REQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`1.
`
`[X]
`
`This is a request for ex parte reexamination pursuant to 37 CFR 1.510 of patent number
`6 108 704
`issued August 22. 2000 . The request is made by:
`
`patent owner
`
`[ X] third party requester.
`
`2.
`
`[X]
`
`The name and address of the person requesting reexamination is:
`EDWIN H. TAYLOR
`BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
`1279 OAKMEAD PARKWAY
`SUNNYVALE CALIFORNIA 94085
`
`3.
`
`[
`
`] a. A check in the amount of $2,520 is enclosed to cover the reexamination fee, 37 CFR 1.20(c)(i);
`
`[X] b. The Commissioner is hereby authorized to charge the fee as set forth in 37 CFR 1.20(c)(i)
`; or
`to Deposit Account No. 02-2666
`
`[
`
`] c. Payment by credit card. Form PT0-2038 is attached.
`
`4.
`
`Any refund should be made by
`[
`]
`check or
`[X] credit to Deposit Account No. 02-2666
`37 CFR 1.26. If payment is made by credit card, refund must be to credit card account.
`
`5.
`
`[X]
`
`A copy of the patent to be reexamined having a double column format on one side of a separate paper
`is enclosed. 37 CFR 1.51 O(b)(4).
`EXHIBIT A
`
`6.
`
`7.
`
`CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`
`Nucleotide and/or Amino Acid Sequence Submission
`If applicable, all of the following are necessary
`
`a.
`
`b.
`
`[ 1 Computer Readable Form (CRF)
`
`1 Specification Sequence Listing on:
`
`1 CD-ROM (2 copies) or CD-R (2 copies); or
`
`[ 1 paper
`
`c.
`
`[ 1 Statements verifying identify of above copies
`
`8.
`
`A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is
`included.
`
`9.
`
`[X] Reexamination of claims(s)
`
`1-7 and 10-44
`
`is requested.
`
`10.
`
`[ X]
`
`A copy of every patent or printed publication relied upon is submitted herewith including a listing
`thereof on Form PT0-1449 or PTO/SB/08.
`
`(Page 1 of 2)
`Based on Form PTO/SB/57 (02-01) as modified by BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN LLP on 05/09/03
`
`Samsung - Exhibit 1022 - Page 1
`
`

`
`11.
`
`[
`
`An English language translation of all necessary and pertinent non-English language patents and/or
`printed publications is included.
`
`12.
`
`[ X]
`
`The attached detailed request includes at least the following items:.
`
`a. [X] A statement identifying each substantial new question of patentability based on prior patents
`and printed publications 37 CFR 1.51 O(b)(1)
`
`b. [X] An identification of every claim for which examination is requested, and a detailed
`explanation of the pertinency and manner of applying the cited art to every claim for which
`reexamination is requested. 37 CFR 1.51 (b)(2)
`
`13.
`
`A proposed amendment is included (only where the patent owner is the requester). 37 CFR 1.51 O(e)
`
`14.
`
`[ X]
`
`a. It is certified that a copy of this request (if filed by other than the patent owner) has been served in
`its entirety on the patent owner as provided in 37 CFR 1.33(c).
`The name and address of the party served and the date of service are:
`JEFFREYS. GINSBERG ESQ.
`KENYON & KENYON
`ONE BROADWAY
`NEW YORK NY 10004
`
`Date of Service: ___ .:....F-=-e=-b:...:ru=-=a,_ry,__,_1.:....7,_,, 2=-'0""'0""'9'----_____ ; or
`
`b. A duplicate copy is enclosed since service on patent owner was not possible.
`
`15.
`
`[ x] Correspondence Address: Direct all communication about the reexamination to:
`
`[ x] Customer Number: ----==--....:::8:-.c7-"'9_,_1_-:-:---:---:--
`Type Customer Number here
`
`OR
`] Firm or Individual Name:
`
`Edwin H. Taylor
`
`Address (line 1)
`
`1279 Oakmead Parkway
`
`Address (line 2)
`
`Place Customer Number Bar Code Label here
`
`City Sunnyvale
`
`State California
`
`Zip
`
`94085-4040 Country _U=S'-'A'------
`
`Telephone
`
`(408) 720-8300
`
`Fax _..~.:(4'""0-"'8L-) 7'-'2""0'--'-8""3"""8-"'3 ___ _
`
`16.
