`
`Request for EX Parte Reexamination
`
`US Patent No. 6,108,704
`
`Issued: August 22, 2000
`
`For: Point—to—Point Internet Protocol
`
`Requester: Skype, Inc.
`
`mommomomomomomom
`
`REQUEST FOR EX PARTE
`REEXAMINATION
`
`Attorney Docket No.: 03801.G184
`
`Customer No.: 08791
`
`RE UEST FOR EX PARTE REEXAMINATION UNDER 35 U.S.C.
`
`302
`
`Mail Stop Ex Part6 Reexam
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`
`Dear Sir:
`
`Pursuant to the provisions of 35 U.S.C. §§ 302—307, the undersigned hereby requests an
`
`ex parte reexamination of claims 1—7 and 10—44 of United States Patent No. 6,108,704 (“the ‘704
`
`patent,” Exhibit A) which issued on August 22, 2000 to Glenn W. Hutton et al. resulting from a
`
`patent application filed on September 25, 1995. The Requester hereby asserts that claims 1—7
`
`and 10—44 of the ‘704 patent are unpatentable over prior art references not before the Patent and
`
`Trademark Office (PTO) during prosecution of the ‘704 patent.
`
`
`
`TABLE OF CONTENTS
`
`II.
`
`III.
`
`IV.
`
`PENDING LITIGATION ........................................................................... 5
`
`LISTING OF PRIOR ART PATENTS AND PRINTED PUBLICATIONS ............. 5
`
`OVERVIEW OF THE ‘704 PATENT ............................................................. 7
`
`A.
`
`B.
`
`Subject Matter of the ‘704 Patent ........................................................... 7
`
`Prosecution History of the ‘704 Patent ..................................................... 10
`
`SUBSTANTIAL NEW QUESTION (SNQ) OF PATENTABILITY AS
`REQUIRED BY 37 C.F.R 1.510 (b)(1) ........................................................... 12
`
`SNQs Raised by NetBIOS (Claims [-7 and 32-44) .....................................
`
`SNQs Raised by NetBIOS in View of RFC 1531 (Claims [-7 and 32-44) ............
`
`SNQs Raised by NetBIOS in View of Pinard (Claims [0-17, 19-28, and 30-31). . .. 14
`
`SNQs Raised by NetBIOS in View of Pinard and further in View of VocalChat
`User’s Guide (Claims I 8 and 29) ............................................................ 15
`
`SNQs Raised by Etherphone (Claims 1-2, 4-7, 10-12, 14, 19-23, 25, 30-44) ........
`
`SNQ Raised by Etherphone in View of NetBIOS (Claim 3) ............................
`
`12
`
`13
`
`15
`
`17
`
`
`
`A.
`
`B.
`
`C.
`
`D
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`K.
`
`L.
`
`M.
`
`N.
`
`
`
`SNQ Raised by Etherphone in View of Vin (Claim 32) .................................. 17
`
`SNQs Raised by Etherphone in View of Vin and further in View of RFC 1531
`(Claim 33) ...................................................................................... 18
`
`SNQs Raised by Etherphone in View of Pinard (Claims 10-17, 19-28, 30-31) ....... 19
`
`SNQ Raised by Etherphone in View of Pinard and further in View of VocalChat
`User’s Guide (Claims I 8 and 29) ........................................................... 19
`
`SNQs Raised by VocalChat User’s Guide in View of VocalChat Readme, and
`further in View of VocalChat Networking, and further in View of VocalChat Help
`File, and further in View of VocalChat Troubleshooting Help File (collectively
`“VocalChat” or “VocalChat references”) (Claims 1-2, 4, 7, 10-11, 19-22, 3 0-42).. 20
`
`SNQs Raised by VocalChat References in View of RFC 1531(Claims 1-2, 4, 7,
`10-11, 19-22, 30-42) .......................................................................... 21
`
`SNQ Raised by VocalChat References in View of NetBIOS (Claim 3) .................... 23
`
`SNQs Raised by VocalChat References in View of Pinard (Claims 12-18 and 23-
`29) ........................................................................................................................... 23
`
`OVERVIEW OF THE PRIOR ART REFERENCES PRESENTING A SNQ OF
`PATENTABILITY
`
`A.
