UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO.
`
`90/010,422
`
`FILING DATE
`
`02/26/2009
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`6,009,469
`
`2655-0185
`
`6565
`
`08/2512009
`7590
`42624
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`4300 WILSON BL vn. 7TH FLOOR
`ARLINGTON, VA 22203
`
`EXAMINER
`
`ART UNIT
`
`PAPER NUMBER
`
`DA TE MAILED: 08/25/2009
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PT0-90C (Rev. 10/03)
`
`Straight Path Ex. 2006
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
`
`PAGE 1
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`

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`'
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`DO NOT USE IN PALM PRINTER
`
`(fHIRD PARlY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
`
`1279 OAKMEAD PAR'r<WAY
`
`SUNNYVALE, CA 94085-4040
`
`Corrmissioner for Patents
`United States Patent and Trademark Office
`P.O. 80X1450
`Alexandria, VA 22313-1450
`WWNAJspto.gov
`
`MA\ LED
`AUG 2 51009
`
`CENTRAL REEXAMINATION UNIT
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 901010,422.
`
`PATENT NO. 6.009.469.
`
`ART UNIT 3992.
`
`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(f)).
`
`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(g)).
`
`PTOL-465 (Rev.07-04)
`
`Straight Path Ex. 2006
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
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`PAGE 2
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`Office Action in Ex Parte Reexamination
`
`Control No.
`90/010,422
`
`Patent Under Reexamination
`6,009,469
`
`Examiner
`ALEXANDER J. KOSOWSKI
`
`Art Unit
`3992
`
`·- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`
`a~ Responsive to the communication{s) filed on 26 February 2009 .
`bO This action is made FINAL.
`c~ A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortened statutory period for response to this action is set to expire g month(s) from the mailing date of this letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days
`will be considered timely.
`
`Part I
`
`THE FOLLOWING ATIACHMENT(S) ARE PART OF THIS ACTION:
`
`1.
`
`2.
`
`0 Notice of References Cited by Examiner, PT0-892.
`
`~ Information Disclosure Statement, PTO/SB/08.
`
`3.
`
`4.
`
`0
`0
`
`Interview Summary, PT0-474.
`
`Part II SUMMARY OF ACTION
`
`1 a. ~ Claims 1-3.5.6.8.9 and 14•18 are subject to reexamination.
`
`1 b. ~ Claims 4. 7 and 10-13 are not subject to reexamination.
`
`2. 0 Claims ___lli!ve been canceled in the present reexamination proceeding.
`
`3. 0 Claims --1!.[_e patentable and/or confirmed.
`
`4. ~ Claims 1-3. 5-6. 8-9, 14-18 are rejected.
`
`5. 0 Claims --1!.[_e objected to.
`
`6 .. 0 The drawings, filed on __j![_e acceptable.
`
`7. 0 The proposed drawing correction, filed on ___!ills been (7a)
`
`0 approved (7b)0 disapproved.
`
`8. 0 Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`
`a)O All b)O Some* c)O None
`
`of the certified copies have
`
`10 been received.
`
`20 not been received.
`
`30 been filed in Application No. __ ._
`
`40 been filed in reexamination Control No. __
`
`50 been received by the International Bureau in PCT application No. __ . _
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`9. 0
`
`Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal
`matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 C.D.
`11, 453 O.G. 213.
`
`10. 0 Other:
`
`cc: Reau ester (if third party requester)
`U.S. Patent and Trademark Office
`PTOL-466 (Rev. 08-06)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20090812
`
`Straight Path Ex. 2006
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
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`PAGE 3
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`..
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`• ).1
`
`Application/Control Number: 901010,422
`Art Unit: 3992
`
`Page 2
`
`DETAILED ACTION
`
`1)
`
`This Office action addresses claims 1-3, 5-6, 8-9, 14-18 of United States Patent Number
`
`6,009,469 (Mattaway et al), for ~hich it has been determined in the Order Granting Ex Parte
`
`Reexamination (hereafter the "Order") mailed 3/13/09 that a substantial new question of
`
`patentability was raised in the Request for Ex Parte reexamination filed on 2/26/09 (hereafter the
`
`"Request"). Claims 4, 7, 10-13 are not subject to reexamination.
