Patent and Trademark OffIce
`COMMISSIONER Of' PATENTS ANO TRADEMARKS
`Wuhlngton, O.C. 20231
`
`APPUCATlON NO.
`08/867,624
`
`" lUNa DATE
`06/02/97
`
`SMITH
`
`FIRST NAMEO INVENTOR
`
`K
`
`ATTOAHEY OOCKET NO.
`RO- 3578
`
`I
`ANGELA C DE WILTON
`NORTHERN TELECOM L IMITED
`PATENT DEPT
`POBOX, 3511 STATI ON C
`OTTAWA ON K1Y 4H7
`CANADA
`
`LM02/0722
`
`r
`
`BROWN,R
`
`""""'"
`
`ART UNIT
`2711
`
`AU'E1I NUMBER
`~
`DATE MAILED: 07122/98
`
`I·
`
`AI R MAIL
`
`Please find below and/or aUached an Office communication concerning this application or
`procHdlng.
`
`n"O. 1IQC ,.... _J
`..... l . GI'O '_I.QMIlC22
`
`CISCO Exhibit 1002, pg. 1
`
`

`
`Office Action Summary
`
`081867,1124
`
`Smith, etal
`
`Reuben M. Srown
`o Responsive to communication(s)liJed 00 _ _________________________ _ _
`o This action is FINAL.
`o Since thiS application is In condition for allowance except for formal matters.
`prosecutlon al to the merits II closed
`in accordance with the practice under Ex parte Qua)f835 C.D. II; 453 O.G. 213.
`J month(s). or Ihiny days. whichever is
`A shonened statulory period for response to Ihis action is set to expire
`longer, from the mailing date of this communication. Failure to respond within the period for response will cause the
`application to become abandoned. (3S.U.S.C. § 133). Exlenslons of time may be obtained I,mder the provisions of
`37CFR 1 . 136(~J.
`
`27tl
`
`Disposition ot Claim
`Qg Claim(l) "'_;' •• ________________________ islare pending in the applicat
`
`islare objected to.
`
`are subject to restriction Of election requirement
`
`Of the above, ctaim(s) ______________________ islare WIthdrawn from conSideration
`o Claim(s) ___________________________ islare allowed.
`~ Clalm(s) l'-"'"''-____________________________ islare rejected
`o Clalm(s)
`o Claims
`Application Papers
`IlSl See the attached Notice of Draftsperson's Patent Drawing Review, PTO·948.
`o The drawing(e) filed on _________ iGlere objected to by the Examiner.
`o The proposed dl1ilwing correction, filed on
`is 0 approved
`o The specification is objected to by the Ex<iminer.
`o The oath Of declaration is objected to by the Examiner
`Priority under 35 U.S.C. § l1 1i1
`o Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 119(aHd).
`o All
`!BOne of the CERTIFIED copies of the priority documents have been
`[pome"
`o received.
`o received In Application No. (Series Code/Serial Number). ____ - - - - -
`o received in this national stage application from the International 8ureau (PCT Rule 17 2(1))
`"Certified copies not received: ________________________________ 1
`o Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e).
`Attachment(s)
`29 Notiee of References Cited, PTQ..892
`2S! Inlormation Disclosure Statement(s). PTQ..1449. Paper No(s).
`o Inlervu~w Summary, PTQ..413
`12!;) Notice of DransP;trson's Patent Drawing Review, PTO·948
`o Notice ollnlorm~1 Patent Application, PTO·152
`
`()fisapproved.
`
`2
`
`u ___ r_oo...
`
`PTQ..326 (Rev 9-95)
`
`- SEE OFFICE ACOON ON THE FOL LOWING PAGES-
`
`Office Ac tion Summary
`
`Part 01 Paper No _--,, __
`
`CISCO Exhibit 1002, pg. 2
`
`

