IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re PATENT APPLICATION OF:
`
`Attorney Docket:
`
`2655-0188
`
`Net2Phone, Inc. (Patent No. 6,108,704)
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`Group Art Unit:
`
`3992
`
`Control No.:
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`90/010,416
`
`Examiner: KOSOWSKI, Alexander
`
`Issue Date: August 22, 2000
`
`Date:
`
`November 27, 2009
`
`Title: POINT-TO-POINT INTERNET
`PROTOCOL
`
`Confirmation No.2
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`1061
`
`RESPONSE TO NON—FINAL REJECTION IN A RE-EXAMINATION
`
`Hon. Commissioner of Patents
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`In response to the Office Action dated August 27, 2009 (and having had the deadline for
`
`7 responding extended one month), the Assignee hereby submits:
`
`Claim Amendments beginning on page 2 of this paper; and
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`Remarks/Arguments beginning on page 6 of this paper.
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`

`

`Re—Examination of Patent No. 6,108,704
`
`Control No.: 90/010,416
`Filed:
`February 24, 2009
`Reply to Office Action of August 27, 2009
`
`AMENDMENTS TO THE CLAIMS
`
`Please amend the claims in re—examination as follows:
`
`10. (Canceled)
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`ll. (Amended) In a computer system. a method for establishing a point-to-point
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`communication link from a caller process to a callee process over a computer network, the caller
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`process having a user interface and being operatively connectable to the callee process and a
`
`server over the computer network, the method comprising the steps of:
`
`A. providing a user interface element representing a first communication line;
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`B. providing a user interface element representing a first callee process; and
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`C. establishing a point-to—point communication link from the caller process to the first
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`callee process, in response to a user associating the element representing the first callee process
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`with the element representing therrfiristcornmunication line7,7| The method of claim 1770]7whereinr 7
`
`step C further comprises the steps of:
`
`0.1 querying the server as to the on-line status of the first callee [process] process; and
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`c2 receiving a network protocol address of the first callee process over the computer
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`network from the server.
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`12. (Amended) The method of claim [10] 11 further comprising the step of:
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`D. providing an element representing a second communication line.
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`14. (Amended) The method of claim [10] fl further comprising the steps of:
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`D. providing a user interface element representing a second callee process; and
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`E. establishing a conference point-to-point communication link between the caller
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`process and the first and second callee process, in response to the user associating the element
`
`representing the second callee process with the element representing the first communication
`
`line.
`
`

`

`Re-Examination of Patent No. 6,108,704
`
`Control No.: 90/010,416
`Filed:
`February 24, 2009
`Reply to Office Action of August 27, 2009
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`15. (Amended) The method of claim [10] fl further comprising the step of:
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`F. removing the second callee process from the conference point—to—point communication
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`link in response to the user disassociating the element representing the second callee process
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`from the element representing the first communication line.
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`16. (Amended) The method of claim [10] fl further comprising the steps of:
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`D. providing a user interface element representing a communication line having a
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`temporarily disabled status; and
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`E. temporarily disabling a point-to-point communication link between the caller process
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`and the first callee process, in response to the user associating the element representing the first
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`callee process with the element representing the communication line having a temporarily
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`disabled status.
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`19. (Amended) The method of claim [10] fl wherein the caller process further comprises
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`a visual display and the user interface comprises a graphic user interface.
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`21. (Canceled)
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`22. (Amended) A computer program product for use with a computer system comprising:
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`a computer usable medium having program code embodied in the medium for
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`establishing a point-to-point communication link from a caller process to a callee process over a
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`computer network, the caller process having a user interface and being operatively connectable
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`to the callee process and a server over the computer network, the medium further comprising:
`
`program code for generating an element representing a first communication line;
`
`program code for generating an element representing a first callee process;
`
`program code, responsive to a user associating the element representing the first callee
`
`process with the element representing the first communication line, for establishing a point-to-
`
`3
`
`