`
`B.
`
`C.
`
`NetBIOS ....................................................................................... 24
`
`Etherphone ..................................................................................... 26
`
`Combined VocalChat References ........................................................... 29
`
`2of 172
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`
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`D.
`
`E.
`
`F.
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`RFC 1531 ....................................................................................... 33
`
`Vin .............................................................................................. 33
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`Pinard ........................................................................................... 33
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`VI.
`
`DETAILED EXPLANATION OF THE PERTINENCY AND MANNER OF
`
`APPLYING THE PRIOR ART REFERENCES TO EVERY CLAIM FOR
`
`WHICH REEXAMINATION IS REQUESTED .............................................. 39
`
`A.
`
`NetBIOS ....................................................................................... 39
`
`1.
`
`2.
`
`Anticipation Rejections (Claims 1-7 and 32 -44) ................................. 39
`
`Obviousness Rejections ............................................................. 69
`
`(i)
`
`(ii)
`
`(iii)
`
`NetBIOS in View of RFC 1531 (Claims I -7 and 32-44) .......... 70
`
`Motivation to Combine NetBIOS with RFC 1531 ................
`
`71
`
`NetBIOS in View of Pinard (Claims [0-17, 19-28, and 30-31).. 71
`
`(iv) Motivation of Combine NetBIOS and Pinard .....................
`
`(v)
`
`NetBIOS in view of Pinard and Further in View of
`
`Voca1Chat User’s Guide (Claims I 8 and 29) ......................
`
`80
`
`81
`
`
`
`(vi) Motivation to Combine Voca1Chat User’s Guide with
`NetBIOS and Pinard ................................................... 81
`
`B.
`
`Etherphone ....................................................................................
`
`82
`
`1.
`
`2.
`
`Anticipation Rejections (Claims 1-2, 4-7, 10-12, 14, 19-23, 25, 30-44)..... 82
`
`Obviousness Rejections ............................................................
`
`112
`
`(i)
`
`(ii)
`
`Etherphone in View of NetBIOS (Claim 3) .......................... 112
`
`Motivation to Combine Etherphone with NetBIOS ............... 113
`
`(iii)
`
`Etherphone in View of Vin (Claim 32) .............................. 113
`
`(iv) Motivation of Combine Etherphone and Vin ....................... 115
`
`(v)
`
`Etherphone in View of Vin and Further in View
`of RFC 1531 (Claim 33) ............................................... 115
`
`(vi) Motivation to Combine Etherphone, Vin and
`RFC 15 31 ...............................................................
`
`1 17
`
`(vii)
`
`Etherphone in View of Pinard (Claims [0-17, 19-28, 30-31). . .. 118
`
`(viii) Motivation to Combine Etherphone and Pinard .................... 126
`
`(iX)
`
`(X)
`
`Etherphone in view of Pinard and Further in View of
`Voca1Chat User’s Guide (Claims I 8 and 29) .......................
`
`126
`
`Motivation to Combine Voca1Chat with Etherphone
`and Pinard ............................................................... 127
`
`3 of 172
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`
`
`C.
`
`VocalChat User’ s Guide in view of VocalChat Readme, and further in view of
`
`VocalChat Networking, and further in view of VocalChat Help File, and further
`in view of VocalChat Troubleshooting Help File (collectively “VocalChat” or
`“VocalChat references”) (Claims 1-2, 4, 7, 10-11, 19-22, 30-42) .....................
`
`127
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Motivation to Combine the VocalChat References .............................
`
`128
`
`VocalChat references further in view of RFC 1531 (Claims 1-2, 4, 7, 10-
`II, 19-22, 30-42) .................................................................... 163
`
`Motivation to Combine VocalChat references and RFC 1531 ................ 164
`
`The VocalChat References in view of NetBIOS (Claim 3) .................... 164
`
`Motivation to Combine the VocalChat References with NetBIOS ...........