`
`2)
`
`With regard to the IDS filed 6/11/09:
`
`IDS
`
`Where the IDS citations are submitted but not described, the examiner is only responsible
`for cursorily reviewing the references. The initials of the examiner on the PT0-1449 indicate
`only that degree of review unless the reference is either applied against the claims, or discussed
`by the examiner as pertinent art of interest, in a subsequent office action. See Guidelines for
`Reexamination of Cases in View of In re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d
`1295 (Fed. Cir. 1997), 64 FR at 15347, 1223 Off. Gaz. Pat. Office at 125 (response to comment
`6).
`
`Consideration by the examiner of the information submitted in an IDS means that the
`examiner will consider the documents in the same manner as other documents in Office search
`files are considered by the examiner while conducting a search of the prior art in a proper field of
`'search. The initials of the examiner placed adjacent to the citations on the PT0-1449 or
`PTO/SB/08A and 088 or its equivalent mean that the information has been considered by the
`examiner to the extent noted above. MPEP § 609 (Eighth Edition, Rev. 5, August 2006).
`Regarding IDS submissions MPEP 2256 recites the following: "Where patents,
`publications, and other such items of information are submitted by a party (patent owner or
`requester) in compliance with the requirements of the rules, the requisite degree of consideration
`to be given to such information will be normally limited by the degree to which the party filing
`the information citation has explained the content and relevance of the information."
`Accordingly, the IDS submissions have been considered by the Examiner only with the
`scope required by MPEP 2256.
`
`·
`
`With regard to the IDS's filed 8/11/09 and 8/12/09:
`
`These IDS's have been given due consideration. However, that which are not either prior
`art patents or prior art printed publications have been crossed out so as not to appear reprinted on
`the front page of the patent.
`
`Rejections
`
`Straight Path Ex. 2006
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
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`PAGE 4
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`Application/Control Number: 90/010,422
`Art Unit: 3992
`
`Page 3
`
`3)
`
`The following three rejections are utilized by the examiner below, referencing the
`
`proposed prior art listed on pages 4-6 of the Request:
`
`Issue 1:
`
`Claims 1-3, 5-6, 8-9, 14-18 in view ofNetBIOS, RFC 1531, Pinard and
`
`VocalChat User's Guide.
`
`Issue 2:
`
`Claims 1-3, 5-6, 8-9, 14-18 in viewofEtherphone, Vin, RFC 1531, Pinard
`
`and VocalChat User's Guide.
`
`issue 3:
`
`Claims 1-3, 5-6, 8-9, 14-18 in view ofVocalChat, RFC 1531 and Pinard.
`
`4)
`
`<;:taim Rejections - 35 USC§ 103
`
`Claim Rejection Paragraphs
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section I 02 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`Issue 1
`
`5)
`
`Claims 1-3 and 5-6 are rejected under 35 U.S.C. 103(a) as being unpatentable by
`
`NetBIOS, further in view of RFC 1531.
`
`Referring to (Claim 1), NetBIOS teaches a computer program product for use ~ith a
`
`computer system having a display, the computer system capable of executing a first process and
`
`connecting to other processes and a server process over a computer network ~etBIOS, pg. 356,
`
`Straight Path Ex. 2006
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`Case No. IPR2014-00231
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`PAGE 5
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`,.