`

`Re—Examination of Patent No. 6,108,704
`Control No.: 90/010,416
`Filed:
`February 24, 2009
`Reply to Office Action of August 27, 2009
`
`point communication link from the caller process to the first callee process, [The computer
`
`program product of claim 21] wherein the program code for establishing a point-to-point
`
`communication link further comprises:
`
`program code for querying the server as to the on-line status of the first callee process;
`
`and
`
`program code for receiving a network protocol address of the first callee process over the
`
`computer network from the server.
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`23. (Amended) A computer program product of claim [21] 2 further comprising:
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`program code for generating an element representing a second communication line.
`
`25. (Amended) The computer program product of claim [21] 2 further comprising:
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`program code for generating an element representing arsecioind callee process; and
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`program code means, responsive to the user associating the element representing the
`
`second callee process with the element representing the first communication line, for establishing
`
`a conference communication link between the caller process and the first and second callee
`
`process.
`
`27. (Amended) The computer program product of claim [21] 2 further comprising:
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`program code for generating an element representing a communication line having a
`
`temporarily disabled status; and
`
`program code, responsive association of the element representing the first callee process
`
`with the element representing the communication line having a temporarily disabled status, for
`
`temporarily disabling the point-to-point communication link between the caller process and the
`
`first callee process.
`
`

`

`Re-Examination of Patent No. 6,108,704
`Control No.: 90/010,416
`Filed:
`February 24, 2009
`Reply to Office Action of August 27, 2009
`
`30. (Amended) A computer program product of claim [21] 2; wherein the computer
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`system further comprises a Visual display and the user interface comprises a graphic user
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`interface.
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`

`

`Re—Examination of Patent No. 6,108,704
`
`Control No.: 90/010,416
`
`February 24, 2009
`Filed:
`Reply to Office Action of August 27, 2009
`
`REMARKS/ARGUMENTS
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`Favorable reconsideration of the claims currently undergoing re—examination, in View of
`
`the present amendment and in light of the following discussion, is respectfully requested.
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`STATUS OF THE CLAIMS AND SUPPORT FOR THE CLAIM CHANGES
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`Claims 1-7, 11-20 and 22-44 are pending and the subject of this re-examination. Claims
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`11 and 22 have been rewritten in independent form without changing their scope, thus those
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`amendments are self supporting. Their corresponding independent claims (i.e., claims 10 and
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`21) have been canceled. The dependencies of claims 12, 14, 15, 16, 19, 23, 25, 27 and 30 have
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`been amended in light of the cancelation of claims 10 and 21 to depend from new independent
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`claims 11 and 22. In light of the changes to the dependencies, these changes are self supporting.
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`Thus, no new matter has been added, 7No other claims have been amended, added or canceled
`
`herewith.
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`RESPONSE TO REJECTIONS
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`In the outstanding Office Action, five main rejections were made as follows:
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`1. Claims 43 and 44 were alleged to be anticipated by NetBIOS;
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`2. Claims 1-7 and 10—42 were alleged to be rendered obvious by NetBIOS in
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`combination with at least one other reference;
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`3. Claims 43 and 44 were alleged to be anticipated by the Etherphone papers;
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`4. Claims 1—7 and 10-42 were alleged to be rendered obvious by the Etherphone
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`papers in combination with at least one other reference; and
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`5. Claims 1-7 and 10-44 were alleged to be rendered obvious by the VocalChat
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`References, either alone or in combination with at least one other reference.
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`