`
`165
`
`The VocalChat References in view of Pinard (Claims 12-18 and 23-29)....
`
`165
`
`Motivation to Combine VocalChat andPinard 168
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`VII.
`
`LIST OF EXHIBITS ................................................................................. 168
`
`VIII. CONCLUSION.......................................................................................
`
`171
`
`40f 172
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`
`
`I.
`
`PENDING LITIGATION
`
`The ‘704 patent is the subject of pending litigation, Net2Phone, Inc. V. eBay, Inc., Skype
`
`Technologies SA, and Skype, Inc., Case No. 06—2469, instituted by the current assignee,
`
`Net2Phone, Inc., in the United States District Court for the District of New Jersey. Net2Phone
`
`alleges that Skype Technologies SA, Skype, Inc. and eBay Inc. infringe claims 1, 2, 4—7, 11, 22,
`
`32—44 of the ‘704 patent. The parties have submitted their claim construction briefs and a
`
`Markman hearing is currently scheduled for March 2, 2009. The Court has not yet set a schedule
`
`for summary judgment proceedings. No trial date has been set. Skype, Inc., plans to file a
`
`motion to stay the above—entitled litigation pending reexamination on the grounds that a stay of
`
`litigation at this time will permit the Court and parties to benefit from the PTO’s guidance on
`
`issues of patentability and to avoid further costly legal proceedings that would otherwise burden
`
`the Court and parties. Claim Construction Briefs submitted by the parties to the pending
`
`litigation are set forth in Exhibits S—X.
`
`II.
`
`LISTING OF PRIOR ART PATENTS AND PRINTED PUBLICATIONS
`
`In accordance with 37 C.F.R. §§ 1.510(b)(l) and (b)(2), reexamination of claims 1—7 and
`
`10—44 of the ‘704 patent is requested in view of the following references:
`
`Exhibit B
`
`The Open Group, Technical Standard, Protocols for X/Open PC
`
`Interworking SMB, Version 2, (1992) (“NetBIOS”), which published as
`
`a single publication containing:1 (a) Protocol Standard for a NetBIOS
`
`Service on a TCP/UDP Transport: Concept and Methods, RFC 1001
`
`(March 1987) (“RFC 1001”); and (b) Protocol Standard for a NetBIOS
`
`Service on a TCP/UDP Transport: Detailed Specifications, RFC 1002
`
`(March 1987) (“RFC 1002”).
`
`Exhibit C
`
`Etherphone: Collected Papers 1987—1988 (May 1989) (collectively
`
`referred to herein as “Etherphone”). These papers, which published
`
`together as a single publication, include the following:2
`
`1 NetBIOS published as a single reference with RFC 1001 and RFC 2002.
`2 The five papers comprising this reference were published together as set forth on the first page of this reference.
`Thus, all five papers are a single reference.
`
`5 of 172
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`
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`a.
`
`POlle T. Zellweger, et a1., An Overview of the Etherphone
`
`System and its Applications, IEEE CONFERENCE ON COMPUTER
`
`WORKSTATIONS (March 1988), 160—168 (hereinafter “Zellweger 1”).
`
`b.
`
`Daniel C. Swinehart, Telephone Management in the
`
`Etherphone System, PROCEEDINGS OF THE IEEE/IEICE GLOBAL
`
`TELECOMMUNICATIONS CONFERENCE (November 1987), 117 6—1 180
`
`(hereinafter “Swinehart 1”).
`
`c.
`
`Douglas B. Terry and Daniel C. Swinehart, Managing
`
`Stored Voice in the Etherphone System, ACM TRANSACTIONS ON
`
`COMPUTER SYSTEMS 6(1) (February 1988), 3—27 (hereinafter “Terry”).
`
`(1.
`
`Daniel C. Swinehart, System Support Requirements for
`
`Multi-media Workstations, PROCEEDINGS OF THE SPEECHTECH ‘88
`
`CONFERENCE (April 1988), 82—83 (hereinafter “Swinehart 2”).
