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`7%
`Attorney Docket No. N0003/7002 fl
`N THE UNITED STATES PATENT AND TRADEMARK OFFICE
`/J/3W
`
`Shane D. Mattaway, et al.
`08/721,316
`September 25, 1996
`GRAPHIC USER INTERFACE FOR INTERNET TELEPHONY
`APPLICATION
`
`OI-Bé‘
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`‘6
`£25m:
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`7
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`fibApplica
`
`[j
`Filed:
`For:
`
`Examiner:
`Art Unit:
`
`George F. Wallace
`2751
`
`CERTIFICATE OF MAILING UNDER 37 C.F.R. §1.8(a)
`
`The undersigned hereby certifies that this document is being placed in the United States
`mail with first-class postage attached, addressed to Assistant Commissioner for Patents,
`Washington, DC 20231 on the 20m day of October 1 98
`
` Frances M‘. Cunningham
`
`Assistant Commissioner for Patents
`
`Washington, DC. 20231
`
`_
`
`AMENDMENT
`
`In response to the Office Action dated April 20, 1998, please amend the above-
`
`identified patent application, as follows:
`
`/ In the Specification
`
`/
`Page 2, line 8, change " XX/XXX,XXX” to -- 08/523,115 --;
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`line 1
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`, change " XX/XXX,XXX” to -- 60/024,251 --;
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`line 16,61ang5XX'IXXX,XXX" to -- 08/719,894 --;
`line 19% ge “ XXIXXX,XXX" to -- 081719554 --;
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`line 22, change “ XX/XXX,XXX” to -- 081719640 --;
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`Page 3, line 1 flange “ XX/XXX,XXX” to -- 08!?19,891 --;
`line 4, cha g‘e"“'XX/XXX,XXX" to -- 08/719,898 --.
`line 7, cha .ge"">/(}(/XXX,XXX” to —- 08/718,911
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`line 10, change “ xx1xxx,xxx" to -- 08/719,639
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`Page 8, line 5, change “a such” to --such—-;
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 001
`Petitioner Vonage Holdings Corp. et a1. - Exhibit 1021 - Page 001
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`
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`Q/e»
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`.7 e
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`Page 27, line25 change “Winsoc” to --Winsock--
`Page 28,yte/11, change “XX/XXX,XXX” to --08/719,554 --.
`Page 39/tme11, change'’XX/XXX,XXX” to -- 08/719,891 --
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`Page 46, line 23, change “XX/XXX,XXX” to -- 08/719,898 -—.
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`In the Claims
`
`1.
`(Amended) A computer program product for use with a co puter system having
`
`Vdisplay and an audiotransducer, the computer system caa e ofexecutino one or
`90‘?
` ore rocesses and [operatively coupled] connecting to ot r {computers} processes
`g and a server process over a computer network, the comuter program product
`
`comprising a computer usable medium having comp er readable code means
`
`embodied in the medium comprising:
`
`a.
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`program code means for generati
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`. a user-interface through which a user
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`Ca
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`lC'
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`I9
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`may control a first rocess exe
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`tin on coactwith] the computer system
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`and couled to the com-uter etwork'
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`o-roram code means for o --terminin the currentl assi-ned network
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`rotocol address of the rst orocess u non connection to the comuter
`
`
`network'
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`ro ram code mea s res onsive to the currentl assi ned network
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`protocol address;of the first process, for establishing a communication
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`connection with the server
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`recess and for forwardin the assi ned
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`network rotocol address of the first
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`rocess and a uni ue identifier of the
`
`first process to the server process upon establishing a communication
`connectio’r/i with the server process; and
`
`[b]; prografn code means, responsive to user input commands, for
`establishing a point-to-point communications [link] with another [computer]
`
`rocess over the computer network[; and],
`
`[0.
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`program code means, responsive to audio data from the audio transducer,
`
`f r transmitting the audio data over the communication link to the other
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 002
`Petitioner Vonage Holdings Corp. et a1. - Exhibit 1021 - Page 002
`
`
`
`._7~~Oo
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`to
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`computer]
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`
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`2.
`
`(Amended) The computer program product 0 claim 1 wherein the program code
`
`means for establishing a point-to-point communica on link further comprises:
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`[c.1] Q1 program code means, responsive o the network protocol address of a
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`second process [the second proc
`
`sor], for establishing a point-to-point
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`communication link between the irst [processor] process and the second
`
`[processor] process over the c mputer network.
`
`3.
