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`ATTORNEY DOCKET NO. Noam/meow
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`d0,
`
`Applicant:
`Serial No:
`
`Filed:
`2,.
`For:
`Examiner:
`Art Unit:
`
`Glenn W. Hutton
`08/533,115
`
`September 25, 1995
`POINT-TO-POlNT INTERNET PROTOCOL
`Richard J. Gregson, Esq.
`2302
`‘
`
`CERTIFICATE OF MAILING
`
`I hereby certify that the following correspondence is being deposited with the United States Postal
`Service as first class mail in an envelope addressed to the Assistant Commissioner for Patents,
`
`Washington, DC 20231 on December 2, 1997.
`
`E
`
`(D
`
`Bruce D. Jobse
`
`Assistant Commissioner for Patents
`
`Washington, DC. 20231
`
`Sir:
`
`Inthe Title
`
`AMENDMENT
`~
`
`u .l
`
`(:7
`Pr.
`i
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`E: n :51“
`Q ‘l d
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`Please delete the title as filed and insert -- Method and Apparatus for
`
`Establishing Point-to—Point Communications Over a Computer Network —.
`
`In the S ecification
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`
`
`01/23/1998 KWM
`2
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`, gitseiimfiiterfacing” insert --to—-.
`01 FC:202
`28% 1M
`02 “2:203
`185.00 CH
`Page302218, change “by" to --to--.
`Page . lineWeed-only" to --random access--;
`Page 1%; 17, change “the connection server 26" to --a connection service
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`, change
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`“other” to --another--.
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`\y,
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`/(-\
`V
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1018 - Page 001
`Petitioner Vonage Holdings Corp. et a1. - Exhibit 1018 - Page 001
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`x
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`I
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`v
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`'
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`"
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`provider—-.
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`Page 13, l'
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`6, change “the connection server 26" to --a connection service
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`provider--.
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`in the Claims
`
`Please amend the claims as follows:
`
`
`22.
`
`(Amended) A computer program product for use with a comp .,- r system,
`
`the computer system having first rocessor oerativel cou-led to a s 0nd rocessor
`{and second processors] and a server [operatively coupled] ove . computer network,
`
`the computer program product comprising:
`
`\
`
`b
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`a computer useable medium having program de means embodied in the
`medium for establishing a point-to-poi
`commu‘cations link between the first
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`processorand a second processor‘over .- c puternetwork, the mediumfurther
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`comprising:
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`program code means for tr , s
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`itting .. E-mail signal comprising a network
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`protocol address [from]1the
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`st proc
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`or to the second processor {server} over the
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`computer network;
`program code I eans for receiving a second network protocol address from the
`
`second processo over the computer network; and
`
`progr , code means, responsive to the second network protocol address, for
`establish' 9 a point-to-point communication link between the first processor and the
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`seco . processor over a computer network.
`
`entsgenerated in
`(Amended) The method ofclaim41 wherein
`WW) 42.
`steps A and B are ngm e step of establishing a [point-to-
`‘
`communication
`
`
`user
`Ipulating the graphic elements on the graphic user interface.
`
`
`
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`- o oint link as described in step C is performed in response to a
`
`i
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1018 - Page 002
`Petitioner Vonage Holdings Corp. et a1. - Exhibit 1018 - Page 002
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`