`
`e.
`
`POlle T. Zellweger, Active Paths through Multimedia
`
`Documents, DOCUMENT MANIPULATION AND TYPOGRAPHY, J .C. AN VILET
`
`(ED.), CAMBRIDGE UNIVERSITY PRESS (1988) (hereinafter “Zellweger 2”).
`
`Exhibit D
`
`Vin, Harrick M., et a1., Multimedia Conferencing in the Etherphone
`
`Environment, IEEE COMPUTER SOCIETY (October 1991) (“Vin”); and
`
`Exhibit E
`
`Droms, R., Dynamic Host Configuration Protocol, RFC 1531 (Oct. 1993)
`
`Exhibit F
`
`Exhibit G
`
`Exhibit H
`
`Exhibit I
`
`Exhibit J
`
`Exhibit K
`
`(“RFC 1531”)
`
`Pinard, et a1., U.S. Patent NO. 5,533,110 (“Pinard”)
`
`VocalChat User’s Guide, Version 2.0 (1994) (“User’s Guide”)
`
`VocalChat Readme File, Version 2.02 (June, 1994) (“Readme”)
`
`VocalChat 1.01 Networking Information (March 6, 1994) (“VocalChat
`
`Networking”)
`
`VocalChat Information, Version 2.02 (July 18, 1994) (“Help File”)
`
`VocalChat Troubleshooting Help File, Version 2.02 (July 18, 1994)
`
`(“Troubleshooting Help File”)
`
`60f 172
`
`
`
`III.
`
`OVERVIEW OF THE ‘704 PATENT
`
`Before providing detailed explanations of the pertinency and manner of applying the
`
`cited prior art to the claims, presented here is an overview of the ‘704 patent and its prosecution
`
`history. The ‘704 patent issued on August 22, 2000, and includes 44 claims, of which claims 1,
`
`2, 4, 10, 21, 32, 33, 38, 43, and 44 are independent.
`
`A.
`
`Subject Matter of the ‘704 Patent
`
`The ‘704 patent describes two different techniques for locating computer processes on a
`
`network. Referring to Figure l of the ‘704 patent (reproduced below), one technique relies on a
`
`“connection server” (26) to locate processes and a second technique relies on a “mail server”
`
`(28) to locate processes.3 According to the first technique, each computer (referred to as a
`
`“processing unit” in the ‘704 patent) registers its IP addresses with the connection server (26).
`
`The IP address of each “online” computer is stored within a database (34) on the connection
`
`server. As described in the ‘704 patent (referring to Figure 1):
`
`Upon the first user initiating the point—to—point Internet protocol when the first
`user is logged on to Internet 24,
`the first processing unit 12 automatically
`transmits its associated E—mail address and its dynamically allocated IP address to
`the connection server 26. The connection server 26 then stores these addresses in
`
`the database 34 and timestamps the stored addresses using timer 32. The first user
`operating the first processing unit 12 is thus established in the database 34 as an
`active on—line party available for communication using the disclosed point—to—
`point Internet protocol. Similarly, a second user operating the second processing
`unit 22, upon connection to the Internet 24 through a connection service provider,
`is processed by the connection server 26 to be established in the database 34 as an
`active on—line party.4
`
`3 The first technique is referred to as the “primary point-to-point Internet protocol” and the second technique is
`referred to as the “secondary point-to-point internet protocol.” See, e.g., ‘704 patent, Col. 5, line 55 - Col. 6, line 29.
`4 ‘704 patent, Col. 5, lines 25-38.
`
`7 of 172
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`
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`
`In order to initiate a connection with the second computer (22) on the network, the first
`
`computer (12) retrieves the current IP address of the second computer from the connection server
`
`(26). Once the first computer knows the IP address of the second computer, it can establish a
`
`point—to—point connection with the second computer. As described in the ‘704 patent:
`
`The first processing unit 12 then sends a query, including the E—mail address of
`the callee, to the connection server 26. The connection server 26 then searches the
`
`database 34 to determine whether the callee is logged—in by finding any stored
`information corresponding to the callee’s E—mail address indicating that the callee
`is active and on—line. If the callee is active and on—line, the connection server 26
`
`then performs the primary point—to—point Internet protocol; i.e. the IP address of
`the callee is retrieved from the database 34 and sent to the first processing unit 12.
