determining that the message typeis one requiring opt-in (making available, by
`
`the control platform, the message to the remote recipient upon authentication of a login
`
`request by the remoterecipient);
`
`determining, from the database, whetherthe outside party has optedin to
`
`messages of the message type(claim 12, performing, by the control platform, a security
`
`check of the message based on the remoterecipient being an approved contactof the
`
`inmate); and
`
`route the messageto the outside party or withhold the message from the outside
`
`party based on whether the outside party has opted in (the message to the remote
`
`recipient upon authentication of a login request by the remote recipient).
`
`Further, analyzing and comparing dependent claims 13-21 of the pending
`
`application with claims 12-20 of Patent No. US 11394751 B2 it was found that they
`
`recite the same limitation with wording changes.
`
`Similarly, analyzing and comparing independent claims 1-11 of the pending
`
`application including its dependent claims with claims 1-10 including its dependent
`
`claims of Patent No. US 11394751 B2 it was found that they recite the same limitation
`
`with wording changes.
`
`Note the issued claims of Patent No. US 11394751 B2 are narrowerin scope
`
`suchthat the claimed limitations as recited in pending application are encompassed by
`
`Patent No. US 11394751 B2.
`
`Patent No. US 11843640 B2
`
`

`

`Application/Control Number: 18/383,773
`Art Unit: 2647
`
`Page 14
`
`Claim 2-21 rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 1-20 of Patent No. US 11843640 B2. Although the claims at
`
`issue are notidentical, they are not patentably distinct from each other becauseall the
`
`claimedlimitations recited in pending application are transparently found in Patent No.
`
`US 11843640 B2 with obvious wording variation. For example, compare Claim 12 of
`
`pending application with claim 1 of Patent No. US 11843640 B2, they both recite
`
`A communication method, comprising (A method for secure electronic message
`
`exchange, comprising):
`
`receiving an outgoing message from an inmate of a controlled environment
`
`directed to an outside party (generating, by the wireless terminal, an electronic message
`
`for a user based on input from the inmate);
`
`determining a message type of the outgoing message (the electronic message to
`
`a control platform using a wireless connection);
`
`determining that the message typeis one requiring opt-in (performing, by the
`
`control platform, an automated security scan of the electronic message; authenticating,
`
`by the control platform, the user by determining whether the user is an approved contact
`
`for the inmate);
`
`determining, from the database, whetherthe outside party has optedin to
`
`messages of the message type (based on the automated security scan and the
`
`authentication of the user, forwarding, by the control platform, the electronic message to
`
`a secure platform, and forwarding a notification associated with the electronic message
`
`to a device associated with the user; receiving, by the secure platform, a login request
`
`

`

`Application/Control Number: 18/383,773
`Art Unit: 2647
`
`Page 15
`
`from the device associated with the user in response to receiving the notification
`
`associated with the electronic message); and
`
`route the messageto the outside party or withhold the message from the outside
`
`party based on whetherthe outside party has opted in (approving the login request from
`
`the user; providing, by the secure platform, secure web-based accessto the user upon
`
`approval of the login request; and facilitating, by the secure platform, a subsequent
`
`electronic message conversation between the inmate and the user using the secure
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`web-based access, wherein the secure platform is integrated within the control
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`platform).
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`Further, analyzing and comparing dependent claims 13-21 of the pending
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`application with claims 2-6 of Patent No. US 11843640 B2 it was found that they recite
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`the same limitation with wording changes.
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`Similarly, analyzing and comparing independent claims 1-11 of the pending
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`application including its dependent claims with claims 13-20 including its dependent
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`claims of Patent No. US 11843640 B2 it was found that they recite the same limitation
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`with wording changes.
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`Note the issued claims of Patent No. US 11843640 B2 are narrowerin scope
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`such that the claimed limitations as recited in pending application are encompassed by
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`Patent No. US 11843640 B2.
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`Examiner Note
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`Claim 1
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`is cancelled.
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`Claim Rejections - 35 USC § 102
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`