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`Please add the following claims:
`
`”Sf/v
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`steps of :
`
`54.
`
`Amethod oflocating a useroveracomputernetworkcomprisin
`
`
`
`maintaining an lnternet accessible list having a p rality of entries,
`
`a.
`
`each entry comprising an electronic mail address and a corresp
`
`
`
`ding Internet protocol
`
`address for a process currently connected to the lnternet; an/
`b.
`in responseto identification ofoneZ/(e list entries by a requesting
`
`process, providing one of the electronic mail address
`
`not the corresponding lnternet
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`protocol address of the identified entry to the requ sting process.
`
`ing dynamically assigned network protocol
`ethod comprising the steps of:
`
`55.
`
`A method for locating users h
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`addresses overa computer network, the
`
`a.
`
`maintaining in a mputer memory, a network accessible
`
`fl]
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`compilation of entries, each entry mprising a network protocol address and a
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`corresponding identifier for a us r connected to the computer network;
`
`process providing one oft
`
`b.
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`in resp? e to identification of one ofthe entries by a requesting
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`identifier and the network protocol address to the
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`requesting process.
`
`56.
`
`thod of claim 55 further comprising the step of:
`
`modifying the compilation of entries.
`
`The
`
`C.
`
`
`
`
`57.
`
`he method of claim 56 wherein step 0 further comprises:
`
`c.‘l
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`adding an entry to the compilation upon the occurrence of a
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`predeter
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`ined event.
`
`
`
`58.
`
`The method of claim 57 wherein the predetermined event comprises
`
`n9 ification by a user process of an assigned network protocol address.
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`-3-
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1018 - Page 003
`Petitioner Vonage Holdings Corp. et a1. - Exhibit 1018 - Page 003
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`

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`O
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`C
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`59.
`
`The method of claim 56 wherein step 0 further 0
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`prises:
`
`c.1
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`deleting an entry from the compilation pon the occurrence of a
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`predetermined event.
`
`
`
`60.
`
`A computer program product for us with a server apparatus operatively
`
`coupled over a computer network to one or m e computer processes, the computer
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`program product comprising a computer us
`embodied in the medium the program co e comprising:
`
`le medium having program code
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`a.
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`program code con 'gured to maintain. in a computer memory, a
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`network accessible compilation of en ries, each entry comprising a network protocol
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`network; and
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`address and a corresponding iden ' ier for a process connected to the computer
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`e responsive to identification of one of the entries by a
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`b.
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`program c
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`requesting process and cont" ured to provide one of the identifier and the network
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`protocol address to the req esting process.
`
`61.
`
`The comp ter program product of claim 60 further comprising:
`
`0.
`
`pr gram code configured to modify the compilation of entries.
`
`62.
`
`The omputer program product of claim 61 wherein program code
`
`configured to mo ify comprises:
`
`0.
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`program code configured to add an entry to the compilation upon
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`the occurrenc of a predetermined event.
`
`
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`The computer program product of claim 62 wherein the predetermined
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`event co prises notification by a process of an assigned network protocol address.
`
`64.
`
`The computer program product of claim 60 wherein step c further
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`.4-
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1018 - Page 004
`Petitioner Vonage Holdings Corp. et a1. - Exhibit 1018 - Page 004
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`

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`comprises:
`
`
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`c.1
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`upon the occu
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`o a predetermined event.
`
`e01/
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`o delete an entry from the compilation
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`r
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`program code co '
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`
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`65.
`
`
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`operatively coupled
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`A computer program product for use with a se
`
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`of processes
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`comprising a computer usable medium avin
`rogram code embodied thereon the
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`over a computer network to a plurali
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`e computer program product
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`program code comprising:
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`
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`and
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`said one proces
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`protoco address and the associated identifier of said one process from other processes
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`program code configured to receive queries for one of the network
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`ove he computer network.
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`Acomputer program productfor usewith a commiwstamrfhe/l
`(\7 66.
`computer system including a first process operatively cowv r a computer network
`to a second process and a server process , thedye program product comprising a
`
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`computer usable medium having computer re
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`le program code embodied therein,
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`the program code means comprising:
`
`a.
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`e configured to access a directory database, the
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`program c
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`database having a netw
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`the computer network; and
`status with respect
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`program code responsive to one of the network protocol addresses
`and con ' ured to establish a point-to-point communication link from the first process to
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`protocol address for a plurality of processes having on-line
`
`the econd process over the computer network.
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1018 - Page 005
`Petitioner Vonage Holdings Corp. et a1. - Exhibit 1018 - Page 005
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`