`
`Serial Number: 08/867,624
`
`An Unit: 271 1
`
`Page 2
`
`DETAlLED ACTION
`
`Claim Rejectiolls· 35 USC § 102
`
`I.
`
`The following is a quotation of the appropriate paragraphs of35 U.S.C. 102 that fonn the
`
`basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless··
`
`(b) the invention was patented or described in a printed publicaliOll in this or a foreign country or in
`public usc or on sale in this country, more than one year prior to the date of application for patent in the
`United States.
`
`2.
`
`Claim 1 is rejected under 35 U.S.c. 102(b) as being anticipated by Thompson, et al (U.S.
`\
`
`Pat # 5,49 1,797).
`
`Considering claim 1, the method of selecting for display one or more streams from a
`
`number of real-time media streams available to be transmitted across a communic31ions network
`
`for display on respective terminals of a fi rst, and at least one other user comprising the method
`
`step of detennining a pol ic~ of the user for making the selection, such that the policy comprises
`
`and indication of how the selection should be made and is selectable by the user reads on
`
`Thompson (Abstract, lines [-4; col. 2, lines 7-29), in which the user can select the particular
`
`features for hislher connection including the transmission parameters. The claimed method step of
`
`detennining a condition of at least one of the communications network and the terminal, and
`
`CISCO Exhibit 1002, pg. 3
`
`

`
`"
`
`Serial Number: 081867,624
`
`An Unit: 27 11
`
`Page 3
`
`dynamically selecting which stream to select for the user according to the condition and user
`
`policy, is met by (coL S, lines 15·28; col. 5, lines 45·60). The c:lairned step of causing only the
`
`selected streams to be passed for display on the tenninal orthe user, independently of selections
`
`made for passing to other users is necessarily included within Ihe system disclosed by Thompson,
`
`as the user is in control of all aspects of video conferencing, and receives the video images
`
`according to selections made (col. 6, lines 42-54).
`
`Regarding the claimed feature of determining a policy of a first user for making a
`
`selection, the system disclosed by Thompson inherently reads on this recitation, in that if a system
`
`has any number of conferees, for instance N, the system automatically determines the policy or
`
`configuration choice the first user, as well as the second user on up to N users.
`
`Claim Rejec/iolfs - 35 USC § 103
`
`3.
`
`The following is a quotation of 35 U.S.c. 103(a) which fOnTIS the basis for all obviousness
`
`rejections set forth in this Office action:
`
`(a) A pltent may not be: obtained Ihougll the invention is not identieally diselo5ed Of dcseribc:d as set fOfth in
`section 102 of this title, irthe differences between the subject matter SOU&lltlO bc: patentcO and the prior art Ire
`sueh thlt the subject matter as I whole would hive bc:en obvious It the time the invention WI$ made 10 a person
`hlvin, ordinary skill in the art 10 which said subject miller pertains. Patentability shall not bc: negatived by the
`manner in which the invention was madc.
`
`CISCO Exhibit 1002, pg. 4
`
`

`
`Serial Number: 08/867,624
`
`Art Unit: 2711
`
`Page 4
`
`4.
`
`Claims 1-2, 4-5 & 9-18 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Lukacs, (U.S. Pat # 5,657,096), in view of Way (U.S. Pat # 5,768,280).
`
`Considering claim I, the method of selecting for display one or more streams from a
`
`number of real-time media streams available to be transmitted across a communications network
`
`for display on respective tenninals of a first, and at least one other user comprising the method
`
`step of determining a policy of the user for making the selection, such that the policY,comprises
`
`and indication of how the selection should be made and is selectable by the user reads on Lukacs
`
`(Abstract, lines 1-10; Fig. 4; col. 2, lines 45-51), in which the user can select the particular
`
`features for hislher connection including the transmission parameters. The claimed method step of
`
`determining a condition of at leas! one of the communications network and the terminal, and
`
`dynamical!y selecting which stream to select for the user according to the condition a.nd user
`
`policy, is met by (col. 15, lines 25-49). The claimed step of causing only the selected streams to
`
`be passed for display on the terminal of the user, independently of selections made for passing to
`
`other users is necessarily included wiihin the system disclosed by Lukacs, as the user is in control
`
`of all aspects of video conferencing (Abstract, lines 4-10).
`
`As mentioned above, Lukacs' invention provides for a method of connecting a user to a
`
`video conferencing arrangement, hut does not specifically teach starting with a particular first
`
`user. Nevertheless, one skilled in the art at the time the invention was made would have readily
`
`CISCO Exhibit 1002, pg. 5
`
`