`
`Application/Control Number: 901010,422
`Art Unit: 3992
`
`Page4
`
`357, whereby the system is run on personal computers over TCP/IP networks, personal
`
`computers inherently containing a display), the computer program product comprising a
`
`computer usable medium having computer readable code means embodied in the medium
`
`comprising:
`
`a. program code for generating a user-interface enabling control a first process executing
`
`on the computer system ilietBIOS, pg. 356, 359, whereby computers executing NetBIOS may
`
`contain DOS operating systems or may operate on other operating systems, which examiner
`
`notes inherently contain at least text-based user interfaces);
`
`c. program code responsive to the currently assigned network protocol address of the first
`
`process, for establishing a communication connection with the server process and for forwarding
`
`the assigned network protocol address of the first process and a unique identifier of the first
`
`process to the server process upon establishing a communication connection with the server
`
`process ilietBIOS, pg. 358, 431, 367, 388, 480-482, whereby network nodes forward IP
`
`addresses and unique names to NetBIOS Name Server); and
`
`d. program code, responsive to user input commands, for establishing a point-to-point
`
`communications with another process over the computer network ilietBIOS, pg. 397-400,
`
`whereby point-to-point communication is established upon initiation between nodes once target
`
`names and addresses have been found).
`
`In addition, NetBIOS teaches the use of TCP/IP CNetBIOS, pg. 356-357). However,
`
`NetBIOS does not explicitly teach b. program code for determining the currently assigned
`
`network protocol address of the first process upon connection to the computer network.
`
`Straight Path Ex. 2006
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
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`PAGE 6
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`Application/Control Number: 90/010,422
`Art Unit: 3992
`
`Page 5
`
`RFC 1531 teaches dynamically assigning IP addresses on a TCP/IP network by an
`
`Internet access server (RFC 1531, Section 2.2).
`
`Therefore, it would have been obvious to one skilled in the art at the time the invention
`
`was made to determine the currently assigned network protocol address of the first process upon
`
`connection to the computer network in the invention taught by NetBIOS above since this allows
`
`for automatic reuse of an address that is no longer needed by the host to which it Was assigned
`
`CRFC 1531, Pg. 2), and since examiner notes the use of dynamic IP address assignment in a
`
`TCP/IP network are old and well known in the art, and are useful to eliminate the burdensome
`
`task of manually assigning IP addresses for all networked computers.
`
`Referring to (Claim 2), NetBIOS teaches the computer program product of claim 1
`
`wherein the program code for establishing a point-to-point communication link further comprises
`
`program code, responsive to the network protocol address of a second process, for establishing a
`
`point-to-point communication link between the first process and the second process over the
`
`computer network ilietBIOS. pg. 397-401, whereby point-to-point communication is established
`
`once the IP address of the node is found).
`
`Referring to (Claim 3), NetBIOS teaches the computer program product of claim 2
`
`wherein the program code for establishing a point-to-point communication link further comprise:
`
`program code for transmitting, from the first process to the server process, a query as to whether
`
`the second process is connected to the computer network ilietBIOS, pg. 377, 388-389, 446, 393-
`
`394, whereby name queries are used to discover if a node is connected and active); and program
`
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`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
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`PAGE 7
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`Application/Control Number: 90/010,422
`Art Unit: 3992
`
`Page 6
`
`code for receiving a network protocol address of the second process from the server process,
`
`when the second process is connected to the computer network ilietBIOS, pg. 389, 440, 464-
`
`465, whereby the NBNS answers queries with a list of IP addresses of connected nodes).
`
`Referring to (Claim 5), NetBIOS teaches in a computer system having a display, the
`
`computer system capable of executing a first process and communicating with other processes
`
`and a server process over a computer network ilietBIOS, pg. 356, 357, whereby the system is
`
`run on personal computers over TCP/IP networks, personal computers inherently containing a
`
`display), a method for establishing point-to-point communications with other processes
`
`comprising: B. establishing a communication connection with the server process once the
`
`assigned network protocol of the first process is known and C. forwarding the assigned network
`
`protocol address of the first process to the server process upon establishing a communication
`
`connection with the server process ilietBIOS, pg. 358, 431, 367, 388, 480-482, whereby network
`
`nodes forward IP addresses and unique names to NetBIOS Name Server); and D. establishing a
`
`point-to-point communication with another process over the computer network ilietBIOS, pg.
`
`397-400, whereby point-to-point communication is established upon initiation between nodes
`
`once target names and addresses have been found).
`
`In addition, NetBIOS teaches the use of TCP/IP (NetBIOS, pg. 356-357). However,
`
`NetBIOS does not explicitly teach A. determining the currently assigned network protocol
`
`address of the first process upon connection to the computer network.