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`ln a first computer process operatively coupled over a co
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`shing a point-to-point
`3 comprising the steps of:
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`communication between the first and second proce
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`to a second process and an address server, a method of es
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`to whether the second process is
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`67.
`
`A.
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`
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`querying the address serve
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`receiving a n
`ork protocol address of the second process from the
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`e second process is connected to the computer network; and
`esponsive to the network protocol address of the second process,
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`connected to the computer netwo
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`address server, whe
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`establish' 9 a point-to-point communication link with the second process over the
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`co
`uter network.
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`
`B.
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`68.
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`In a first computer process operatively co
`
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`d processes comprising the steps of:
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`
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`ed over a computer network
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`to a second process and an E-mai server, a
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`od of establishing a point-to-point
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`communication between the first an se
`
`A.
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`transmitting an E—m ' s nal comprising a network protocol address of
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`
`B.
`
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`the first process to the seco
`process ver the computer network;
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`second etwork rotocol address from the second process
`receivin
`
`etwork; and
`responsive to the second network protocol address, establishing a
`
`over the compute
`
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`point-to- oint communication link between the first process and the second process
`
`V computer network.
`
`REMARKS
`
`Applicant has considered carefully the Office Action dated June 2, 1997 and the
`
`references cited therein.
`
`in response, the title, specification, and ctaims have been
`
`amended. Applicant respectfully requests reexamination of the application.
`
`The title of the application has now been changed to “METHOD AND
`
`APPARATUS FOR ESTABLISHING POINT-TO-POlNT COMMUNICATlONS OVER A
`
`-6-
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1018 - Page 006
`Petitioner Vonage Holdings Corp. et a1. - Exhibit 1018 - Page 006
`
`

`

`COMPUTER NETWORK. Applicant asserts that the title as amended is indicative of
`
`the invention to which the claims are directed.
`
`Regarding the multiple information disclosures submitted prior to examination,
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`many of the submitted references were located during patentability searches not
`
`performed by applicant’s current counsel. Applicant’s current counsel submitted such
`
`references under the continuing duty of candor under 37 CFR. §§56, 1.97, 1.98. The
`
`Applicant is relying on the Examiner's expertise to determine the relevance of the
`
`references to the claimed subject matter.
`
`As requested by the Examiner, the applicant has checked the specification for
`
`minor errors and has, in response. amended the specification as set forth herein. No
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`new matter is believed to be added by these changes to the specification.
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`Claim 22 has been amended to conform the claim language with the
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`specification. Such amendments are not required to distinguish the claimed subject
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`matter over any of the cited references, whether considered singularly or in
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`combination.
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`Claim 42 has been amended to correct a grammatical error and any potential
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`problems under 37 CFR. §112, second paragraph. Such amendment is not required
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`to distinguish the claimed subject matter over any of the cited references, whether
`
`considered singulariy or in combination.
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`Applicant submits herewith a declaration of prior invention under 37 CFR 1.131
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`to overcome the rejection of all claims under 35 U.S.C. §103 as being unpatentable
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`over Civanlar et al. in view of Morgan et al. and/or further in view of December et al.
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`The declaration is submitted with a facsimile signature of the declarant inventor. The
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`original signed declaration will be submitted as soon as it becomes available.
`
`In light of
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`the declaration and acconpanying exhibits, all rejections based on the Civanlar et al.
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`reference are deemed moot.
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`In addition, Applicant has the following remarks. One of the major factors
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`-7-
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1018 - Page 007
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1018 - Page 007
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`