`

`Re-Examination of Patent No. 6,108,704
`
`Control No.: 90/010,416
`
`February 24, 2009
`Filed:
`Reply to Office Action of August 27, 2009
`
`Each of those rejections is respectfully traversed for the reasons set forth below. Reference is
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`made throughout this response to the Declaration Of Ketan Mayer-Patel Under 37 CPR. 1.132
`
`(hereinafter the “Mayer-Patel Declaration”) attached hereto as Exhibit 1.
`
`The Rejection of Claims 43 and 44 over NetBIOS
`
`Claim 43 recites “a. program code configured to access a directory database, the database
`
`having a network protocol address for a selected plurality of processes having on-line status with
`
`respect to the computer network, the network protocol address of each respective process
`
`forwarded to the database following connection to the computer network.” This limitation is not
`
`taught by the NetBIOS reference as NetBIOS does not provide dynamic addressing or on-line
`
`status. See Exhibit 1, Mayer-Patel Declaration, paragraph 21.
`
`In rejecting claim 43, the Office Action adopts the positions of the third-party requester
`
`and states f‘See claim mapping chart in Exhibit M, pages 36-40, incorporated by reference.”
`
`With respect to this limitation (a), the claim mapping does not allege, much less prove, that
`
`NetBIOS teaches “the network protocol address of each respective process forwarded to the
`
`database following connection to the computer network.” In fact, the Office Action appears to
`
`have agreed (e.g., with respect to claim 1) that the NetBIOS reference does not teach that the
`
`processes receive network protocol addresses “following connection to the computer network.”
`
`The Office Action did this by rejecting the requester’s arguments under 35 U.S.C. § 102 and
`
`instead adopting “claim chart mapping utilizing alternative 103 rejections” -- rejections that rely
`
`on RFC 1531 to teach dynamic addressing.
`
`See Exhibit 1, Mayer-Patel Declaration, paragraph
`
`22.
`
`Even assuming that the Office Action intended the rejection to be a rejection under 35
`
`U.S.C. § 103 by combining NetBIOS with RFC 1531, the rejection would still not be proper.
`
`When alleging that one of ordinary skill in the art would have combined NetBIOS with RFC
`
`1531, the Office Action states “it would have been obvious
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`to utilize the limitations taught by
`
`RFC 1531 in the invention taught by NetBIOS
`
`since this would allow for automatic reuse of
`
`7
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`

`

`Re-Examination of Patent No. 6,108,704
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`Control No.: 90/010,416
`Filed:
`February 24, 2009
`Reply to Office Action of August 27, 2009
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`an address
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`and since examiner notes the use of dynamic IP address assignment in a TCP/IP
`
`network are old and well known
`
`and are useful to eliminate the burdensome task of manually
`
`assigning IP addresses for all networked computers.” The assignee respectfully submits that the
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`conclusion drawn by the Office Action on the combinability of NetBIOS and RFC 1531 is
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`mistaken in its conclusion on motivation. The Office Action speculates, with hindsight, as to
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`why a person of ordinary skill might want to combine the two references, but does not
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`acknowledge the problems that would arise in doing so, and does not provide any prior art that
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`would indicate how the problems that dynamic addressing would bring into a NetBIOS type
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`system could be resolved by those of ordinary skill at the time the patent was filed. See Exhibit
`
`1, Mayer-Patel Declaration, paragraph 23. In the context of point-to-point communication,
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`widespread use of dynamically assigned addresses does not solve NetBIOS’s problems, it creates
`
`further problems. The assignee agrees that dynamically assigned addresses were known, and the
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`patent in re-examination specifically states in that regard, “Due to the dynamic nature of
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`temporary IP addresses of some devices accessing the Internet, point-to-point communications in
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`realtime of voice and video have been generally difficult to attain.” Col. 1, lines 53—56. See
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`Exhibit 1, Mayer-Patel Declaration, paragraph 24.
`
`But it is not enough to prove that the cause of a problem existed, namely the problematic
`
`use of changing addresses. The Office Action must show by citation of prior art that the problem
`
`was recognized, and that the solution for NetBIOS was either known or trivially apparent from
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`the known art. See Innogenetics, N. V. v. Abbott Laboratories, 512 F.3d 1363, 1373 (Fed Cir.
`
`2008) (“The district court was nevertheless correct that knowledge of a problem and motivation
`
`to solve it are entirely different from motivation to combine particular references to reach the
`
`particular claimed method”). If the requester of this reexamination had such prior art it would
`
`undoubtedly have been provided as part of its exhaustive reexamination request. The fact that
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`there is none is testimony to the lack of teaching in the prior art to make the suggested
`
`combination.
`
`