`
`RFC 15 31 teaches dynamically assigning IP addresses on a TCP /IP network by an
`
`Internet access server (RFC 1531, Section 2.2).
`
`Straight Path Ex. 2006
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`Case No. IPR2014-00231
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`PAGE 8
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`Application/Control Number: 90/010,422
`Art Unit: 3992
`
`Page 7
`
`Therefore, it would have been obvious to one skilled in the art at the time the invention
`
`was made to determine the currently assigned network protocol address of the first process upon
`
`connection to the computer network in the invention taught by NetBIOS above since this allows
`
`for automatic reuse of an address that is no longer needed by the host to which it was assigned
`
`(RFC 1531, ~g. 2), and since examiner notes the use of dynamic IP address assignment in a
`
`TCP/IP network are old and well known in the art, and are useful to eliminate the burdensome
`
`task of manually assigning IP addresses for all networked computers.
`
`Referring to (Claim 6), NetBIOS teaches the method of claim 5 wherein the program
`
`step D comprises transmitting, from the first process to the server process, a query as to whether
`
`a second process is connected to the computer network ilietBIOS. pg. 377. 388-389. 446, 393-
`
`394. whereby name queries are used to discover if a node is connected and active); and receiving
`
`a network protocol address of the second process from the server process, when the second
`
`process is connected to the computer network ilietBIOS, pg. 389, 440, 464-465, whereby the
`
`NBNS answers queries with a list ofIP addresses of connected nodes).
`
`6)
`
`Claims 8-9, 14-15, and 17-18 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`by NetBIOS, further in view of Pinard.
`
`Referring to (Claim 8), NetBIOS teaches in a computer system having a display and
`
`capable of executing a process, a method for establishing a point-to-point communication from a
`
`caller process to a callee process over a computer network, the caller process capable of
`
`generating a user interface and being operatively connected to the callee process and a server
`
`Straight Path Ex. 2006
`Sony Corp. v. Straight Path IP Group, Inc.
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`PAGE 9
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`

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`Application/Control Number: 90/010,422
`Art Unit: 3992
`
`Page 8
`
`process over the computer network (NetBIOS, pg. 356, 357, whereby the system is run on
`
`personal computers over TCP/IP networks, personal computers inherently containing a display),
`
`the method comprising the steps of: querying the server process to determine if the first callee
`
`process is accessible (NetBIOS, pg. 377, 388-389, 446, whereby a query is sent to the NBNS to
`
`determine if another node is logged iri and discover the nodes IP address); and establishing a
`
`point-to-point communication link from the caller process to the first callee process (NetBIOS,
`
`pg. 397-400, whereby a point-point communication link is established between end nodes).
`
`However, NetBIOS does not explicitly teach generating a user-interface element
`
`representing a first communication line. generating a user interface element representing a first
`
`callee process, and establishing the link in response to a user associating the element
`
`representing the first callee process with the element representing the first communication line
`
`Pinard teaches a human machine interface for telephone feature invocation which is
`
`utilized on a personal computer and allows a user to make telephone calls by moving graphics
`
`around a screen. Pinard teaches a user interface element representing a first communication line
`
`and callee process (Pinard. Figure 6 and col. 5 lines 23-30), and also teaches clicking and
`
`dragging an icon representing a callee from a directory into a call setup icon to establish a call
`
`link (Pinard. Figure 3, col. 4 lines 38-51, Figure 6. col. 5 lines 36-37).
`
`Therefore, it would have been obvious to one skilled in the art at the time the invention
`
`was made to utilizing the user-interface elements and interactions taught by Pinard in the
`
`invention taught by NetBIOS since Pinard teaches that the invention can be used with any
`
`system in which a personal computer in conjunction with a server operates (Pinard, col. 2 lines
`
`43-46), since NetBIOS teaches that it can be implemented using different operating systems
`
`Straight Path Ex. 2006
`Sony Corp. v. Straight Path IP Group, Inc.