`The first processing unit 12 may then directly establish the point—to—point Internet
`communications with the callee using the IP address of the callee.5
`
`The second technique for locating computers on a network (the “secondary point—to—point
`
`Internet protocol”) utilizes the email server (28) illustrated in Figure l. The second technique is
`
`used “if the connection server 26 is non—responsive, inoperative, and/or unable to perform the
`
`primary point—to—point Internet protocol, as a non—responsive condition.”6 Using the second
`
`technique, the first computer (12) transmits an email message which includes the IP address of
`
`the first user and a session number (referred to as a “<ConnectRequest>“ message).7 After
`
`receiving the email message from the mail server, the second computer (22) uses the IP address
`
`and session number to establish a point—to—point connection with the first computer (12). As
`
`described in the ‘704 patent:
`
`5 ‘704 patent, Col. 5, lines 55-67.
`6 ‘704 patent, Col. 6, lines 20—23.
`7 ‘704 patent, Col. 6, lines 31-36.
`
`8 of 172
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`Upon detecting and/or receiving the incoming E—mail signal from the first
`processing unit 12, the second processing unit 22 may assign or may be assigned
`a temporary IP address. Therefore, the delivery of the E—mail through the Internet
`24 provides the second processing unit 22 with a session number as well as IP
`addresses of both the first processing unit 12 and the second processing unit 22.
`
`Point—to—point communication may then be established by the processing units 12,
`22. For example, the second processing unit 22 may process the E—mail signal to
`extract the <ConnectRequest> message,
`including the IP address of the first
`processing unit 12 and the session number. The second processing unit 22 may
`then open a socket and generate a <ConnectOK> response signal, which includes
`the tempsorary IP address of the second processing unit 22 as well as the session
`number.
`
`While the independent claims of the ‘704 patent are not expressly limited to a particular
`
`protocol standard, the embodiments described in the ‘704 patent utilize the TCP/IP protocol.9
`
`Thus, the focus of the ‘704 patent is a central repository of IP addresses which is queried to
`
`locate computers on a network.
`
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`FIG. 5
`
`The ‘704 patent also describes a graphical user interface (“GUI”) for managing calls on a
`
`computer. The GUI, illustrated in Figures 5 and 6 of the ‘704 patent (reproduced above),
`
`includes a status area (38) which is used to indicate .
`
`.
`
`.
`
`. a called user by name and/or by IP address or telephone number; a current
`.
`function such as C2; a current time; a current operating status such as “IN USE”,
`
`8 ‘704 patent, Col. 7, lines 10—25.
`9 See, e.g., ‘704 patent, Col. 5, lines 8-14 and 22-38.
`
`9 of 172
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`
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`and other control icons such as a down arrow icon 40 for scrolling down a list of
`parties on a current conference line. The operating status may include such
`annunciators as “IN USE”, “IDLE”, “BUSY”, “NO ANSWER”, “OFFLINE”,
`“CALL”, “DIALING”, “MESSAGES”, and “SPEEDDIAL.”10
`
`Figures 5 and 6 also illustrate a set of graphical icons (42) which are “configured to
`
`substantially simulate a telephone handset or a cellular telephone interface.”11 The icons provide
`
`functions typically found on a telephone such as speed dial (SPD), hold (HLD), send (i.e., initiate
`
`call) (SND), end call (END), mute (MUT). Icons are also provided to indicate individual
`
`telephone “lines” (Ll—L3) and “conference lines” (C1—C3). An active call may be transferred to
`
`a different line by “by clicking and dragging the status area 38, which is represented by a
`
`reduced icon 46. Dragging the reduced icon 46 to any one of line icons L1—L4 transfers the
`
`called party in use to the selected line, and dragging the reduced icon 46 to any one of
`
`conference line icons C1—C3 adds the called party to the selected conference call.”12
`
`B.