`
`Serial Number: 08/867,624
`
`Art Unit: 2711
`
`Page 5
`
`recognized the benefits of and would have been motivated to include a method for identifying and
`
`determining the requests of a first user in a video conferencing environment in order to insure
`
`proper activation of a conferencing session, commencing the configuration of the instant
`
`conferencing session upon the receipt of the request from a particular, or first user, as disclosed
`
`by Way (Abstract, lines 1-15; col. I, lines 50-54). Therefore it would have been obvious to one
`
`skilled in the art at the time the invention was made to modify the video conferencing arrangement
`
`disclosed by Lukacs, with the protocol of determining a request from a first user as taught by
`
`• J
`
`Way, in order to obtain the well known benefit of insuring that a session will be commenced by
`
`determining a request of the first user to the system.
`
`Considering claim 2, the claimed method step of determining if the selection is restricted
`
`by the condition, such that the user's policy or choice comprises an indication of how to make the
`
`selection when the selection is restricted by the condition is necessarily included in the session
`
`initialization process disclosed by Lukacs, in that several parameters or conditions of the network
`
`are dealt with during the handshaking protocol between network and user, Lukacs (col. 15, lines
`
`33-42).
`
`Considering claim 4, the claimed method wherein the condition comprises a level of the
`
`availability of network resources is met by Lukacs (col. 13, lines 51-60; col. IS, lines 26·42).
`
`,.
`
`CISCO Exhibit 1002, pg. 6
`
`

`
`Serial Number: 08/867.624
`
`Art Unit: 2711
`
`Page 6
`
`Considering claim 5. the claimed method wherein the condition comprises a level of
`
`availability of the user tenninal resources is necessarily included in the handshaking protocol
`
`disclosed by Lukacs. as the network provider needs to ascertain the capability of the client in
`
`ordeno agree on a particular protocol, Lukacs (col. 13, lines 5 J ·60; col. 15, lines 26·42).
`
`Considering claim 9, the claimed method of indicating to the network which are the
`
`selected streams. wherein the step of passing the selected streams, comprises transmitting across
`
`the network only the selected streams, is necessarily included in the operation of Lukacs,
`
`(Abstfa\;t. lines 4- 13; col. 2, lines 36-44). as the user receives the video/audio streams as a result
`
`of its policy or configuration choices.
`
`Considering claim 10, the claimed method wherein the media streams comprise video
`
`streams is met by Lukacs (col.2, lines 36-37).
`
`Considering claim II , the claimed method wherein the network is a multicast capable
`
`network is met by Lukacs (col. 1, lines 6-20).
`
`Considering claim 12. the claimed method wherein the first user also transmits at [east one
`
`real-time media stream to take part in the conference is met by Lukacs (col. I, lines 23-26).
`
`CISCO Exhibit 1002, pg. 7
`
`

`
`Serial Number: 081867.624
`
`Art Unit: 2711
`
`Page 7
`
`Considering claim 13. the claimed software on computer readable media for carrying out
`
`the method of claim 1, is met by Lukacs (Abstract, lines 13·16; col. 4, lines 54·64).
`
`Considering claim 14, the claimed method steps which correspond with the method steps
`
`mentioned above in the rejection of claim I, are likewise rejetted. Regarding the difference, of a
`
`method for seletting media streams in accordance with a policy choice of each of the users of a
`
`the users of the system is necessarily included in the Lukacs, invention as it is a scalable system
`
`(col. 4. lines 26--29; col. 12. lines 14.15).
`
`Considering claim IS, the claimed apparatus elements correspond with the methods steps
`
`mentioned in the rejection of claim I above, and are likewise rejected.
`
`Considering claim 16, the claimed means for a network to pass real-time media streams
`
`across a communications network fo r display on terminals of a first user and other users, which
`
`correspond to the method steps mentioned above in the rejection of claim I, are likewise rejected.
`
`Regarding the difference of a network node for use in the passing of real-time media streams
`
`across a communications network is provided for by the Client program, API, Lukacs (col. 16,
`
`lines 1-6).
`
`CISCO Exhibit 1002, pg. 8
`
`