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`PAGE 10
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`Application/Control Number: 901010,422
`Art Unit: 3992
`
`Page 9
`
`(NetBIOS, pg. 359), and since examiner notes that both NetBIOS and Pinard relate to
`
`communica~ions between at least two users implemented in a computerized environment.
`
`Referring to (Claim 9), NetBIOS teaches the method of claim 8 wherein step C further
`
`comprises the steps of: querying the server process as to the on-line status of the first callee
`
`process ili:etBIOS, pg. 377, 388-389, 446, 393-394, whereby name queries are used to discover
`
`if a node is connected and active); and receiving a network protocol address of the first callee
`
`process over the computer network from the server process ilietBIOS, pg. 389, 440, 464-465,
`
`whereby the NBNS answers queries with a list of IP addresses of connected nodes).
`
`Referring to (Claims 14-15 and 17-18), NetBIOS teaches the above. However, NetBIOS
`
`does not explicitly teach generating a user interface element representing a communication line
`
`having a temporarily disabled status; and temporarily disabling the point-to-point communication
`
`between the caller process and the first callee process, in response to the user associating the
`
`element representing the first callee process with the element representing the communication
`
`line having a temporarily disabled status, wherein the element generated represents a
`
`communication line on hold status, wherein the display further comprises a visual display, and
`
`wherein the user interface is a graphic user interface and the user-interface elements generated in
`
`steps A and B are graphic elements.
`
`Pinard teaches a "hard hold" icon to which saller/callees may be dragged to be put on
`
`hold status (Pinard, Figure 12, col. 6 lines 36-53 ), teaches a visual display (Pinard, col. 4 lines
`
`Straight Path Ex. 2006
`Sony Corp. v. Straight Path IP Group, Inc.
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`PAGE 11
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`Application/Control Number: 90/010,422
`Art Unit: 3992
`
`Page 10
`
`10-11, Figure 2), and teaches a graphical user interface in which the elements are graphic
`
`elements (Pinard, Figures 2-16).
`
`Therefore, it would have been obvious to one skilled in the art at the time the invention
`
`was made to utilizing the user-interface elements and interactions taught by Pinard in the
`
`invention taught by NetBIOS since Pinard teaches that the invention 'can be used with any
`
`system in which a personal computer in conjunction with a server operates (Pinard, col. 2 lines
`
`43-46), since NetBIOS teaches that it can be implemented using different operating systems
`
`(NetBIOS, pg. 359), and since examiner notes that both NetBIOS and Pinard relate to
`
`communications between at least two users implemented in a computerized environment.
`
`7)
`
`Claim 16 is rejected under 35 U.S.C. 103(a) as being unpatentable by NetBIOS, further in
`
`view of Pinard, further in view of Vocal Chat User's Guide.·
`
`Referring to (Claim 16), NetBIOS teaches the above. However, NetBIOS does not
`
`explicitly teach wherein the element generated represents a communication line on mute status.
`
`Vocal Chat User's Guide teaches the use of a MUTE option on a phone so that a user can
`
`talk without being heard by the other user's system CVocalChat User's Guide, pg. 57).
`
`Therefore, it would have been obvious to one skilled in the art at the time the invention
`
`was made to utilize an element representing a communication line on MUTE status in the
`
`invention taught by NetBIOS and Pinard above since all three references relate to the field of
`
`communications over a computer network, since VocalChat and Pinard utilize a computer
`
`system for telephony features specifically, and since examiner notes that the use of a MUTE
`
`feature in telephone conversations is old and wen known in the art.
`
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`PAGE 12
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`Application/Control Number: 90/010,422
`Art Unit: 3992
`
`Page 11
`
`Issue 2
`
`8)
`
`Examiner notes the following will represent the Etherphone references utilized for the
`
`rejection below (All considered a single reference as published together):
`
`"Zellweger ": An Overview of the Etherphone System and its Applications
`
`"Swinehart": Telephone Management in the Etherphone System
`
`"Terry": Managing Stored Voice in the Etherphone System
`
`9)
`
`Claims 1-3 and 5-6 are rejected under 35 U.S.C. 103(a) as being unpatentable by
`
`Etherphone, further in view of Vin, further in view of RFC 1531.