`
`Prosecution History of the ‘704 Patent
`
`The application which resulted in the ‘704 patent was filed on September 25, 1995. The
`
`‘704 patent application13 initially included a total of 20 claims. This was extended to 53 claims
`
`via a preliminary amendment.14
`
`The PTO mailed a first Office Action on June 2, 1997, rejecting all 53 claims under 35
`
`U.S.C. § 103 as being unpatentable in view of several prior art references, including Civanlar,
`
`US. Patent No. 5,581,552 (“Civanlar”). As noted by the Examiner, Civanlar discloses “a
`
`communication protocol in which the requesting node sends a request for communication with
`
`another node through an address server, which contains an address database, to obtain the
`
`address and routing information necessary to complete the communication.”15
`
`The Applicants filed an Amendment and Response on December 2, 1997 in which they
`
`added claims 54—68 and distinguished the invention from the cited references as follows:
`
`current
`the
`determining
`for
`techniques
`provides
`invention
`Applicant's
`dynamically assigned network protocal [sic] address of a user process connected
`
`10 ‘704 patent, C01. 8, lines 42—50.
`11 ‘704 patent, C01. 8, lines 58-60.
`12 ‘704 patent, C01. 9, lines 36-42.
`13 Application serial no. 08/533,11 resulting in the ‘704 patent is referred to as the “‘704 application.”
`14 See Preliminary Amendment (April 5, 1996).
`15 Office Action (June 2, 1997), page 3.
`
`10 of 172
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`
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`to the network. The first technique utilizes a dedicated server which acts as a
`network address/information directory from which calling processes can obtain
`information. When a first process connects to the networks, the process logs—on
`to the server and provides the server with the network protocal [sic] address under
`which the process is currently operating. A second process wishing to establish
`communications with the first process, connects to the server and request the
`network protocal [sic] address under which the first process is currently operating.
`Upon receipt of the network protocal [sic] address of the first process, the second
`process establishes communications with the first process directly, without any
`intervention [sic] from the address/information server.16
`
`The Applicants also submitted a Declaration of Prior Invention under 37 U.S.C. § 1.131,
`
`stating “to overcome the rejection of all claims under 35 U.S.C. § 103 as being unpatentable over
`
`Civanlar, et al. in view of Morgan et al. and/or further in view of December et al .
`
`.
`
`. In light of
`
`the declaration and accompanying exhibits, all rejections based on the Civanlar et al. reference
`17
`
`are deemed moot.”
`
`The PTO mailed a second Office Action on April 14, 1998 indicating a restriction
`
`requirement under 35 U.S.C. § 121. The Applicants mailed a response to the restriction
`
`requirement on August 11, 1998, electing a group of claims (Group 1).
`
`An Office Action mailed on October 28, 1998 rejected all pending claims under 35
`
`U.S.C. § 102(e) and 35 U.S.C. § 103. The Applicants mailed an Amendment and Response on
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`March 1, 1999, cancelling claims 1—4 and 6—11 and amending numerous claims. The Applicants
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`again distinguished the alleged “invention” over the cited prior art, stating:
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`.
`Applicants’ invention solves a fundamental problem associated with the Internet. .
`The problem is: How can a global network user be located if he/she has no
`permanent network address?
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`Applicants have disclosed a solution to the above—described problem. The solution
`utilizes a client/server system. In the disclosed system, a client process contacts a
`dedicated address directory server and forwards to the server the network protocol
`address to which it has been assigned upon connection to the computer network,
`along with other identification information. The dedicated address directory server
`maintains a compilation or list of entries, each of which contain a process identifier
`and the corresponding network protocol address forwarded to the server by the
`process itself. Other processes wishing to contact a desired target process simply
`
`16 Office Action Response (December 2, 1997), page 8.
`17 Amendment and Response (December 2, 1997), page 7. We question the sufficiency of the support document,
`“webph.doc,” submitted with the Declaration of Prior Invention. However, because the prior art we rely upon
`predates the priority date of this document, we did not perform a detailed analysis related to this document.