`

`Re-Examination of Patent No. 6,108,704
`
`Control No.: 90/010,416
`Filed:
`February 24, 2009
`Reply to Office Action of August 27, 2009
`
`The NetBIOS reference cited in the request, moreover, indicates the opposite. For
`
`example, Section 15.1.7 0f the NetBIOS reference (entitled “Consistency of the NBNS Data
`
`Base”) recognizes that the association between a node, a registered name and an IP address is
`
`tenuous, even in an environment that uses static IP addresses. “Even in a properly running
`
`NetBIOS scope the NBNS and its community of end-nodes may occasionally lose
`
`synchronization with respect to the true state of name registrations.” To minimize the impact of
`
`this problem, the reference states, “Various approaches have been incorporated into the
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`NetBIOS-over—TCP protocols” which it then proceeds to describe. See Exhibit 1, Mayer-Patel
`
`Declaration, paragraph 26.
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`However, by incorporating DHCP and adopting dynamic address allocation as used by
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`Internet access providers, the synchronization problem would become more disruptive, not less.
`
`Dynamic addressing would have introduced a new uncertainty to the relationships among the
`NBNS and its community of end-nodes and a new set of obstacles to NetBIOS synchronization
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`that are not addressed by the NetBIOS reference. Consider the case of a node that is tumed-off
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`and then subsequently turned back on, or a node that has simply lost its Internet connection for
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`some technical reason or Whose DHCP lease has expired and then re-established a connection.
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`In a dynamic addressing environment, such a node would most likely obtain a new IP address
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`when it was turned back on that was different than the one it had when it registered its name.
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`This change could lead to any number of node-name-IP address synchronization problems for
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`the disclosed NetBIOS protocols. See Exhibit 1, Mayer-Patel Declaration, paragraph 27.
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`For example, because the NBNS does not know the node’s new address, the NBNS
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`would be unable to send to the node a Name Release Request or a Name Conflict Demand or
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`request that the node send it a Name Status Request. Because communication from the node
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`would be originating at a new address that was not recognized by the NBNS, a node’s response
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`to a Name Query Request (assuming it somehow knew that its name had been challenged,
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`perhaps from before it lost network connectivity) would not be recognized. A node would also
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`be unable to confirm its association with registered names by sending Name Refresh Request
`
`9
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`

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`Re-Examination of Patent No. 6,108,704
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`Control No.: 90/010,416
`Filed:
`February 24, 2009
`Reply to Office Action of August 27, 2009
`
`packets to the NBNS.
`
`If a session between two NetBIOS applications were cut-off, re-
`
`establishing the communication would be especially difficult where the ability of a called entity
`
`to obtain both its associated name and its associated IP address were in doubt. As a result, the
`
`Office Action has not demonstrated that a solution to the problems created by exposure of
`
`NetBIOS to DHCP and dynamic addressing has been addressed by any of the applied
`
`references.1 See Exhibit 1, Mayer-Patel Declaration, paragraph 28.
`
`The Office Action also has not identified anything in the cited art that suggests how a
`
`person of ordinary skill is to go about the redesign of NetBIOS and the solving of obstacles to
`
`NetBIOS operation that are created by Internet access; problems that were recognized and left
`
`as warnings unresolved in the NetBIOS reference.2 See Exhibit 1, Mayer-Patel Declaration,
`
`paragraph 29.
`
`Merely citing to dynamic addressing, i.e., the source of those problems, is insufficient as
`the Supreme Court and the Federal Circuit have repeatedly made clear. See Depuy Spine, Inc. v.
`
`Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) citing inter alia KSR Int ’1
`
`Co. v Teleflex Inc, 550 U.S. 398 (2007) and U.S. vAdams, 383 U.S. 39 (1966), for the
`
`proposition that obviousness requires not only “the expectation that prior art elements are
`
`capable of being physically combined, but also that the combination would have worked for its
`
`intended purpose,” and quoting In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed.
`
`1 Besides dynamic addressing, Internet access would pose other challenges to a NetBIOS system. For example,
`because NetBIOS was designed for use on local area networks with small numbers of computers, trust among the
`network participants is assumed. That assumption cannot be transferred to a global Internet made up of unknown,
`and sometimes malevolent, entities. An implementation of NetBIOS on the public Internet would necessitate non-
`trivial adaptations to ensure that its services perform correctly and return accurate information. There is no
`discussion of security issues in the cited references. See Exhibit 2, from
`http:_//www.w3 schools.com/Site/site securityasp which instructs Microsoft Windows users whose computers access
`the Internet to disable NetBIOS over TCP/IP in order to solve their security problems. See Exhibit 1, Mayer-Patel
`Declaration, paragraph 28.
`2 The cited references go out of their way to avoid describing how a NetBIOS protocol might work in inter-
`connected network environments that that are less complex than the Internet and that predate DHCP. See Section
`4.6 (“The proposed standard recognizes the need for NetBIOS operation across a set of networks interconnected by
`network (1P) level relays (gateways) However, the standard assumes that this form of operation will be less
`frequent than on the local MAC bridged-LAN”)
`
`1 0
`
`