`
`Serial Number: 08/867,624
`
`Art Unit: 2711
`
`Page 8
`
`Considering cfaim 17, the c1{1imed means which correspond to the method steps mentioned
`
`above in the rejection of claim I, are likewise rejected. Regarding the difference of a terminal
`
`display for displaying real-time media streams transmitted across a communications network and
`
`means for coupling the terminal and other terminals to. the network is met by Lukacs (col. 2, lines
`
`52-65).
`
`Considering claim 18, the claimed method steps of selecting for display one or more
`
`streams from a number of real-time media streams a~ailable to be transmitted across a multicast
`
`capable communications network for display on a user's terminal, correspond to the method
`
`steps mentioned above in the rejcction of claim I, and arc likewise rejected.
`
`,
`
`5.
`
`Claims 3 & 6-8 are rejected under 35 U.s.C. 103(a) as being unpatentable over Lukacs,
`
`and Way, as applied to claim I above, further in view ofMirashrafi, et al (U.S. Pat # 5,574,934).
`
`Considering claim 3, Lukacs discloses a means for making a selection of a stream of video
`
`data according an indicator of a user's policy, but does not specifically show that the relative
`
`priority of media streams might be an indicator. However, one skilled in the art at the time the
`
`invention was made would have been motivated and it would have been obvious 10 one skilled in
`
`the art to modify the video conferencing arrangement of the above cites combination of Lukacs
`
`and Way, with the protocol of having an indicator of a user policy comprise the relative priorities
`
`r
`
`CISCO Exhibit 1002, pg. 9
`
`

`
`Serial Number: 08/867,624
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`An Unit: 2711
`
`Page 9
`
`of media streams as taught by Mirashrafi (Abstract; col. I, lines 19-67), for the well known
`
`desirous benefit of being able to choose the most desirable stream, in view of network limitations,
`
`for instance in the event that the network is only able to transmit one of a plurality of streams.
`
`Considering claim 6, the claimed method of determining the activity of one or more
`,
`
`streams, the indication comprising an indication of how to make the selection dependent upon the
`
`the activity is met by Mirashrafi, (col. 28, lines 38-46).
`
`Considering claim 7, the claimed method wherein two or more media streams originate
`
`from a single source, and the indication of how to make the selection dependent upon the activity
`
`comprises making the selection of one of the co-originating streams dependent upon the activity
`
`of the other co-originating streams is met by Mirashrafi, (Abstract), in that the audio, video and
`
`data signals are from the same source.
`
`Considering claim 8, the claimed method step of determining the selected streams is .
`
`carried out at the user's terminal is met by Mirashrafi (col. 75, lines 28-33; col. 75 lines 65-68),'as
`
`user application sends its capability requirements/configuration choices to the network and
`
`receives an accept message.
`
`CISCO Exhibit 1002, pg. 10
`
`

`
`\
`
`Serial Number: 08/867,624
`
`Art Unit: 27 11
`
`Page 10
`
`6.
`
`The prior art made of record and not relied upon is considered peninent to applicant's
`
`Conclusion
`
`disclosure.
`
`A)
`
`Hyziak, et al
`
`Method For Selecting Transmission Preferences
`
`B)
`
`Lukacs
`
`Infinitely Expandable Real-Time Video Conferencing System
`
`C)
`
`Monteiro, et al
`
`Multicasting Method And Apparatus
`
`0)
`
`Zhu, et al
`
`Device, System And Method Of Real-Time Multimedia Streaming
`
`CISCO Exhibit 1002, pg. 11
`
`

`
`Serial Number: 08/867,624
`
`Art Unit: 2711
`
`Page 11
`
`Any response to this action should be mailed to:
`
`Conunissioner of Patents and Trademarks
`
`Washington, D.C. 20231
`
`or faxed to:
`
`(703) 30S·905 I, (for formal communications intended for entry)
`
`Or:
`
`. (703) 308-5399 (for informal or draft communications, please label
`
`"PROPOSED" or "DRAFT")
`
`Hand-delivered respouses should be brought to Crystal Park n. 2121 Crystal Drive.
`
`ArlingtOn. VA .. Sixth Floor (Receptionist):
`
`Any inquiry concerning this communication or earlier communications from me examiner
`
`should be directed to Reuben M. Brown whose telephone number is (703) 305-2399. The
`
`examiner can normally be reached on Monday thru Friday from S30am to 430pm.
`
`If attempts to reach the examiner by telephone are unsuccessful. the examiner's supervisor.
`
`Andrew Faile, can be reached on (703) 305-4380. The fax phone number for mis Group is (703)
`
`308·9051.
`
`Any inquiry of a general nature or. relating to the status of this application or proceeding
`
`should be directed to the Group receptionist whose telephone number is (703) 305-4700.
`
`~ ANDREW L FAILE
`
`SUPERVISORY PATENT EXAMINER
`GROUP 2700
`
`CISCO Exhibit 1002, pg. 12
`
`