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`query the address directory server to determine whether the target process is on—line
`and the current network protocol address at which the target process is located.18
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`In addition, with respect to independent Claims 10 and 21 of the ‘704 patent (and
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`associated dependent claims), the Applicants argued that these claims were “directed to a method
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`for establishing a point—to—point communication link with the user interface of a client process by
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`assoc1at1ng elements representing a communication line and various processes.” 9
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`A Notice of Allowability was mailed on May 25, 1999, allowing Claims 21, 23—24, 26—
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`64, 66, and 67 (which issued as Claims 1—44). The ‘704 patent issued on August 22, 2000.
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`IV.
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`SUBSTANTIAL NEW QUESTION (SNQ) OF PATENTABILITY AS REQUIRED
`BY 37 C.F.R 1.510 (b)(1)
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`The following section provides a list of the SNQs and detailed explanation of the prior art
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`references relied upon in the present request for the SNQ, including references not previously
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`considered by the PTO.
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`A.
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`SNQs Raised by NetBIOS
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`A SNQ as to Claims 1—7 and 32—44 is raised by NetBIOS. NetBIOS anticipates all of the
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`limitations of these claims, including teachings of Civanlar, which were used by the Examiner in
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`a § 103 rejection against the instant claims. This reference was removed from consideration due
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`to the acceptance of a 37 C.F.R. § 1.131 declaration which swore behind the date of Civanlar.
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`While Civanlar shows an address server for storing network protocol addresses usable by
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`network nodes to establish point—to—point communications, the question of patentability was
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`removed when the reference was antedated. See, e.g., Civanlar, col. 3, lines 1—4 (“The address
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`server contains an address data base for performing address resolution, i.e., translation, between
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`the at least two addresses of each ELAN end—point in response to requests for such
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`translations”).
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`NetBIOS, which was not cited or discussed in the prosecution of the ‘704 patent, presents
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`a SNQ of patentability because it, like Civanlar, discloses an address server (referred to as a
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`“NetBIOS Name Server” or “NBNS”) with an address database for storing network protocol
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`addresses usable by network nodes to establish point—to—point communications, as discussed in
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`18 Amendment and Response (March 1, 1999), page 14.
`19 Office Action response (March 1, 1999), page 17.
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`detail below. See, e.g., NetBIOS at 367 (describing how the NBNS acts as a “‘bulletin board’ on
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`which name/address information is freely posted (and removed) by P and M nodes without
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`validation by the NBNS. Alternatively, the NBNS may elect to completely manage and validate
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`names”). See also id. at 388 (“Name query transactions are initiated by endnodes to obtain the
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`IP address(es) and other attributes associated with a NetBIOS name.”).
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`Recall also that, during prosecution of the ‘704 patent, the Applicants argued that the
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`claimed invention .
`
`.
`
`.
`
`. utilizes a dedicated server which acts as a network address/information
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`directory from which calling processes can obtain information. When a first
`process connects to the networks, the process logs—on to the server and provides
`the server with the network protocal [sic] address under which the process is
`currently operating. A second process wishing to establish communications with
`the first process, connects to the server and request the network protocal [sic]
`address under which the first process is currently operating. Upon receipt of the
`network protocal [sic] address of the first process, the second process establishes
`communications with the first process directly, without any intervention [sic]
`from the address/information server.
`
`Office Action Response (December 2, 1997), page 8. This is precisely the manner in which
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`nodes in NetBIOS register their own IP addresses with the NBNS and query the NBNS for the IP
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`addresses of other nodes. See, e.g., id. at 397 (“The NetBIOS session service begins after one or
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`more IP addresses have been found for the target name. .
`
`.
`
`. NetBIOS session service
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`transactions, packets, and protocols are identical for all end—node types. They involve only
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`directed (point—to—point] communications”) (emphasis added).
`
`For all of the foregoing reasons, NetBIOS would be considered important in deciding the
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`question of patentability for all independent claims of the ‘704 patent and, accordingly, presents
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`a SNQ of patentability, particularly with respect to Claims 1—7 and 32—44.