`

`Re-Examination of Patent No. 6,108,704
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`Control No.: 90/010,416
`
`February 24, 2009
`Filed:
`Reply to Office Action of August 27, 2009
`
`Cir. 2007) as saying “[A] reference teaches away from a combination when using it in that
`
`combination would produce an inoperative result.”
`
`In View of the foregoing, a rejection of claim 43, even over the combination of NetBIOS
`
`and RFC 1531, can be compared to the rejection of a patent that claims a vehicle that travels on
`
`water where one piece of prior art shows a land vehicle and another shows water. The fact that
`
`water creates a problem for the land vehicle does not disclose that the person of ordinary skill
`would know how to build a vehicle capable of crossing the water. Thus, claim 43 is patentable
`
`over NetBIOS alone or over NetBIOS in combination with RFC 1531. See Exhibit 1, Mayer—
`
`Patel Declaration, paragraph 30.
`
`NetBIOS and RFC 1531 also do not teach “a. program code configured to access a
`
`directory database. .having a network protocol address for a selected plurality of processes
`
`having art-line status with respect to the computer network.” While NetBIOS uses name
`
`entries with “active” statuses as part ofits namemanagement process, an analysis of how that
`
`“active” status is used shows that “an active name” is not synonymous with an “on-line status
`
`with respect to the computer network.” An active name simply refers to a name that has been
`
`registered and that has not yet been de-registered, independent of whether the associated
`
`computer is or is not on-line. As shown on page 447 (and reproduced below), the N0de_Name
`
`entries stored with respect to a NetBIOS Name Server contain a series of fields including the
`
`“ACT” field.
`
`11
`
`

`

`Re-Examination of Patent No. 6,108,704
`Control No.: 90/010,416
`Filed:
`February 24, 2009
`Reply to Office Action of August 27, 2009
`
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`See Exhibit 1, Mayer—Patel Declaration, paragraph 31.
`
`The ACT field is a single bit field (in bit 5) that signifies an “Active Name Flag. All
`
`entries have thisflag set to one (1).” (Emphasis added.) If all name entries have this flag set to
`
`one (1), then the NetBIOS name server cannot be using the Active Name Flag as a means of
`
`separately tracking whether the entity that owns the name is “active,” let alone what its “on-line
`
`status” might be.
`
`See Exhibit 1, Mayer-Patel Declaration, paragraph 32.
`
`The NetBIOS reference also does not teach that the active status of a name in the
`
`NetBIOS server is an indication of the active status of the owner of that name. To the contrary,
`
`when information about whether the owner of a name is “active” may be relevant, for example
`
`when a new entity seeks to register a name that has already been registered in the NetBIOS name
`12
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`

`

`Re-Examination of Patent No. 6,108,704
`
`Control No.2 90/010,416
`
`February 24, 2009
`Filed:
`Reply to Office Action of August 27, 2009
`
`server, the NetBIOS reference describes an elaborate set of interactions used to test whether the
`
`existing owner of the registered name is active or inactive. It does not rely on the fact that the
`
`name is active in the NetBIOS name server (See Section 15.2.2.2 and 15 2.2.3 entitled “Existing
`
`Name and Owner is Inactive”).
`
`See Exhibit 1, Mayer-Patel Declaration, paragraph 33.
`
`The NetBIOS reference also does not teach that an acquired IP address can be reasonably
`
`relied upon by a requesting end—node to confirm the “on-line status” of an end-node associated
`
`with a sought name. The NetBIOS reference describes at least two different scenarios where a
`
`second end-node sends a rejection response to the first end-node notwithstanding thefact that a
`
`second end-node is connected to the computer network and active with respect to the sought
`
`name. See Section 16.1.1 (“There exists a NetBIOS LISTEN compatible with the incoming call,
`
`but there are inadequate resources to permit establishment of a session. . .The called name does,
`
`in fact, exist on the called node, but there is no pending NetBIOS LISTEN compatible with the
`
`incoming callii). No distinction is made in the reference between the rejection response in these
`
`cases and the rejection response in cases where the called name does not exist on the called end-
`
`node. Id, (“In all but the first case, a rejection response is sent back over the TCP connection to
`
`the caller.”). See Exhibit 1, Mayer-Patel Declaration, paragraph 34.
`
`Thus, the limitation “program code configured to access a directory database, the
`
`database having a network protocol address for a selected plurality of processes having on-line
`
`status with respect to the computer network, the network protocol address of each respective
`
`process forwarded to the database following connection to the computer networ ” of claim 43 is
`
`not taught by the NetBIOS reference alone or in combination with RFC 1531, and the rejection
`
`of claim 43 should be withdrawn. See Exhibit 1, Mayer-Patel Declaration, paragraph 35.
`
`Claim 44 recites “following connection ofthefirst process to the computer network
`
`forwarding to the address server a network protocol address at which the first process is
`
`connected to the computer network.” As was discussed above with respect to the recitation of
`
`“the network protocol address of each respective process forwarded to the database following
`
`connection to the computer networ ” in claim 43, NetBIOS does not teach the claimed dynamic
`
`13
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`