`
`Notice of References Cited
`
`AppUcalOon No.
`081861,624
`
`I AppJicant(s)
`
`E",,,",,er
`Reuben M. Brown
`
`u.s. PATENT DOCUMENTS
`
`Smith, etal
`
`! Grrwp All UIIlt I
`
`2111
`
`P;l9~ 1 011
`
`DOCUMENT NO.
`
`5,491 ,791
`
`5,657.096
`
`5,768,280
`
`5.~74 ,9~4
`
`5.662.460
`
`5,731.011
`
`5.778,187
`
`5,786.527
`
`5,544,313
`
`5,780.838
`
`O .... u
`
`2113/96
`
`611:2191
`
`6/16/98
`
`11/12196
`
`101"28197
`
`417198
`
`717198
`
`8116/98
`
`.,816196
`
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`
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`
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`
`Lukacs
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`Mirashrafi, at .. 1
`
`Hyziak, et OIl
`
`lukaes
`
`Monle ~o, elal
`
`Zhu. el al
`
`Schachnai, el al
`
`Adams . etal
`
`FOREIGN PATENT. DOCUMENTS.
`
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`
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`PTO-892 (Rev 9-95)
`
`Notice of References Cited
`
`Part of Paper No _~3,-_
`
`CISCO Exhibit 1002, pg. 13
`
`

`
`,"
`
`"~ ,
`
`'';::;'..se-:- SMITH, I-I
`
`INTHEUNlTEDSTATESPATENTANDTRADEMARKOFFICE ~-A-.
`
`IN RE PATENT APPLICATION OF:
`
`SMITH, K.M., et al
`
`SERJAL NO:
`
`081867,624
`
`ART UNIT:
`
`2711 .
`
`..--ri'OS'v
`1-~'l'1
`
`FILED:
`
`2 June 1997
`
`EXAMINER:
`
`Brown, R.
`
`SU~ECT:
`
`DYNAMIC SELECTION OF MEDIA STREAMS FOR DISPLAY
`
`THE ASSISTANT COMMISSIONER FOR PATENTS,
`,WASHINGTON, D.C.,
`20231, U.S.A.
`
`Sir:
`
`RESPONSE TO OFFICE AcrlON
`
`JAN 1 9 i999
`
`Group 2700
`
`This letter is in response to an Office Action mailed on July 22. 1998.
`
`In the prawings:
`
`In response to the Notice of Draftsperson's Review attached to the Office Action, we
`enclose amended Figures 4 to 21, with figure titles removed.
`
`In the Claims:
`
`Please add the following claim:
`19. (new)
`
`Apparatus for selecting for display. one or more real-time media
`streams available to be transmitted across a communications network for display on tenninals
`of a first user and other users. the apparatus comprising:
`
`circuitry for determining a policy of the first user for making the selection. the policy
`
`comprising an indication of how-the selection should be made, the policy being selectable by
`
`the first user;
`circuitry for determining a condition of at least one ofth~ communications network
`
`R {
`CO~and the terminal;
`
`circuitry for determining dynamically which streams to select for the first user
`according to the condition and according to the first user's policy; and,
`
`circuitry for causing only the selected streams to be passed. for display on the terminal
`
`of the firs! user, independently of selections made for passing to the other users.
`
`{I
`
`CISCO Exhibit 1002, pg. 14
`
`