`
`[X]
`
`The patent is currently the subject of the following concurrent proceeding(s):
`
`[
`
`a. Copending reissue Application No.
`
`b. Copending reexamination Control No. _________________ _
`
`c. Copending Interference No.
`
`[X] d. Copending litigation styled:
`
`Net2Phone, Inc. v. eBay, Inc., Skype Technologies SA, and Skype, Inc., Case No. 06-2469,
`United States District Court for the District of New Jersey.
`
`WARNING: Information on this form may become public. Credit Card information should not be
`included on this form. Provide credit card information and authorization on PT0-2038.
`
`/ET/
`
`Authorized Signature
`
`/02-17-2009/
`Date
`
`[
`
`] For Patent Owner Requester
`
`[X] For Third Party Requester
`
`Page 2 of 2
`Based on Form PTO/SB/57 (02·01) as modified by BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN LLP on 05/09/03
`
`Samsung - Exhibit 1022 - Page 2
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Request for Ex Parte Reexamination
`
`U.S. Patent No. 6,108,704
`
`Issued: August 22, 2000
`
`For: Point-to-Point Internet Protocol
`
`Requester: Skype, Inc.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`REQUEST FOR EX PARTE
`REEXAMINATION
`
`Attorney Docket No.: 03801.G 184
`
`Customer No.: 08791
`
`REQUEST FOR EX PARTE REEXAMINATION UNDER 35 U.S.C. § 302
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`Pursuant to the provisions of 35 U.S.C. §§ 302-307, the undersigned hereby requests an
`
`ex parte reexamination of claims 1-7 and 10-44 of United States Patent No. 6,108,704 ("the '704
`
`patent," Exhibit A) which issued on August 22, 2000 to Glenn W. Hutton et al. resulting from a
`
`patent application filed on September 25, 1995. The Requester hereby asserts that claims 1-7
`
`and 10-44 of the '704 patent are unpatentable over prior art references not before the Patent and
`
`Trademark Office (PTO) during prosecution of the '704 patent.
`
`Samsung - Exhibit 1022 - Page 3
`
`

`
`TABLE OF CONTENTS
`
`PENDING LITIGATION........................................................................... 5
`I.
`LISTING OF PRIOR ART PATENTS AND PRINTED PUBLICATIONS ............. 5
`II.
`III. OVERVIEW OF THE '704 PATENT ............................................................. 7
`
`A.
`
`B.
`
`Subject Matter of the '704 Patent........................................................... 7
`
`Prosecution History of the '704 Patent.. ................................................... 10
`
`IV.
`
`SUBSTANTIAL NEW QUESTION (SNQ) OF PATENTABILITY AS
`REQUIRED BY 37 C.F.R 1.510 (b)(l) ........................................................... 12
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`K.
`
`L.
`
`M.
`
`N.