`

`Re-Examination of Patent No. 6,108,704
`
`Control No.: 90/010,416
`
`February 24, 2009
`Filed:
`Reply to Office Action of August 27, 2009
`
`address assignment. Moreover, it would not have been obvious to combine NetBIOS and RFC
`
`1531 for the reasons set forth above with respect to claim 43. See Exhibit 1, Mayer-Patel
`
`Declaration, paragraph 36.
`
`Claim 44 also recites “querying the address server as to whether the second process is
`
`connected to the computer network.” As was discussed above with respect to the recitation of
`
`“processes having on-line status with respect to the computer network” in claim 43, NetBIOS
`
`does not teach that an active name in NetBIOS is synonymous with “whether the second process
`
`is connected to the computer network.” An active name simply refers to a name that has been
`
`registered and that has not yet been de-registered, independent of whether the associated
`
`computer is or is not connected to the computer network. Thus, claim 44 is patentable over both
`
`NetBIOS alone and the combination of NetBIOS and RFC 1531. See Exhibit 1, Mayer—Patel
`
`Declaration, paragraph 37.
`
`Claims 1-7 and 32-42
`
`Claim 1 recites “program code for transmitting to the server a network protocol address
`
`received by thefirst processfollowing connection to the computer network.” Claim 1 further
`
`recites “program code for receiving a network protocol address of the second process from the
`
`server, when the secondprocess is connected to the computer network.” As was discussed
`
`above with respect to the recitation of “the network protocol address of each respective process
`
`forwarded to the database following connection to the computer networ ” in claim 43, NetBIOS
`
`does not teach this dynamic address assignment. Further, it would not have been obvious to
`
`combine NetBIOS and RFC 1531 for the reasons set forth above with respect to claim 43. See
`
`Exhibit 1, Mayer-Patel Declaration, paragraph 38.
`
`Claim 1 also recites “program code for transmitting, to the server, a query as to whether
`
`the second process is connected to the computer network.” As was discussed above with
`
`respect to the recitation of “processes having on-line status with respect to the computer
`
`networ ” in claim 43, NetBIOS does not teach that an active name in NetBIOS is synonymous
`
`14
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`

