N"
`a? “£003“
`
`UNITED STATES
`
`no
`
`i
`RTMENT OF COMMERCE
`
`#
`Patent and Trademark Office
`f Address:
`COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington. 0.6. 20231
`
`
`
`2,
`
`”hm '1’
`
`IIIEh’7'21 , :316
`
`[19/25/96-
`
`MfiTTAMAY
`
`Ei
`
`‘JIZIBSE
`BRUCE 12-
`EiIIIIIIi=ZZSTE 1‘ N 3-4 HUD I Rim
`
`BUSTDN MA 02 10:3
`
`|
`
`WALLACE , E"
`
`2751
`
`5
`
`DATE MAILED:
`
`Elli! '2 III / “ENE!
`
`Please find below and/or attached an Office communication concerning this application or
`proceeding.
`
`Commissioner of Patents and Trademarks
`
`PTO-90C (Rev. 2/95)
`'U.S. GPO: 1998437638I80022
`
`1- File Copy
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 001
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 001
`
`

`

`Office ACtion summary
`
`Application No.
`03/721,316
`Examiner
`
`Applicant(s)
`
`Mattaway et al.
`Group Art Unit
`
`ll”UNIiill}iiilliliillilliiliii
`
`K] Responsive to communication(s)filed on Se t25 1996 Dec 22 1996 and Mar 30 1998
`
`El This action is FINAL.
`
`prosecution as to the merits is closed
`[I Since this application is in condition for allowance except for formal matters.
`in accordance with the practice under Ex parte Quawe35 CD. 11; 453 O.G. 213.
`
`3 month(s), or thirty days, whichever is
`A shortened statutory period for response to this 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. '(35 U.S.C. § 133). Extensions of time may be obtained under the provisions of
`37 CFR 1.136(3).
`
`Disposition of Claim
`
`@ Claim(s) 1-6
`
`is/are pending in the applicat
`
`Of the above, claim(s)
`
`'
`
`is/are withdrawn from consideration
`
`El Claim(s)
`
`m Claim(s) 1-6
`
`(3 Claim(s)
`
`El Claims
`
`Application Papers
`
`is/are allowed.
`
`is/are rejected.
`
`is/are objected to.
`
`are subject to restriction or election requirement.
`
`
`
`Kl See the attached Notice of Draftsperson's Patent Drawing Review, PTO-948.
`
`E) The drawing(s) filed on
`
`is/are objected to by the Examiner.
`
`El The proposed drawing correction, filed on
`
`
`is :l approved
`
`[disapproved
`
`Kl The specification is objected to by the Examiner.
`
`l] The oath or declaration is objected to by the Examiner.
`
`Priority under 35 U.S.C. § 119
`El Acknowledgement is made of a claim forforeign priority under 35 U.S.C. § 119(a)-(d).
`
`Cl All ESome"
`
`[Blane
`
`of the CERTIFIED copies of the priority documents have been
`
`Cl received.
`
`El received in Application No. (Series Code/Serial Number)
`
`El received in this national stage application from the International Bureau (PCT Rule 17.2(a)).
`
`*Certified copies not received:
`
`(:3 Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(
`
`).
`
`Attachment(s)
`m Notice of References Cited, PTO-892
`
`Kl Information Disclosure Statement(s), PTO-1449, Paper No(s).
`El Interview Summary, PTO-413
`
`(Kl Notice of Draftsperson's Patent Drawing Review, PTO-948
`1:] Notice of Informal Patent Application, PTO-152
`
`U. S. Patent and Trademark Office
`
`PTO-326 (Rev. 9—95)
`
`Office Action Summary
`
`Part of Paper No.
`
`5
`
`— SEE OFFICE ACTION ON THE FOLLOWING PAGES —
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 002
`Petitioner Vonage Holdings Corp. et a1. - Exhibit 1023 - Page 002
`
`

