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`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria. Virginia 22313-1450
`www.uspto.gov
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`APPLICATION NO.
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`FILING DATE
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`‘ FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`90/010,416
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`_
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`,
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`02/17/2009
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`6108704
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`2655-0188
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`1061
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`42624
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`7590
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`07/20/2010
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`.
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`EXAMINER .
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`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`4300 WILSON BLVD, 7TH FLOOR
`ARLINGTON, VA 22203
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`‘
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`ART UNIT
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`PAPER NUMBER
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`DATE MAILED: 07/20/2010
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`PTO-90C (Rev. 10/03)
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` I
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Commissionerfor Patents .
`United States Patent and Trademark Office
`P.0.BOX1450
`Alexandria, VA 23131 450
`wwwuxptagov
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`. DO NOT USE IN PALM PRINTER
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`(THIRD PARTY REQUESTER‘S CORRESPONDENCE ADDRESS)
`
`Blakely Sokoloff Taylor & Zafman LLP
`
`1279 Oakmead Parkway
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`Sunnyvale, CA 940854040
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`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
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`REEXAMINATION CONTROL NO. 90/010 416.
`PATENT NO. 6108704.
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`ART UNIT 3992.
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`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(0).
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`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(9)).
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`PTOL—465 (Rev.O7-O4)
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`
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`Patent Under Reexamination
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`. Control No.
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`90/010,416
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`6108704
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`'
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`Art Unit
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`3992
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`Notice of Intent to Issue
`Examiner
`Ex Parte Reexamination Certificate
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`ALEXANDER J.
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`KOSOWSKI
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`1. El Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding This proceeding is
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`subject to reopening at the initiative of the Office or upon petition. Cf. 37 CFR 1. 313(a). A Certificate will be
`issued in view of
`(a) IX] Patent owner’s communication(s)Ifiled: 12 July 2010.
`(b) E] Patent owner’s late response filed:
`.
`(c) D Patent owner’s failure to file an appropriate response to the Office action mailed:
`(d) E] Patent owner’s failure to timely file an Appeal Brief (37 CFR 41.31).
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`(e) C] Other:
`Status of Ex Parte Reexamination:
`(f) Change in the Specification:
`1:] Yes IE No
`(9) Change in the Drawing(s):
`E] Yes E No
`(h) Status of the Claim(ss):
`,
`y
`_
`.312 ((9.
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`.
`(1) Patent Claim(s) confirmed.
`II'RO, 22 ' 3'
`1— 7
`-
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`(2) Patent Claim(s) amended (including dependent on amended claim((13))W
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`(3) Patent Claim(s) cancelled. 10 21 43 and 44
`(4) Newly presented Claim(s) patentable:
`(5) Newly presented cancelled claims:
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`2. [XI Note the attached statement of reasons for patentability and/or confirmation. Any comments considered
`necessary by patent owner regarding reasons for patentability and/or confirmation must be submitted promptly
`to avoid processing delays. Such submisSion(s) should be labeled: “Comments On Statement of Reasons for
`Patentability and/or Confirmation."
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`
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`3. dNote attached NOTICE OF REFERENCES CITED (PTO-892).
`4. E] Note attached LIST OF REFERENCES CITED (PTO/SB/O8).
`C] disapproved.
`5. E] The drawing correction request filed on
`is: E] approved
`6. E] Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`a)l:l All
`b)[:] Some*
`c)l:l None
`of the certified copies have
`[:1 been received.
`E] not been received.
`' [:1 been filed in Application No.
`[:1 been filedIn reexamination Control No.
`C] been received by the International BureauIn PCT Application No
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`* Certified copies not received:
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`7. [:l Note attached Examiner’s Amendment.
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`8. [:1 Note attached Interview Summary (PTO-474).