`
`(Amended) The computer progra
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`product of claim 2 wherein the program code
`
`means for establishing a point—to-point c mmunication link further comprise:
`
`[02] fl program code means to transmitting, from the first [processor] process
`
`to the server process, a uery as to whether the second [processor]
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`process is connected t
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`the computernetwork; and
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`[0.3] $3; program code mea s for receiving a network protocol address of the
`
`[p %\
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`4.
`
`second [processor]
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`recess from the server process, when the second
`
`
`[processor]
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`roces
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`(Amended) The comp ter program product of claim 2 wherein the program code
`
`is connected to the computer network.
`
`means for establishing a po‘nt—to—point communication link further comprises:
`
`network protocol address from the first [processor] process to
`
`[0.2] fl program c de means for transmitting an E-mail [signai] message
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`containing
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`the serve process over the computer network;
`[c.31fi progra
`code means for receiving a second network protocol address
`
`second [processor] process over the computer network.
`
`
`Please cancel claims 5-6 without prejudice.
`
`Please add the following claims:
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 003
`Petitioner Vonage Holdings Corp. et a1. - Exhibit 1021 - Page 003
`
`
`
`
`
`A.
`
`determining the currently assigne network protocol address of the first
`
`process upon connection to the omputer network;
`
`B.
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`establishing a communication onnection with the server process once
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`the assigned network protoco of the first process is known;
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`C.
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`fonivarding the assigned ne
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`ork protocol address of the first process to
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`the server process upon e ablishing a communication connection with
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`the server process; and
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`D.
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`establishing a point-to—p nt communication with another process over the
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`computer network.
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`The method of claim 7 wher in the program step D comprises:
`
`111
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`transmitting, from t
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`first process to the server process, a query as to
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`whether a second recess is connected to the computer network; and
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`D2
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`receiving a networ protocol address of the second process from the
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`server process,
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`hen the second process is connected to the computer
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`network.
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`The method of clai
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`7 wherein the program step D comprises:
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`0.1
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`transmitting n E—mail message containing a network protocol address
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`from the fir process to the server process over the computer network;
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`D.2
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`receiving
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`second network protocol address from a second process over
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`the comp ter network.
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`A method for e tablishing a point-to-point communication from a caller process
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`to a callee process 0 er a computer network, the caller process having a user interface
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`and being operativel coupled to the callee process and a server process over the
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 004
`Petitioner Von‘age Holdings Corp. et a1. - Exhibit 1021 - Page 004
`
`
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`computer network, the method comprising the steps of:
`
`
`generating an element representing a first com unication line;
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`generating an element representing a first call e process;
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`establishing a point-to-point communication l' k from the caller process to
`the first callee process, in response to a us r associating the element
`
`e element representing the first
`
`communication line.
`
`The method of claim 10 wherein step C furt
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`process; and
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`representing the first callee process with
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`
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`r comprises the steps of:
`querying the server process as to th on-line status of the first callee
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`receiving a network protocol addr $3 of the first callee process over the
`
`A.’
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`B.
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`C.
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`C1
`
`0.2
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`11.
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`12.
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`13.
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`computer network from the serv r process.
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`The method of claim 10 further corn rising the step of:
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`D.
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`generating an element repr senting a second communication line.
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`The method of claim 10 further omprising the step of:
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`E.
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`F.
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`terminating the point-to point communication from the caller process to
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`the first callee proces , in response to the user disassociating the element
`representing the first callee process from the element representing the
`
`first communicatio line; and
`establishing a diff rent point-to-point communication from the caller
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`process to the fir t callee process, in response to the user associating the
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`element repres nting the first callee processor with the element
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`representing t e second communication line.
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`The method of cla'
`
`
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`14.
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`10 further comprising the steps of:
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`D.
`
`E.
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`generating an element representing a second callee process; and
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`establishi g a conference point-to—point communication between the caller
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 005
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 005
`
`
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`process and the first and second callee proc sses, in response to the
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`user associating the element representing
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`e second callee process with
`
`
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`the element representing the first commu cation line.
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`15.
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`The method of claim 10 further comprising the tap of:
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`F.
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`removing the second callee process fr m the conference point-to-point
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`communication in response to the use; disassociating the element
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`representing the second callee proc $3 from the element representing the
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`first communication line.
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`
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`The method of claim 10 further compri mg the steps of:
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`generating an element repres
`d
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`temporarily disabling the po'nt-to-point communication between the caller
`process and the first calle process, in response to the user associating
`the element representin the first callee process with the element
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`D.
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`E.
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`temporarily disabled status;
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`ting a communication line having a
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`16.
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`3
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`7’
`%
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`a?