`

`.. 3-.
`
`.
`
`.
`
`Serial Number: 08/721316
`
`Art Unit: 2751
`
`Page 2
`
`Part III.
`
`DETAILED ACTION
`
`Drawings
`
`1.
`
`This application has been filed with informal drawings which are acceptable for
`
`examination purposes only. Formal drawings will be required if and when the application is
`
`allowed.
`
`Specification Objections
`
`2.
`
`The disclosure is objected to because of the following informalities: on pages 2-3 and
`
`elsewhere within the specification, references made to patent applications must be updated to
`
`reflect their respective Serial and Patent Numbers, insofar as possible; on page 5 line 8, “a such a”
`
`appears to have been intended as “such a;” and on page 27 line 25, “Winsoc 1.1" appears to have
`
`been intended as “Winsock 1.1.”
`
`The above objections are merely illustrative and do not represent all errors contained in
`
`the specification. Applicants are required to proof read the specification and make all necessary
`
`corrections.
`
`Claim Objections
`
`3.
`
`Claims 1-4 are objected to because of the following informalities: Claim 1 appears to read
`
`more clearly and consistently if on line 8, applicants inserted —-,-- after “means” and “commands.”
`
`In Claims 2 and 3, “first processor” and “second processor” have no antecedent basis. They
`
`would read more clearly if in Claim 1 “processors” were associated with the computer systems
`
`claimed. In Claims 1, 3 and 4 “server” is unclear in light of reference to both a “global server”
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 003
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 003
`
`

`

`Serial Number: 08/721316
`
`Art Unit: 2751
`
`Page 3
`
`and a “connection server” on page 35 of the Specification. In Claim 4, “email signal” appears to
`
`read more clearly as “email address.” In Claim 5, “processing” would read more clearly if
`
`applicants specified the functions intended.
`
`The claims have been examined insofar as clarity and reasonable certainty permits.
`
`Appropriate correction is required.
`
`Claim Rejections - 35 USC § 102
`
`4.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless --
`
`(a) the invention was known or used by others in this country, or patented or described in a printed publication in
`this or a foreign country, before the invention thereof by the applicant for a patent.
`
`5.
`
`Claims 1-3 and 5-6 are rejected under 35 U.S.C. 102(a) as being anticipated by VocalTec
`
`Internet PhoneTM Version 2.5 (hereinafter “IPHONE”).
`
`IPHONE is Internet telephony software with a graphic user interface that allows real-time
`
`Internet voice communication between two computers--having one or more speakers and at least
`
`one microphone--via a direct computer-to—computer link using TCP/IP or SLIP/PPP. IPHONE
`
`utilizes IRCS (Internet Relay Servers) as Internet Phone Directories to remedy the difficulty
`
`arising from identifying another’s dynamically assigned IP address, which changes each time a
`
`user logs into his or her Internet Service Provider.
`
`As to Claim 1, IPHONE is a computer program product for use with a computer system
`
`having a display and an audio transducer-~it is software inherently for use with the computer
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 004
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 004
`
`

`

`Serial Number: 08/721316
`
`Art Unit: 2751
`
`‘
`
`'
`
`Page 4
`
`systems of two users, with each system having a display, and at least one speaker and
`
`microphone.
`
`Moreover, each system is operatively coupled to other computers and a server over a
`
`computer network. Inherently the systems of each user is connected to the Internet, through
`
`which they each are coupled to a plurality of computers and an IRC (Internet Relay Server)
`
`SCI'V61‘.
`
`IPHONE, a computer program product, inherently provides a computer usable medium
`
`(one or more floppy disks, a CD-ROM, etc...) having computer readable code means (executable
`
`code) embodied in the medium.
`
`Furthermore, IPHONE, a computer program product, provides means, responsive to user
`
`input commands, for establishing a point-to-point communications link with another computer
`
`over the computer network. Inherently, IPHONE contains executable code, which when
`
`executed, receives a user input (the clicking of the left button of a mouse whose pointer is above a
`
`“Quick Dial Button,” see Internet Phone Help Index, Using Internet Phone (link), Setting a Quick
`
`Dial Button (link)) and establishes a direct (see Readme.txt file, which is bundled with
`
`iphone25.exe, § About The Internet Phone and IRC, “The actual talk is done directly between the
`
`PCs running the Internet Phone, and NOT via the IRC”) point-to-point communications link
`
`with another computer over the Internet. And as noted supra, IPHONE utilizes IRCs as Internet
`
`Phone Directories to remedy the difficulty arising from identifying another’s dynamically assigned
`
`IP address, which changes each time a user logs in to his or her Internet Service Provider.
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 005
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 005
`
`