`
`B.
`
`SNQs Raised by NetBIOS in View of RFC 1531
`
`A SNQ as to Claims 1—7 and 32—44 is raised by NetBIOS in view of RFC 1531. NetBIOS
`
`and RFC 1531 were not cited or discussed alone, or in combination in the prosecution of the
`
`‘704 patent. The combination presents a SNQ of patentability because NetBIOS discloses an
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`address server (referred to as a “NetBIOS Name Server” or “NBNS”) for storing network
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`protocol addresses usable by network nodes to establish point—to—point communications (as
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`described above), and RFC 1531 discloses how TCP/lP addresses are assigned dynamically by a
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`Dynamic Host Configuration Protocol (DHCP) server. See, e.g., Dynamic Host Configuration
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`Protocol, RFC 1531 (Oct. 1993) (“RFC 1531”), Section 2.2 (describing the “dynamic allocation
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`of network addresses” on TCP/lP networks). As argued by Applicants in the prosecution of the
`
`‘704 patent:
`
`current
`the
`for determining
`techniques
`provides
`invention
`Applicant’s
`dynamically assigned network protocol address of a user process connected to the
`network. The first technique utilizes a dedicated server which acts as a network
`address/information directory from which calling processes
`can
`obtain
`information. When a first process connects to the networks, the process logs—on
`to the server and provides the server with the network protocal [sic] address under
`which the process is currently operating. A second process wishing to establish
`communications with the first process, connects to the server and request the
`network protocal [sic] address under which the first process is currently operating.
`Upon receipt of the network protocal [sic] address of the first process, the second
`process establishes communications with the first process directly, without any
`intervention [sic] from the address/information server.
`
`Office Action Response (December 2, 1997), page 8. As described above, these features are all
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`described explicitly in NetBIOS except for “dynamically assigned” network protocol addresses.
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`Consequently, NetBIOS in view of RFC 1531 presents a SNQ of patentability for all claims
`
`which require the dynamic assignment of network protocol addresses, as discussed in detail
`
`below. Such combination would be considered important in deciding the question of
`
`patentability and accordingly present a SNQ of patentability, particularly with respect to Claim
`
`33 which explicitly requires “locating processes having dynamically assigned network protocol
`
`addresses” and with respect to various other claims which require that the network protocol
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`address is received “following connection to the computer network.” See, e.g., Claims 1, 4, and
`
`38.
`
`C.
`
`SNQs Raised by NetBIOS in View of Pinard
`
`A SNQ as to Claims 10—17, 19—28, and 30—31 is raised by NetBIOS in view of Pinard.
`
`NetBIOS and Pinard were not cited or discussed alone, or in combination in the prosecution of
`
`the ‘704 patent. Recall that during prosecution of the ‘704 patent, the Applicants argued that
`
`these claims were “directed to a method for establishing a point—to—point communication link
`
`with the user interface of a client process by associating elements representing a communication
`
`line and various processes.” Office Action response (March 1, 1999), page 17. Consequently,
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`the combination of NetBIOS and Pinard presents a substantial new question of patentability
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`because NetBIOS discloses an address server for storing network protocol addresses usable by
`
`network nodes to establish point—to—point communications and Pinard discloses graphical
`
`elements representing communication lines and callees that may be clicked and dragged to
`
`establish and terminate calls, set up conference calls, and place calls on hold, as discussed in
`
`detail below. See, e.g., Pinard, Figures 2—16 and associated text. Such combination would be
`
`considered important in deciding the question of patentability and accordingly present a
`
`substantial new question of patentability, particularly with respect to Claims 10—17, 19—28, 30—31.
`
`D.
`
`SNQs Raised by NetBIOS in View of Pinard and further in View of VocalChat
`User’s Guide
`
`A SNQ as to Claims 18 and 29 is raised by NetBIOS in view of Pinard and further in
`
`view of VocalChat. NetBIOS, Pinard, and VocalChat were not cited or discussed alone, or i