`
`,
`
`;
`
`I
`i
`
`REMARKS
`
`New claim 19 is based on previous claim 1 S, and so no new matter is involved.
`
`In hem 2 oCthe Official Action mailed on July '22, 1998, the Examiner rejected claim
`,
`1 for anticipation by Thompson (U.S. Patent No. 5,491,797).
`
`Thompson is concerned with the problem of a video conference user having to rely on
`
`an administrator for scheduling and confi guration (column I,lines 35-S7). The solution
`
`disclosed by Thompson is 10 give the user direct control over conference scheduling, i.e., who
`is on the conference and when (column 2, lines 7-17). The user is also given direct control
`
`over conference configuration (i.c., bandwidth and whether the conference is a one-way
`
`broadcast or a two-way interactive conference). This implies the user has manual control
`
`over which conferees are displayed to that user.
`
`There is no discussion in Thompson of the problem of how to handle large
`conferenc~ when direct control by a user may be too time-consuming. There is no
`
`disclosure or suggestion of replacing direct manual control of selection of streams for display
`by dynamic selection of streams from those available. There is also no suggestion of making
`
`this dynamic selection on the basis of a user selectable policy.
`
`The Examiner indicates in the last paragraph ofItem 2 of the Official Action that
`
`determining a policy is disclosed inherently because the system would automatically
`determine the policy or configuration for each user. The policy as recited in claim I
`
`comprises an indication of how the selection of streams for display is made, and that the
`
`policy is user-selectable. Thompson gives no suggestion of any automatic policy for
`selection of streams for display. If there is one implied, as asserted by the Examiner, such an
`automatic policy is essentially the opposite of the user-definable policy claimed. Hence any
`
`such implication serves to reinforce the distinction of the invention claimed, and reinforces
`
`the non-obviousness of the invention. This conclusion is supported by the fact that
`
`,
`Thompson was rated as being in category A, by the International Search Examiner meaning it
`
`was considered to be not part"icularly relevant.
`
`2
`
`-11
`
`CISCO Exhibit 1002, pg. 15
`
`

`
`Regarding Item 4 of the Office Action, the Examiner rejects claim I and other claims
`
`for obviousness over Lukacs (U.s. Patent No. 5,657096), in view of Way (U.S. Patent No.
`
`,
`
`5,768,280).
`
`Lukacs is concerned with problems of large scale video conferences. It mentions
`
`problems of hardware requirements, and transmission bandwidth (column 1, lines 25-41) and
`
`difficulties of display of many video streams (column 1, lines 42-49). However,liJ(e
`
`Thompson, it does not show or suggest the solution of the present invention. In Lukacs, a
`
`user may specify manually which streams are to be displayed (column 6, lines 31-42; and
`
`column 7, lines 1-3). The user may also specify which oCthe streams have higher priority in
`
`the sense of being displayed overlaid over lower priority streams, or displayed with higher
`
`brightness (columns 7 and 8). However, there is no disclosure of a selection policy to
`
`indicate how streams may be selected dynamically.
`
`Way is considered to be less relevant, as it is concerned with protocols for two-way
`
`broadband cable television. It does not mention conferencing. It does not disclose or suggest
`
`the above-mentioned features not shown in Lukacs.
`
`Mirashrafi is cited in an obviousness rejection against claims 3 and 6-8 in item 5 of
`
`the Office Action. These claims are dependent on claim I, and so are acceptable for the same
`
`reasons as claim I. For the sake of brevity detailed comments on the rejections oCthese
`
`dependent claims will not be made now, though this is not to be taken as any sort of
`
`admission. Mirashrafi is not relevant to claim I either alone or in combination with other
`
`documents. It does disclose a co.nferencing system in which audio signals are given higher
`
`priority than video signals, presumably so that where there is limited bandwidth, the amount
`
`of video information transmitted is reduced when there is speech or other audio to be
`
`transmitted. It does not disclose any form of selection policy for a user, selectable by the user,
`
`to indicate how streams may be selected dynamically for display to a user.
`
`None of the documents disclose or suggest dynamic selection of streams for display
`
`according to a user-selectable policy for that user. This distinctive feature brings the
`
`advantage of leaving the user free to concentrate on the content, not the fonn of the display,
`
`enabling larger conferences to be handled more easily and efficiently. None of the
`
`3
`
`CISCO Exhibit 1002, pg. 16
`
`