`

`Serial Number: 08/721316
`
`Art Unit: 2751
`
`Page 5 _
`
`Furthermore, IPHONE, a computer program product, provides means, responsive to
`
`audio datafrom the audio transducer, for transmitting the audio data over the communications
`
`link to the other computer. Inherently, when one of the two users with an established point-to-
`
`point communications link speaks into his or her microphone, the analog audio signal is converted
`
`by software or hardware means to a digital signal and then sent through the Internet to the
`
`computer of the other user.
`
`Lastly, IPHONE provides means for generating a user-interface through which a user
`
`may coact with the computer system. IPHONE, as a computer program product, inherently
`
`contains executable code. This code, when executed, generates a plurality of windows with menu
`
`bars and icons through which a user fully interacts with the software to fully effectuate Internet
`
`telephony through his or her computer system. The user, as noted supra, may click the left button
`
`of a mouse whose pointer is above a “Quick Dial Button,” which initiates and establishes a point-
`
`to—point communications link with another computer (inherently, via its IP address) over the
`
`Internet.
`
`As to Claim 2, which depends on Claim 1, IPHONE, a computer program product,
`
`provides, in conjunction with its means for establishing a point-to-point communication link,
`
`program code means, responsive to the networkprotocol address ofa secondprocessor, for
`
`establishing a point-to-point communication link between afirst processor and a second
`
`processor over the computer network.
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 006
`Petitioner Vonage Holdings Corp. et a1. - Exhibit 1023 - Page 006
`
`

`

`Serial Number: 08/721316
`
`Art Unit: 2751
`
`Page 6
`
`Inherently, IPHONE, a computer program product, provides program code, which in
`
`conjunction with its means for establishing a point-to-point communication link, when executed,
`
`initiates and establishes, in response to a user clicking the left button of a mouse, whose pointer is
`
`above a “Quick Dial Button” (see cite supra) a point-to-point communication link with another’s
`
`computer, which is either a TCP/IP or SLIP/PPP communication link via the other’s IP address
`
`over the Internet (see Internet Phone Help Index, Quick Tour (link), 4th page thereof).
`
`As to Claim 3, which depends on Claim 2, IPHONE, a computer program product,
`
`provides, in conjunction with its means for establishing a point-to-point communication link,
`
`program code means for transmitting, from a first processor to a server, a query as to whether a
`
`second processor is connected to the computer network; and program code means for receiving a
`
`network protocol address ofthe second processor from the server, when the second processor is
`
`connected to the computer network.
`
`IPHONE, a computer program product, provides program code, which in conjunction
`
`with its means for establishing a point-to-point communication link, when executed, inherently
`
`transmits, from a first processor to an IRC server, a query as to whether another user, whose
`
`identity (name and email address) is contained in a Quick Dial Button, is connected to the IRC
`
`network; and program code, which receives another’s IP address from an IRC server, when the
`
`other is connected to the IRC network.
`
`As to Claim 5, which depends on Claim 1, IPHONE, a program product, inherently
`
`provides program code means for processing audio data. The analog audio data captured by a
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 007
`Petitioner Vonage Holdings Corp. et a1. - Exhibit 1023 - Page 007
`
`

`

`Serial Number: 08/721316
`
`Art Unit: 2751
`
`Page 7
`
`microphone is inherently converted to digital format before transmission across the Internet to
`
`another user, where it is converted back to analog before directed to one or more speakers.
`
`As to Claim 6, which depends on Claim 5, IPHONE teaches the use of VOCALTEC’s VC
`
`Card, a voice compression card, by its users to increase the efficiency and quality of
`
`communication (see Internet Phone Help Index, Using Internet Phone (link), What is Internet
`
`Elm (link), last paragraph).
`
`Claim Rejections - 35 USC § 102/1 03
`
`6.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness
`
`rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`7.
`
`Claim 4 is rejected under 35 U.S.C. 102(b) as anticipated by IPHONE or, in the
`
`alternative, under 35 U.S.C. 103(a) as obvious over IPHONE.
`
`8.
`
`As to Claim 4, which depends on Claim 2, IPHONE provides, in conjunction with its
`
`means for establishing a point-to-point communication link, program code means for receiving a
`
`second network protocol address from a second processor over the computer network,
`
`inherently; and appears to provide program code means for transmitting an E—mail signal
`
`containing a network protocol address from a first processor to a server over a computer
`
`network.
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 008
`Petitioner Vonage Holdings Corp. et a1. - Exhibit 1023 - Page 008
`
`