`Re-Examination of Patent No. 6,108,704
`
`Control No.: 90/010,416
`Filed:
`February 24, 2009
`Reply to Office Action of August 27, 2009
`
`with “Whether the second process is connected to the computer network.” An active name
`
`simply refers to a name that has been registered and that has not yet been de-registered,
`
`independent of whether the associated computer is or is not connected to the computer network.
`
`Thus, claim 1 patentable over the combination of NetBIOS and RFC 1531. See Exhibit 1,
`
`Mayer—Patel Declaration, paragraph 39.
`
`Claim 2 recites “each network protocol address stored in the memoryfollowing
`
`connection of a respective process to the computer network.” As was discussed above with
`
`respect to the recitation of “the network protocol address of each respective process forwarded to
`
`the database following connection to the computer network” in claim 43, NetBIOS does not
`
`teach this dynamic address assignment. Further, it would not have been obvious to combine
`
`NetBIOS and RFC 1531 for the reasons set forth above with respect to claim 43. See Exhibit 1,
`
`Mayer—Patel Declaration, paragraph 40.
`
`7 ,
`
`7 Claim 2also recites “means. .. for determining the on-line status ofthe secondprocess
`
`and for transmitting a network protocol address ofthe second process to the first process in
`
`response to a positive determination ofthe on-line status ofthe second process.” As was
`
`discussed above with respect to the recitation of “processes having on-line status with respect to
`
`the computer networ ” in claim 43, NetBIOS does not teach that an active name in NetBIOS is
`
`synonymous with “an on-line status of the second process.” An active name simply refers to a
`
`name that has been registered and that has not yet been de-registered, independent of whether the
`
`associated computer is or is not connected to the computer network. Thus, claim 2 and its
`
`dependent claim 3 are patentable over the combination of NetBIOS and RFC 15 31. See Exhibit
`
`1, Mayer-Patel Declaration, paragraph 41.
`
`Claim 4 recites “each of the network protocol addresses received following connection of
`
`the respective process to the computer network.” As was discussed above with respect to the
`
`recitation of “the network protocol address of each respective process forwarded to the database
`
`following connection to the computer networ ” in claim 43, NetBIOS does not teach this
`
`dynamic address assignment. Further, it would not have been obvious to combine NetBIOS and
`
`15
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`

`

`Re-Examination of Patent No. 6,108,704
`
`Control No.: 90/010,416
`
`February 24, 2009
`Filed:
`Reply to Office Action of August 27, 2009
`
`RFC 1531 for the reasons set forth above with respect to claim 43. See Exhibit 1, Mayer—Patel
`
`Declaration, paragraph 42.
`
`Claim 4 also recites “receiving and storing into a computer memory a respective network
`
`protocol address for selected of a plurality of processes that have an on-line status with respect
`
`to the computer network.” Claim 4 further recites “determining the on-line status of the second
`
`process.” As was discussed above with respect to the recitation of “processes having on-line
`
`status with respect to the computer networ ” in claim 43, NetBIOS does not teach that an active
`
`name in NetBIOS is synonymous with “an on-line status” of a process. An active name simply
`
`refers to a name that has been registered and that has not yet been de-registered, independent of
`
`whether the associated computer is or is not connected to the computer network. Thus, claim 4
`
`and its dependent claims 5-7 are patentable over the combination of NetBIOS and RFC 1531.
`
`See Exhibit 1, Mayer-Patel Declaration, paragraph 43.
`
`W
`
`Claim 32recites“the lriternet Protocol address added to the listfollowing connection of
`
`the process to the computer network.” As was discussed above with respect to the recitation of
`
`“the network protocol address of each respective process forwarded to the database following
`
`connection to the computer networ ” in claim 43, NetBIOS does not teach this dynamic address
`
`assignment. Further, it would not have been obvious to combine NetBIOS and RFC 1531 for the
`
`reasons set forth above with respect to claim 43. See Exhibit 1, Mayer-Patel Declaration,
`
`paragraph 44.
`
`Claim 32 also recites “an Internet accessible list having a plurality of selected entries,
`
`each entry comprising an identifier and a corresponding Internet protocol address of a process
`
`currently connected to the Internet.” As was discussed above with respect to the recitation of
`
`“processes having on—line status with respect to the computer network” in claim 43, NetBIOS
`
`does not teach that an active name in NetBIOS is synonymous with “a process currently [being]
`
`connected to the Internet.” An active name simply refers to a name that has been registered and
`
`that has not yet been de-registered, independent of whether the associated computer is or is not
`
`16
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`

`

`Re—Examination of Patent No. 6,108,704
`
`Control No.: 90/010,416
`Filed:
`February 24, 2009
`Reply to Office Action of August 27, 2009
`
`connected to the Internet. Thus, claim 32 is patentable over the combination of NetBIOS and
`
`RFC 1531. See Exhibit 1, Mayer-Patel Declaration, paragraph 45.
`
`Claim 33 recites “the network protocol address of the corresponding process assigned to
`
`the process upon connection to the computer network.” As was discussed above with respect to
`
`the recitation of “the network protocol address of each respective