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`representing the comm nication line having a temporarily disabled status.
`
`
`rein the element generated in step D represents a
`communication line on hold stat s.
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`The method of claim 1 wherein the element generated in step D represents a
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`17.
`
`The method of claim 16 w
`
`18.
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`communication line on mut status.
`
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`m 10 wherein the caller process further comprises a visual
`display and the ser interface comprises a graphic user interface.
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`The method of cl
`
`19.
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`
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`20.
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`The method 0 claim 19 wherein the user interface is a graphic user interface
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`and the elements 9 nerated in steps A and B are graphic elements.
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 006
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 006
`
`
`
`REMARKS
`
`Applicants have carefully considered the Office Action dated April 20, 1998 and
`
`the references cited therein, In response, the specification and claims have been
`amended. New claims 7-20 have been added to more particularly point out and
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`distinctly claim the subject matter which Applicants regard as their invention. Applicants
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`respectfully request reexamination and reconsideration.
`
`Applicants have amended the specification to supply the serial numbers of all
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`patent applications referenced in the specification.
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`In addition, minor grammatical
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`errors have been corrected to over come the Examiner’s objections to the specification.
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`Claims 1-4 have been objected to as being indefinite for failing to particularly
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`point out and distinctly claim the subject matter which Applicants regard as the
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`invention.
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`In response, claims 1-4 has been amended, where appropriate, in a manner
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`which is believed to overcome the objections of the Examiner.
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`Claims 1-3 and 5-6 have been rejected under 35 USC §102(a) as being
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`anticipated by Vocal Tec Internet Phone Version 2.5 (hereafter “IPHONE"). Priorto
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`discussing the specific amendments to the claims, Applicants would like to briefly
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`discuss the subject invention in light of the rejections.
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`As stated in the Background of the Invention section of the subject specification,
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`the locating users over a computer network has been difficult without knowing the
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`temporary or dynamically assigned Internet Protocol address of the user. The subject
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`application discloses a client and server system and a protocol in which client
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`processes, upon connection to an Internet Protocol based network, forward their
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`current dynamically assigned Internet Protocol address to a global server which acts as
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`a repository of directory information for all other client processes.
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`in addition, the global
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`server associates with the Internet Protocol address of a particular client process, a
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`unique handle, e.g. the client's e-mail address. With this technique, the on-line status
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`of prospective callees may be determined even though the callee is not currently
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`connected to the network. More specifically, each client process, upon receiving an
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`Internet Protocol address after connection to an lP-based network, automatically and
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`transparently notifies the global server that it is currently on line, its E-mail address and
`
`7
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 007
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 007
`
`
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`the network protocol address at which the client process may be contacted. Thereafter,
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`the global server monitors the status of the client process and is capable of providing
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`directory information including the Internet Protocol address of the client process to
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`other clients processes who wish to communicate therewith.
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`In order for a WebPhone
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`caller to initiate a point-to-point communication connection with a callee having an
`unknown Internet Protocol address, the WebPhone caller merely selects either an entry
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`representing the prospective callee from the caller’s personal directory or submits a
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`query to the global server process, the query including information identifying the
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`prospective callee. The global server utilizes the handle, e.g. the E-mail address, or
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`other identifier contained in the query, and determines whether the callee is currently
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`connected to the network.
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`If so, the current dynamically assigned Internet Protocol
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`address of the callee is then returned to the caller’s WebPhone and a point-to-point
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`communication is initiated. The whole process occurs transparently to the WebPhone
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`caller user.
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`Conversely, the Vocal Tec lPhone literature cited by the Examiner, as well as the
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`NetScape Cool Talk product utilize servers executing the Internet Relay Chat (IRC)
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`protocol, such protocol provides an impractical solution to the problem of locating a
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`user’s dynamically assigned Internet Protocol address. Specifically, the IRC protocol is
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`defined in the Internet Engineer Task Force (IETF) Standard RFC 1459 available at
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`<http://info.internet.isi.edu/in-notes/rfc/files/rfc1459.txt>. Briefly, a typical server
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`adhering to the IRC protocol supports approximately 24 users who are “joined” on an
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`individual “channel”. To initiate communications with a callee, a caller has to manually
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`search oneor more IRC servers for the desired callee. Specifically, to locate a
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`particular callee, a caller needs to know (1) the server which that callee is connected to
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`and (2) the “channel” or “topic” that callee has “joined". Practically, in order to find a
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`particular individual a prospective callee, the caller would need to know which of many
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`IRC servers around the world the callee frequented in an attempt to connect to the
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`proper IRC server.