`

`Serial Number: 08/721316
`
`Art Unit: 2751
`
`Page 8
`
`IPHONE, when executed, inherently provides program code means for receiving the IP
`
`address from a second processor over the computer network, since a direct Internet connection
`
`between the second and first processors is ultimately achieved. However as to the 102/103 issue,
`
`it appears likely that IPHONE, when executed, provides program code for transmitting an E-mail
`
`signal (E—mail address) containing a network protocol address (IP address) from a first processor
`
`(a first user’s computer) to a server (an IRC server) over the computer network (the Internet).
`
`Clearly, IPHONE allows a first user to query an IRC server to discover whether a particular user
`
`is “on-line.” A user of IPHONE supplies the program with “user information” including his or her
`
`email address, name and other information. When the user “logs on” to an IRC server, inherently
`
`the user’s IP address and some type of identifying information is sent to the server, since another
`
`user is able to locate the former user via a query containing some identifying information. An
`
`email address is sufficiently unique to be efficient search criteria for locating a specific record
`
`(user) against a list of records (users) for identification of whether a particular user is on-line, i.e.)
`
`available to receive a “call.” It is highly likely that a user’s E-mail address is used by IPHONE as
`
`search criteria.
`
`Insofar as IPHONE does not use an E-mail address as search criteria, it would have been
`
`obvious to one ordinarily skilled in the art at the time the invention was made to have used an E-
`
`mail address as unique search criteria for determining whether a user associated with the E-mail
`
`address was “on-line.” It would have been highly desirable to locate a specific user rather than a
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 009
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 009
`
`

`

`O
`
`Q.
`
`Serial Number: 08/721316
`
`Art Unit: 2751
`
`Page 9
`
`plurality of users, arising from use of common search criteria, so that a correct communication
`
`link could be established in a minimal amount of time.
`
`Conclusion
`
`9.
`
`The following prior art made of record and not relied upon is considered pertinent to
`
`applicants’ disclosure:
`
`a.
`
`b.
`
`c.
`
`Netscape Conference and Cooltalk Meeting Room, www.q5.com. Examiner considers this website,
`which works in conjunction with the Internet telephony sofiware product Netscape®CooltalkTM, as a
`potential 102(a)/102(b) bar to applicants’ claims and as a highly probative 103(a) reference.
`
`G_ull, Re: Getting IP address ofPPP-connected Mac, <jgill-O3049S1005350001@pm012-
`11.dialip.mich.net>.
`Examiner considers this 103(a) reference as strong motivation to combine with prior art-Intemet
`telephony software, such as Netscape®CooltalkTM, both a central Internet database for the storage
`and dissemination of dynamically assigned IP addresses of Internet telephony sofiware users
`wishing to disseminate their IP addresses to others connected to the Internet, as well as program code
`to operatively interact with said database.
`
`Gill, Re: Internet Phone for Mac?, <jgull-l 7049501 l6450001@pm049-28.dialip.mich.net>.
`Examiner considers this 103(a) reference as strong motivation to combine with prior art Internet
`telephony software both sofiware and/0r hardware-based compression means, as well as a central
`Internet database for the storage and dissemination of the dynamically assigned IP addresses of
`Internet telephony software users wishing to disseminate their IP addresses to others connected to
`the Internet, and program code to operatively interact with said database.
`
`10.
`
`Please address inquiries concerning this and earlier communications from the examiner to
`
`George F. Wallace, whose telephone number is 703/305-2277. Examiner can be reached M-F
`
`from 9:00 am. to 5:00 pm. EST.
`
`If attempts to reach the examiner by phone fail, Eddie P. Chan, examiner's supervisor,
`
`can be reached at 703/305-9712.
`
`The fax number for Art Unit 2751 is 703/308-6606.
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 010
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 010
`
`

`

`Serial Number: 08/721316
`
`Art Unit: 2751
`
`Page 10
`
`Any inquiry of a general nature or relating to the status of this application should be
`
`directed to the Group receptionist at 703/305-3900.
`
` eorge
`. Wallace, J.D.’
`March 26, 1998
`
`
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 011
`Petitioner Vonage Holdings Corp. et a1. - Exhibit 1023 - Page 011
`
`