`
`documents propose, or would lead a skilled person towards, this feature, or its advantages.
`
`Thus, the invention of claim 1 cannot be obvious over any of these documents individually or
`
`in combination. The fact that some of these documents are concerned with similar problems,
`yet the respective authors did not make the distinctive steps to reach the present invention,
`
`confinns the non-obviousness.
`
`The remaining claims are dependent on claim I, or contain corresponding features,
`and therefore, are acceptable for the same reasons. All the points raised by the Examiner
`
`have been dealt with. Favorable reconsideration is requested, and the Applicants respectfully
`
`request full allowance of all claims 1-19.
`
`The Commissioner is hereby authorized to deduct the appropriate fee for one
`additional independent claim from our Company's Deposit Account No. 14-1315.
`
`An extension of time for three (3) months is hereby requested and is being submitted,
`in duplicate, under separate cover, concurrently herewith.
`
`Yours truly,
`SMITH, K.M., et al
`
`BY;~ ,
`
`Angela C. de Wilton
`Patent Agent
`Reg. No. 35,763
`
`ADWIPNCltk
`NORTHERN TELECOM LIMITED
`clo
`Patent Department
`P.O. Box 3511, Station "C"
`Ottawa, Ontario, Canada.
`KIY 4H7
`
`Telephone:
`Date:
`
`(613) 721-3020
`January 13. 1999.
`
`•
`
`CISCO Exhibit 1002, pg. 17
`
`

`
`.nMENT OF COMMERCE
`UNrTED STATES DE
`Pat.nt .nd Tredemart. :''fnce
`~ COMMlSSlOHER OF PATENTS AND mADEMARKS
`W .. hllI"IOI~ D.C. 20231
`
`FlUHGOATE
`
`FIRST NNoIEO 1NV9fT0A
`
`ATTOAHEY OOCKET NO.
`
`Af'PI.JCATION NO.
`
`,
`08/867.624
`
`0 6/02197
`
`SMITH
`
`,-
`ANGELA C DE WI LTON
`NORTHERN TELECOM LIMITED
`PATENT DEPT
`POBOX 3511
`STATION C
`OTTAWA ON K1 Y 4H7
`CANADA
`
`LM 02/0J30
`
`AIR MAIL
`
`,
`
`K
`
`RO-3S78
`
`EXAMINEA
`
`BRQliJN . B
`WIT UNIT
`
`271 1
`DATE MAlLEO:
`
`PAPER NUMBER
`
`7
`
`03130/99
`
`,
`Pl .... find be>low and/or anached .n Office communication concerning thle .ppllc.tlon or
`proceeding.
`
`CGmnuulonw of Patent, and T radem.ri(,
`
`PTO-IOC (Ro.. 21M)
`
`'U.s.GPO;'~oIC»'~
`
`CISCO Exhibit 1002, pg. 18
`
`

`
`. Office A ction Summary
`
`,
`
`Raub ... M. Brown
`
`. IX! Responsive to communi(:8tion(slliled on "J'."'--<,,<,'-'-',99'9'--_ _ _________ ________ _
`o This action is FINAL.
`o Since this application is in condition lor allowance except 10f formal maners, prosllculion 85 to the merits Is clcslld
`in accordance with the practice under E" parte Quayle, 1935 C.O. 11; 453 D.G. 213.
`
`month(s), or thirty days. whichever
`3
`A Shortened statutory period for response to this IIctiol'l is set to IIxpire
`is longer, Irom the mailing detll of this communication. Failure to respond within the period for response will cause the
`application to become abandoned. (35 U.S.C. § 1331. Extensions of lime may be obtained under the provisions of
`37 CFR 1.136(8).
`
`Dlsoosltlon of Claims
`(Xl Claim(sll'c'C19'-______________________ is/are pending in the application.
`
`is /are objected to.
`
`are subject to restriCtion or election reqUIrement.
`
`is /are w ithdrawn from consideration.
`01 the abol/e, claimls) ___________________
`o Claiml s) _____ _____ ___ _____________ is /are allowed.
`IXl Claim/s) !'c' 'C9'-__ ___ ___ __________ ______ is /are rejected.
`o Claim(s)
`o Claims
`AppliCatiOn Papers
`o See the attached Notice of Draftsperson's Patent Drawing Review, PTQ-948.
`o The drawing(s) Wed on ____ ____ is/are objected to by Ihe E)laminer.
`o The proposed drawing correction, filed on
`is
`upprOl/ed O isapproved.
`o The specification is objected to by the E)laminer.
`o The oath or declaration is objected to by the Ellaminer.
`Pflority under 35 U.S.C. § 119 .
`o Acknowledgement is made 01 a claim for foreign ~riority under 35 U.S.C. § 119(a).(d).
`o All 0 Some- 0 None
`01 the CERTIFI~D copies of the priOlity documents have been
`o received.
`o received in Application No. (Series Code/Serial Number) _______ _
`o received in this national stage application Irom the International Bureau (PCT Rule 17.2(a)).
`·Certified copies not receil/ed; _______ _____________________ _
`o Acknowledgemant is made 01 a claim for domestic plior~ty under 35 U.S.C. § 119(e ).
`Altachment(s)
`o Notice of References Cited, PTO·B92
`IXllnformation Disclosure Statement(s), PTO-1449, Paper Nols).
`o Interl/iew Summary, PTO-413
`o Notice 01 Dreftsperson's Patent Drawing Review, PTO·948
`o Notice 01 Inlormal Patel'll App ~itat ion, PTO·152
`
`4
`
`U. , . p." .. .... 1'_ ...... 01,.,.
`PTO·326 (Rev. 9·95)
`
`Of fice Action Summa.y
`
`Part of Paper No.
`
`_ SEE OFFICE ACTION ON THE FOLLOWING PAGES-_
`
`,
`
`CISCO Exhibit 1002, pg. 19
`
`