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` 9. C] Other:
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`cc: Re-uester (ifthird Iart ' re uestcr)
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`US. Patent and Trademark Office
`PTOL-469 (Rev.08-06)
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`Notice of Intent to Issue Ex Parte Reexamination Certificate
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`Part of Paper No 20100714
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`
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`Application/Control Number: 90/010,416
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`’
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`Page 2
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`Art Unit: 3992
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`DETAILED ACTION
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`1)
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`This Office action addresses claims 1-7 and 10-44 of United States Patent Number '
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`6,108,704 (Hutton et al), for which it has beendetermined in the Order Granting Ex Parte
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`Reexamination (hereafter the “Order”) mailed 3/1 1/09 that a substantial new question of
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`patentability was raised in the Request for Ex Parte reexamination filed on 2/ 1 7/09 (hereafter the
`“Request’i). This action'is in response to the after final amendment filed 7/12/10. Claims 43—44
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`are currently canceled. Claims 10 and 21 are previously canceled. Claims 1-7, 11-20 and 22—42
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`are patentable and/or confirmedas noted in the final rejection mailed 5/1 1/10.
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`STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
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`2)
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`Claims 1-7, 11-20 and 22-42 are patentable and/or confirmed.
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`The-following is an examiner's statement of reasons for confirmation of the claims found
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`patentable in this reexamination proceeding:
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`Referring to claims 1, 2, 4, ll, 22, 32, 33, 35, the claims are patentable and/or confirmed
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`_ over the prior art that was explained in the request and determined to raise a substantial new
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`question of patentability in the order granting reexamination and over the prior art that was
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`applied and discussed by the examiner in the present reexamination proceeding because that
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`prior art does not explicitly teach program code for transmitting to the server a network protocol
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`address received by the first process following connection to the computer network (claim 1),
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`each network protocol address stored in the memory following connection of a respective
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`process to the computer network (claim 2), each of the network protocol addresses received
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`following connection of the respective process to the computer network (claim 4), receiving a
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`Application/Control Number: 90/010,416
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`.
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`Page 3
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`Art Unit: 3992
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`network protocol address of the first callee process over the computer network from the server
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`(claim 11), program code for receiving a network protocol address of the first callee process over
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`the computer network from the server (claim 22), the Internet Protocol address-added to the list
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`following connection of the process to the computer network (claim 32), the network protocol
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`address of the corresponding process assigned to the process upon connection to the computer
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`network (claim 33), the network protocol address of the corresponding process assigned to the
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`process upon connection to the computer network (claim 38), in combination with the remaining
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`elements or features of the claimed invention.
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`Referring to all other claims, the claims are dependent on patentable and/or confirmed
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`independent claims, and are therefore also patentable and/or confirmed.
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`
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`Application/Control Number: 90/010,416
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`Art Unit: 3992
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`Page 4
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`'
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`Conclusion
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`All correspondence relating to this ex parte reexamination proceeding should be directed
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`as follows:
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`By US. Postal Service Mail to:
`
`Mail Stop Ex Parte Reexam
`ATTN: Central Reexamination Unit
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`Commissioner for Patents
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`PO. Box 1450
`
`Alexandria, VA 22313-1450
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`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`lBy hand to:
`
`Customer Service Window
`Randolph Building
`401 Dulany St.
`Alexandria, VA 22314
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`By EFS-Web:
`
`Registered users of EFS-Web may alternatively submit such correspondence via the
`electronic filing system EFS—Web, at
`
`https://sportal.uspto.gov/authenticate/authenticateuserlocalepfhtml
`
`EFS-Web offers the benefit of quick submission to the particular area of the Office that
`needs to act on the correspondence. Also, EFS-Web submissions are “soft scanned” (i.e.,
`electronically uploaded) directly into the official file for the reexamination proceeding, which
`‘ offers parties the opportunity to review the content of their submissions after the‘ ‘soft scanning”
`process is complete
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`
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`Application/Control Number: 90/010,416
`Art Unit: 3992
`
`'
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`Page 5
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`’
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`Any inquiry concerning this communication" or earlier communications from the
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`Reexamination Legal Advisor or Examiner, or as to the status of this proceeding, should be
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`directed to the Central Reexamination Unit at telephone number (571) 272-7705.
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`/Alexander J Kosowski/
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`Primary Examiner, Art Unit 3992
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`.
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`/—;. E
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`(5‘: [C
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