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`O'.‘.
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`inhibiting dynamic communications over the lnternet, and other computer networks,
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`is
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`the inability to obtain the current dynamically assigned network protocal address of a ,
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`user process connected to the network. This problem is analogous to trying to call
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`someone whose telephone number changes after each call. Appiicant’s invention
`
`provides techniques for determining the current dynamically assigned network protocai
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`address of a user process connected to the network. The first technique utilizes a
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`dedicated server which acts as a network address/information directory from which
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`calling processes can obtain information. When a first process connects to the
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`network, the process logs-on to the server and provides the server with the network
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`protocal address under which the first process is currently operating. A second process
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`wishing to establish communications with the first process, connects to the server and
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`request the network protocal address under which the first process is currently
`
`operating. Upon receipt of the network protocal address of the first process, the
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`second process establishes communications with the first process directly, without any
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`intervenion from the address! information server.
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`The Examiner has repeatedly indicated that Civanlar et al. in view of Morgan et
`
`al.
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`teach an address server and database utilized to initiate communications between
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`two nodes. Conversly, in the present invention, communications between two nodes,
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`e.g. processes, are initiated by soley by one of the processes. The address server may
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`have optionally supplied address information to one of the processes, but the address
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`server does not establish the point-to—point communication connection between the
`
`nodes. Applicant has reviewed Civanlar et at. in view of Morgan et al. and has found
`
`no disclosure or suggestion of this first claimed technique whether the references are
`
`considered singularly or in combination.
`
`Applicant's invention provides a second techniques for determining the current
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`dynamically assigned network protocal address of a user process connected to the
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`network.
`In the second technique, a first process wishing to establish communications
`with a second process, sends, ,via E-mail,
`the network protocal address WM
`
`-3-
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1018 - Page 008
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1018 - Page 008
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`

`

`.
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`s
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`.
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`the first process is currently operating to the second process. Upon receipt of theE-
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`mail message,
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`the second process sends to the first process, via E-mail, the network
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`protocal address under which the second process is currently operating. Upon receipt
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`of the network protocal address of the second process, the first process establishes
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`communications with the second process directly, without any intervenion from the
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`address! information server. This second technique may be used in addition to or in
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`place of the first technique. As with the first technique, communications between two
`
`nodes, e.g. processes, are initiated by soley by one of the processes. The address
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`‘server does not establish the point-to-point communication connection between the
`
`nodes. Applicant has reviewed Civanlar et al. in view of Morgan et al. and further in
`
`view of December et al. and has found no disclosure or suggestion of this second
`
`claimed technique whether the references are considered singularly or in combination.
`
`Applicant respectfully traverses the rejection of claims 32-42 and 43-53 under 35
`
`U.S.C. §103 as being unpatentable over Clvanlar et al. in view of Morgan et al. and
`
`further in view of December et al. Claims 32-42 are directed to a method for
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`establishing a point-to-point communication link from a caller processor to a callee
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`processor over a computer network by associating graphic elements representing
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`communication line and a first callee processor. Claims 43-53 essentially comprise a
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`computer program product claim counterparts to claims 32—42. Applicant has reviewed
`
`the cited references in detail and can find no suggestion or disclosure of generating
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`graphic elements representing a communication line or a callee processor or
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`establishment of a point-to-point communication link by associating the graphic
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`element.
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`Applicant submits herewith new claims 54-68 to more particularly point out and
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`distinctly claim the subject matter which the Applicant regards as the invention. All
`
`claims are believed allowable over any of the references cited by the Applicant, whether
`
`considered singularly or in combination. Accordingly, Applicant believes this application
`
`is in condition for allowance and a notice to that effect is respectfully requested.
`
`if the
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`.9.
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1018 - Page 009
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1018 - Page 009
`
`

`

`.
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`.
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`.
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`Examiner has any questions regarding this amendment or the application in general he
`
`is invited to caii the Applicant’s attorney at the number listed below.
`
`The Commissioner is hereby authorized to charge any other fees under 37
`
`C.F.R. i§1.16 and 1.17 that may be required, or credit any overpayment, to our Deposit
`
`Account No. 20-0065.
`
`Respectfully submitted,
`
`'9.
`
`ruce D. Jobse
`
`Reg. No. 33,518
`KUDIRKA & JOBSE, P.C.
`One Beacon Street
`
`Boston. MA 02108
`
`(617) 367-4600
`
`-10-
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1018 - Page 010
`Petitioner Vonage Holdings Corp. et a1. - Exhibit 1018 - Page 010
`
`