`
`Referring to (Claim 1), Etherphone teaches a computer program product for use with a
`
`computer system having a display, the computer system capable of executing a first process and
`
`connecting to other processes and a server process over a computer network (Zellweger, pg. l, 3,
`
`Terry, pg. 4, whereby a computer program product connects first and second processes over a
`
`network using a server), the computer program product comprising a computer usable medium
`
`having computer readable code means embodied in the medium comprising:
`
`a. program code for generating a user-interface enabling control a first process executing
`
`on the computer system (Swinehart Figures -10, Zellweger Figures 3-4, whereby workstations
`
`include GUI's);
`
`c. program code responsive to the currently assigned network protocol address of the first
`
`process, for establishing a communication connection with the server process and for forwarding
`
`Straight Path Ex. 2006
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`PAGE 13
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`Application/Control Number: 90/010,422
`Art Unit: 3992
`
`Page 12
`
`the assigned network protocol address of the first process and a unique identifier of the first
`
`process to the server process upon establishing a communication connection with the server
`
`process (Swinehart, pg. 2, 4, Zelleger, pg. 5, whereby user identity and workstation address are
`
`transmitted to the Voice Control Server when connected); and
`
`d. program code, responsive to user input commands, for establishing a point-to-point
`
`communications with another process over the computer network (Swinehart, pg. 4, whereby
`
`after acquiring the network address of a callee, voice datagrams are transmitted directly amont
`
`the participants, bypassing the control server).
`
`However, Ethernhone does not explicitly teach that the network protocol address is
`
`received by said one of the processes from an Internet access server.
`
`Vin teaches an Etherphone implementation whereby Internet communications and IP
`
`addresses are used (Vin, page 77 and Figure 5).
`
`RFC 1531 teaches dynamically assigning IP addresses on a TCP/IP network by an
`
`Internet access server (RFC 1531, Section 2.2).
`
`Therefore, it would have been obvious to one skilled in the art at the time the invention
`
`was made to utilize the computer program product taught by Etherphone above in an Internet
`
`based system utilizing dynamically assigned IP addresses from Internet access servers as taught
`
`by Vin and RFC 1531 since Etherphone was intended for use in multiple networks and
`
`communication protocols (Terry, page 3), since Vin and Etherphone both describe the same
`
`Etherphone system. since examiner notes that Internet and IP address-based networks are old and
`
`well known in the art and would be a natural extension from an ethernet-based system. since
`
`dynamic allocation of IP addresses allows for automatic reuse of an address that is no longer
`
`Straight Path Ex. 2006
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
`
`PAGE 14
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`

`

`Application/Control Number: 90/0 I 0,422
`Art Unit: 3992
`
`Page 13
`
`needed by the host to which it was assigned (RFC 1531, Pg. 2), and since examiner notes the use
`
`of dynamic IP address assignment in a TCP/IP network are old and well known in the art, and
`
`are useful to eliminate the burdensome task of manually assigning IP addresses for all networked
`
`computers.
`
`Referring to (Claim 2), Etherphone teaches the computer program product of claim I
`
`wherein the program code for establishing a point-to-point communication link further comprises
`
`program code, responsive to the network protocol address of a second process, for· establishing a
`
`point-to-point communication link between the first process and the second process over the
`
`computer network (Swinehart, pg. 4, whereby voice datagram are transmitted directly among
`
`participants once network addresses of both processes have been received). ·
`
`Referring to (Claim 3), Etherphone teaches the computer program product of claim 2
`
`wherein the program code for establishing a point-to-point communication link further comprise:
`
`program code for transmitting, from the first process to the server process, a query as to whether
`
`the second process is connected to the computer network (Swinehart, pg. 2, 4, Zellweger, pg. 5,
`
`whereby queries are transmitted to Voice Control Server); and program code for receiving a
`
`network protocol address of the second process from the server process, when the second process
`
`is connected to the computer network (Swinehart, pg. 2, whereby the server sends the network
`
`protocol address of the logged in user to caller process on request).