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`If the IRC server already had 24 users connected, any attempt to
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`contact that particular IRC server would be rejected until one or more users drop off the
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`server.
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`If connection to the IRC server is established, the caller would need to browse
`
`8
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 008
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 008
`
`
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`through any "channels” in which the prospective callee may be located.
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`According to the IRC protocol. there is no field or identifier which “uniquely"
`
`identifies an IRC sewer user. Each user connects to an IRC server using a “nickname"
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`which can be any character string up to nine characters in length. Note that duplicate
`
`nicknames are possible. Accordingly, such nicknames are not unique. The lPhone
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`Version 2.5 provides no functionality beyond that of a conventional IRC client. A user is
`
`presented with a list of "joined” IRC users from which a selection can be made. Once a
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`nickname is selected from the IRC server, information about the user, including an
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`Internet Protocol address are provided to the selecting party.
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`In contrast, the present invention provides a global sewer that can be queried to
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`locate any user anywhere using a known unique identifier or handle, eg. the user's e-
`mail address. A perspective caller does not have to go through the time-consuming
`
`and annoying task of hunting for the correct IRC server and sifting through all joined
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`Users and topics in search of the person to whom he or she wishes to communicate.
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`As disclosed in the specification, a Webphone user merely selects information
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`identifying the user from either a personal directory or the results of a query from the
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`global server to establish a point-to-point communication connection with the desired
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`callee.
`
`Claim 1 has been amended to now recite the above-identified aspects of
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`Applicants' invention. Specifically, claim 1 now recites a computer program product
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`containing program code for “determining the currently assigned network protocol
`
`address of the first process upon connection to the computer network" '(claim 1, lines
`
`10—12). Claim 1 further recites program code for “establishing a communication
`connection with the server process and for fonNarding the assigned network protocol
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`address of the first process and a unique identifier of the first process to the server
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`process upon establishing a communication with the server” (claim 1, lines 10-17). All
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`client processes whether callers or callees “register” with the server in such a manner.
`
`Claim 1, as amended, is neither anticipated nor made obvious in light of the lPhone by
`Vocal Tec. Specifically, the lPhone does not disclose ore suggest program code
`
`means for fon/varding to a server process the network protocol address and other
`
`9
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 009
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 009
`
`
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`information identifying a process once the process is coupled to the network, as now
`
`recited in claim 1. Claims 2-4 include all the limitations of claim 1 and are likewise
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`believed to be patentable over the lPhone literature for the same reasons as claim 1.
`
`The Examiner will note that the limitations recited in claim 4 are further
`
`refinements of limitation D of claim 1, as amended. Specifically, the subject
`
`specification discloses two techniques for establishing a point-to-point communication
`
`with another process. A first technique, as described in the specification (pp. 12-14)
`
`utilizes a query to the directory server. A second technique contemplates the caller
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`process sending its network protocol address to the prospective callee process directly
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`in an e-mail message, as described in the specification (pp.15-18).
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`Claims 5-6 have been cancelled, without prejudice.
`
`To more particularly point out and distinctly claim the subject matter which
`
`Applicants regard as the invention, new claims 7-20 have been added to the
`
`specification. Claims 7-9 include limitation similar to claims 1—4 and are believed
`
`patentable for the same reasons. The subject matter of claims 10-20 are directed to a
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`user interface in which establishment of calls, conferencing of parties, transferring of
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`parties among calls and disabling of calls are achieved using elements representing
`
`communication lines and parties. Support for these claims can be found in the
`
`specification, (pp. 49-58). Applicants respectfully assert that none of the art of record,
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`whether considered singularly or in combination, disclose or suggest the subject matter
`
`as recited in claims 10-20.
`
`In light of the foregoing amendments and remarks, the claims are believed
`
`allowable over any of the references of record, whether considered singularly or in
`
`combination. Accordingly, Applicants believe this application is in condition for
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`allowance and a notice to that effect is respectfully requested.
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`If the Examiner has any
`
`questions regarding this amendment or the application in general he is invited to call
`
`the Applicants’ attorney at the number listed below.
`
`10
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 010
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 010
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`
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`The Commissioner is hereby authorized to charge any fees or credits under 37
`
`C.F.R. §1.16 and 1.17 to our deposit account No. 02-3038.
`
`Respectfully submitted,
`
`fibse,aeg. No. 33,518
`
`KUDIRKA & JOBSE, LLP
`Two Center Plaza
`
`Boston, MA 02108
`
`(617) 367-4600
`
`11
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 011
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1021 - Page 011
`
`