`
`Serial Number: 08/867,624
`
`Art Unit: 2711
`
`Page 2
`
`DETAILED ACTION.
`
`Claim Rejections - 35 USC § 102
`
`1.
`
`The following is a quotation of the appropriate paragraphs of35 U.S.C. 102 that fonn the
`
`basis for the rejections under this section made in this Office action:
`
`A perwn shall be entitled to a patent unleu··
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`·public use or on s.ale in this country, mo~ than one year prior 10 the date of application for patent in the
`Un ited States.
`
`2.
`
`Claim 1 is rejected under 35 U.S.C. 102(b) as being anticipated by Thompson, et al (U.S.
`
`Pal II 5,491,797).
`
`Co~sidering claim I, the method of selecting for display one or more streams from a
`
`number of real·time media streams available to be transmitted across a communications network
`
`.for display on respective tenninals of a first, and at least one other user comprising the method
`
`step of aetennining a policy of the user for making the selection, such that thc policy comprises
`
`and indication of how the selection should be made and is selectable by the user reads on
`
`Thompson (Abstract, lines 1·4; col. 2, lines 7·29), in which the user can select the particular
`
`features for hislher connection including the transmission parameters. The claimed policy selection
`
`by the user is inherently included in· Thompson, as the user is enabled to at least select Iheir
`
`desired conference schedule, therefore whatever schedule is chosen by the user represents the
`
`CISCO Exhibit 1002, pg. 20
`
`

`
`Serial Number: 08/867,624
`
`Art Unit: 2711
`
`Page 3
`
`instant user's policy. The claimed method step of determining a condition of at least one of the
`
`communications network and the lerminaJ, and dynamically selecting which stream to select for
`
`the user according to the condition and user policy, is met by (col. 5, lines 15-28; col. 5, lines 45-
`
`60), wherein the network modeler 136, determines the most efficient network cpnfiguration based
`
`on the users' request information, reque~1 patterns and peak 'demand? The claimed step of
`
`causing only the selected streams to be passed for display on the terminal of the user,
`
`independently of selections made for passing to other users is necessariiy included within the
`
`system disclosed by Thompson, as the user is in control of all aspects of video conferencing, and
`
`receives the video images according to selections made" (col. 6, lines 42-54).
`
`Claim Rejections - 35 USC § 103 ,
`
`3.
`
`The following is a quotation 0(35 U.S.C. 103(a) which forms the basis for all obviousness
`
`rejections set forth in this Office action:
`
`(al A patent may not be obtained thoygh the invention is not identically disclosed or described i5 set fonh in
`section 102 of this title, if the differences between the subj«:t matter sought 10 be patented and the prior an are such that
`the subject matter IS a whole would have' been obvious at the lime the invention was made to a person having ordinary
`skill in th e an to which said subject matter penains. Patentability shall not be negatived by the manner in which th e
`invention was made .
`
`. 4.
`
`Claims 1-19 are rejected under 35 U.S.C. 103(a) as being unpatentable over Lukacs,
`
`(U.S. Pat # 5,657,096), in view of Kownatzki, (EP Pub!. # 724,362 AI).
`
`CISCO Exhibit 1002, pg. 21
`
`

`
`Serial Number: 081867,624
`
`Art Unit: 2711
`
`Page 4
`
`Considering claim I, the method of selecting for d