`
`Straight Path Ex. 2006
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
`
`PAGE 15
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`

`

`Application/Control Number: 90/010,422
`Art Unit: 3992
`
`Page 14
`
`Referring to (Claim 5), Etherphone teaches in a computer system having a display, the
`
`computer system capable of executing a first process and communicating with other processes
`
`and a server process over a computer network (Zellweger, pg. l, 3, Terry, pg. 4, whereby a
`
`computer program product connects first and second processes over a network using a server), a
`
`method for establishing point-to-point communications with othe{ processes comprising: B.
`
`establishing a communication connection with the server process once the assigned network
`
`protocol of the first process is known and C. forwarding the assigned network protocol address
`
`of the first process to the server process upon establishing a communication connection with the
`
`server process (Swinehart, pg. 2, 4, Zelleger, pg. 5, whereby user identity and workstation
`
`address are transmitted to the Voice Control Server when connected); and D. establishing a
`
`point-to-point communication with another process over the computer network (Swinehart, pg. 4,
`
`whereby after acquiring the network address of a callee, voice datagrams are transmitted directly
`
`amont the participants. bypassing the control server).
`
`However, Etherohone does not explicitly teach A. determining the currently assigned
`
`network protocol address of the first process upon connection to the computer network.
`
`Vin teaches an Etherohone implementation whereby Internet communications and IP
`
`addresses are used (Vin, page 77 and Figure 5).
`
`RFC 1531 teaches dynamically assigning IP addresses on a TCP/IP network by an
`
`Internet access server (RFC 1531, Section 2.2).
`
`Therefore, it would have been obvious to one skilled in the art at the time the invention
`
`was made to utilize the computer program product taught by Etherohone above in an Internet
`
`based system utilizing dynamically assigned IP addresses from Internet access servers as taught
`
`Straight Path Ex. 2006
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
`
`PAGE 16
`
`

`

`Application/Control Number: 90/010,422
`Art Unit: 3992
`
`Page 15
`
`by Vin and RFC 1531 since Etherphone was intended for use in multiple networks and
`
`communication protocols (Terry, page 3), since Vin and Etherphone both describe the same
`
`Etherphone system, since examiner notes that Internet and IP address-based networks are old and
`
`well known in the art and would be a natural extension from an ethernet-based system, since
`
`dynamic allocation of IP addresses allows for automatic reuse of an address that is no longer
`
`needed by the host to which it was assigned (RFC 15 31, Pg. 2), and since examiner notes the use
`
`of dynamic IP address assignment in a TCP/IP network are old and well known in the art, and
`
`are useful to eliminate the burdensome task of manually assigning IP addresses for all networked
`
`computers.
`
`Referring to (Claim 6), Etherphone teaches the method of claim 5 wherein the program
`
`step D comprises transmitting, from the first process to the server process, a query as to whether
`
`a second process is connected to the computer network (Swinehart, pg. 2, 4, Zellweger, pg. 5,
`
`whereby queries are transmitted to Voice Control Server); and receiving a network protocol
`
`address of the second process from the server process, when the second process is connected to
`
`the computer network (Swinehart, pg. 2, whereby the server sends the network protocol address
`
`of the logged in user to caller process on request).
`
`10)
`
`Claims 8-9, 14-15, and 17-18 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`by Etherphone, further in view of Pinard.
`
`Referring to (Claim 8), Etherphone teaches in a computer system having a display and
`
`capable of executing a process, a method for establishing a point-to-point communication from a
`
`Straight Path Ex. 2006
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
`
`PAGE 17
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`

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`Application/Control Number: 90/0 I 0,422
`Art Unit: 3992
`
`Page 16
`
`caller process to a callee process over a computer network, the caller process capable of
`
`generating a user interface and being operatively connected to the callee process and a server
`
`process over the computer network (Zellweger. pg. 1, 3, Figure l, Swinehart Figures 1-10), the
`
`method comprising the steps of: querying the server process to determine if the first callee
`
`process is accessible (Swinehart, pg. 2, 4, Zellw