`
`SNQs Raised by NetBIOS (Claims 1-7 and 32-44).. .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. 12
`
`SNQs Raised by NetBIOS in view of RFC 1531 (Claims 1-7 and 32-44).. .. . ... . ... 13
`
`SNQs Raised by NetBIOS in view of Pinard (Claims 10-17, 19-28, and 30-31).. .. 14
`
`SNQs Raised by NetBIOS in view of Pinard and further in view of YocalChat
`User's Guide (Claims 18 and 29) ............................................................ 15
`
`SNQs Raised by Etherphone (Claims 1-2, 4-7, 10-12, 14, 19-23, 25, 30-44).. .. . ... 15
`
`SNQ Raised by Etherphone in view ofNetBIOS (Claim 3) ............................ 17
`
`SNQ Raised by Etherphone in view of Yin (Claim 32)............................... ... 17
`
`SNQs Raised by Etherphone in view of Yin and further in view of RFC 1531
`(Claim 33) .. .................................................................................... 18
`
`SNQs Raised by Etherphone in view of Pinard (Claims 10-17, 19-28, 30-31) .. ..... 19
`
`SNQ Raised by Etherphone in view of Pinard and further in view of YocalChat
`User's Guide (Claims 18 and 29) ........................................................... 19
`
`SNQs Raised by YocalChat User's Guide in view of YocalChat Readme, and
`further in view of YocalChat Networking, and further in view of YocalChat Help
`File, and further in view of YocalChat Troubleshooting Help File (collectively
`"YocalChat" or "YocalChat references") (Claims 1-2, 4, 7, 10-11, 19-22, 30-42) .. 20
`
`SNQs Raised by YocalChat References in view of RFC 1531(Claims 1-2, 4, 7,
`10-11, 19-22, 30-42) ..... ..................................................................... 21
`
`SNQ Raised by YocalChat References in view of NetBIOS (Claim 3) .................... 23
`
`SNQs Raised by YocalChat References in view of Pinard (Claims 12-18 and 23-
`29) ........................................................................................................................... 23
`
`V.
`
`OVERVIEW OF THE PRIOR ART REFERENCES PRESENTING A SNQ OF
`PATENTABILITY
`
`A.
`
`B.
`
`C.
`
`NetBIOS ....................................................................................... 24
`
`Etherphone ..................................................................................... 26
`
`Combined YocalChat References ........................................................... 29
`
`2 of 172
`
`Samsung - Exhibit 1022 - Page 4
`
`

`
`D.
`
`E.
`
`RFC 1531 ....................................................................................... 33
`
`Yin .............................................................................................. 33
`
`VI.
`
`F.
`Pinard ........................................................................................... 33
`DETAILED EXPLANATION OF THE PERTINENCY AND MANNER OF
`APPLYING THE PRIOR ART REFERENCES TO EVERY CLAIM FOR
`WHICH REEXAMINATION IS REQUESTED.............................................. 39
`A.
`NetBIOS ....................................................................................... 39
`
`1.
`
`2.
`
`Anticipation Rejections (Claims 1-7 and 32-44) ................................. 39
`
`Obviousness Rejections ............................................................. 69
`
`(i)
`NetBIOS in View ofRFC 1531 (Claims 1-7 and 32-44) .......... 70
`(ii) Motivation to Combine NetBIOS with RFC 1531 ................ 71
`
`(iii) NetBIOS in View of Pinard (Claims 10-17, 19-28, and 30-31) .. 71
`(iv) Motivation of Combine NetBIOS and Pinard..................... 80
`
`(v)
`
`NetBIOS in view of Pinard and Further in View of
`VocalChat User's Guide (Claims 18 and 29)...................... 81
`
`(vi) Motivation to Combine VocalChat User's Guide with
`NetBIOS and Pinard ................................................... 81
`
`B.
`
`Etherphone.. .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . . 82
`
`1.
`
`2.
`
`Anticipation Rejections (Claims 1-2, 4-7, 10-12, 14, 19-23, 25, 30-44) ..... 82
`
`Obviousness Rejections............................................................ 112
`(i)
`
`Etherphone in View ofNetBIOS (Claim 3) .......................... 112
`
`(ii) Motivation to Combine Etherphone with NetBIOS ............... 113
`(iii)
`
`Etherphone in View of Yin (Claim 32).............................. 113
`
`(iv) Motivation of Combine Etherphone and Yin....................... 115
`
`(v)
`
`Etherphone in View of Yin and Further in View
`of RFC 1531 (Claim 33) .... ........................................... 115
`(vi) Motivation to Combine Etherphone, Yin and
`RFC 1531.. .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . . 117
`(vii) Etherphone in View of Pinard (Claims 10-17, 19-28, 30-31) .... 118
`
`(viii) Motivation to Combine Etherphone and Pinard .................... 126
`(ix)
`
`Etherphone in view of Pinard and Further in View of
`Vocal Chat User's Guide (Claims 18 and 29).................... ... 126
`
`(x) Motivation to Combine VocalChat with Etherphone
`and Pinard............................................................... 127
`
`3 of 172
`
`Samsung - Exhibit 1022 - Page 5
`
`

`
`C.