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`Application/Control Number: 18/383,773
`Art Unit: 2647
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`Page 16
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103)is incorrect, any
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`correction of the statutory basis (i.e., changing from AIA to pre-AlA) for the rejection will
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`not be considered a new ground ofrejection if the prior art relied upon, and the rationale
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`supporting the rejection, would be the same under either status.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section madein this Office action:
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`A personshall be entitled to a patent unless —
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`(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 effectivefiling date of the claimed
`invention.
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`Claim(s) 2-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
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`Hodge et al. Pub. No. US 20060245559 A1.
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`Regarding Claim 2, Hodge teaches a communication server (Fig. 1 Unit 110,
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`server) in a controlled environment (Fig. 1 and Para 56, institution site 100),
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`comprising:
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`a communication interface configured to communicate with external devices
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`(Para 56 and 57 and Fig. 1 Unit 100 i.e., institution site 100 having inmate composite
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`station 102 that communicate with a recipient via 106 i.e., external device);
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`a databasethat stores inmate and outside contact information (Para 22, each
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`inmate has a unique recipient addressor useridentification that external parties can
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`send a message to. When an outside party attempts to send an electronic message to
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`an inmate, a series of control measures occur. The sender address is checkedfor
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`

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`Application/Control Number: 18/383,773
`Art Unit: 2647
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`Page 17
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`authenticity and to ensure that the sender is an acceptable contact for the inmate. The
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`acceptable contactlist can be maintained via an "allowed contactlist" or via a
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`"disallowed contactlist." i.e., a database that stores inmate and outside contact
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`information); and
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`one or more processors configured to:
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`receive, via the communication interface, an outgoing message from an inmate
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`of the controlled environment (Para 56 and 61 and Fig. 3, it is foreseeable that the
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`inmate may leave a voice message or similar which is then converted as necessary.
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`Also, the inmate may have direct access to a safe terminal or workstation for message
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`composition. After the inmate completes the message, the messageis sent to MFU
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`104. The message is scanned by MFU 104 and sent to conversion engine 108 located
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`at central station 106 (step 302)) directed to an outside party (Para 61, an inmate sends
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`a message to an external party);
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`determine a message type of the outgoing message (Para 56, At central station
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`106, conversion engine 108 converts the written or typed text messagesi.e., message
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`type received from MFU 104into digital data that can be processed by server 110);
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`determine that the message type is one requiring recipient opt-in (Para 57 and 61
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`and Fig. 3, server 110 at central station 106 associates each message with the intended
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`recipient and the message sender. Server 110 checksto seeif the attempted message
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`exchange is acceptable. Server 110 also checks to ensure that the intendedrecipient
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`

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`Application/Control Number: 18/383,773
`Art Unit: 2647
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`Page 18
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`and the inmate are authorized to communicatei.e., requiring recipient opt-in. It further
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`provides keyword and phrase scans of the messages);
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`determine, from the database, whetherthe outside party has optedin to
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`messages of the message type (Para 61, security checks are performed on the
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`message (step 304), which include, inter alia, making sure the recipient is an acceptable
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`contact, keyword and phrasescan, andfile preparation i.e., determine, from the
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`database, whetherthe outside party has opted in to messagesof the message type);
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`and
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`route the messageto the outside party or withhold the message from the
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`outside party based on whether the outside party has opted in (Para 61 and 62 and Fig.
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`3, If the message fails to pass the security checks (step 304), an administrator is
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`notified (step 306), and the message is stored in a database (step 310). If the message
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`instead passes the security check (step 304), the system sendsa notification to the
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`recipient stating that a new message from the inmate is available for viewing over the
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`secure system site (step 308) and the message is stored (step 310). The recipient logs
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`into the secure site preferably via an Internet browser(step 312) and views the
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`message (step 212) i.e., route the message to the outside party or withhold the
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`message from the outside party based on whetherthe outside party has optedin).
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`Regarding Claim 3, Hodge teaches wherein, in response to determining that
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`the outside party has not opted in, contacting the outside party prior to routing the
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`outgoing message to the outside party (Para 62).
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`

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`Application/Control Number: 18/383,773
`Art Unit: 2647
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`Page 19
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`Regarding Claim 4, Hodge teaches wherein the contacting of the outside
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`party includes requesting that the outside party authorize receipt of messagesof the
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`message type (Para 57).
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`Regarding Claim 5, Hodge teaches wherein the message type is SMS
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`text message (Para 56).
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`Regarding Claim 6, Hodge teaches wherein the message typeis email (Para
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`68).
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`Regarding Claim 7, Hodge teaches wherein the message typeis voicemail
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`(Para 55).
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`Regarding Claim 8, Hodge teaches wherein the one or more processors
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`are configured to route the message to the outside party in response to determining that
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`the message type is not one requiring recipient opt-in (Para 61).
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`Regarding Claim 9, Hodge teaches wherein the one or more processors
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`are further configured to receive, via the communi