`
`Vocal Chat User's Guide in view of Vocal Chat Readme, and further in view of
`Vocal Chat Networking, and further in view of Vocal Chat Help File, and further
`in view ofVocalChat Troubleshooting Help File (collectively "VocalChat" or
`"VocalChat references") (Claims 1-2, 4, 7, 10-11, 19-22, 30-42).. .. . .. . .. . .. . . . . .. . . 127
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Motivation to Combine the VocalChat References............................. 128
`
`VocalChat references further in view of RFC 1531 (Claims 1-2, 4, 7, 10-
`11, 19-22, 30-42) .................................................................... 163
`
`Motivation to Combine VocalChat references and RFC 1531.. .. . .. . .. . .. . .. 164
`
`The VocalChat References in view of NetBIOS (Claim 3).. .. . .. . .. . .. . .. . ... 164
`
`Motivation to Combine the VocalChat References with NetBIOS.. .. . .. . ... 165
`
`The VocalChat References in view of Pinard (Claims 12-18 and 23-29) .... 165
`
`Motivation to Combine VocalChat and Pinard...................................... 168
`
`VII. LIST OF EXHIBITS ................................................................................. 168
`
`VIII. CONCLUSION ....................................................................................... 171
`
`4 of 172
`
`Samsung - Exhibit 1022 - Page 6
`
`

`
`I.
`
`PENDING LITIGATION
`
`The '704 patent is the subject of pending litigation, Net2Phone, Inc. v. eBay, Inc., Skype
`
`Technologies SA, and Skype, Inc., Case No. 06-2469, instituted by the current assignee,
`
`Net2Phone, Inc., in the United States District Court for the District of New Jersey. Net2Phone
`
`alleges that Skype Technologies SA, Skype, Inc. and eBay Inc. infringe claims 1, 2, 4-7, 11, 22,
`
`32-44 of the '704 patent. The parties have submitted their claim construction briefs and a
`
`Markman hearing is currently scheduled for March 2, 2009. The Court has not yet set a schedule
`
`for summary judgment proceedings. No trial date has been set. Skype, Inc., plans to file a
`
`motion to stay the above-entitled litigation pending reexamination on the grounds that a stay of
`
`litigation at this time will permit the Court and parties to benefit from the PTO's guidance on
`
`issues of patentability and to avoid further costly legal proceedings that would otherwise burden
`
`the Court and parties. Claim Construction Briefs submitted by the parties to the pending
`
`litigation are set forth in Exhibits S-X.
`
`II.
`
`LISTING OF PRIOR ART PATENTS AND PRINTED PUBLICATIONS
`In accordance with 37 C.P.R.§§ 1.510(b)(l) and (b)(2), reexamination of claims 1-7 and
`
`10-44 of the '704 patent is requested in view of the following references:
`
`Exhibit B
`
`The Open Group, Technical Standard, Protocols for X/Open PC
`
`Interworking SMB, Version 2, (1992) ("NetBIOS"), which published as
`a single publication containing: 1 (a) Protocol Standard for a NetBIOS
`
`Service on a TCP/UDP Transport: Concept and Methods, RFC 1001
`
`(March 1987) ("RFC 1001"); and (b) Protocol Standard for a NetBIOS
`
`Service on a TCP/UDP Transport: Detailed Specifications, RFC 1002
`
`(March 1987) ("RFC 1002").
`
`Exhibit C
`
`Etherphone: Collected Papers 1987-1988 (May 1989) (collectively
`
`referred to herein as "Etherphone"). These papers, which published
`together as a single publication, include the following: 2
`
`1 NetBIOS published as a single reference with RFC 1001 and RFC 2002.
`2 The five papers comprising this reference were published together as set forth on the first page of this reference.
`Thus, all five papers are a single reference.
`
`5 of 172
`
`Samsung - Exhibit 1022 - Page 7
`
`

`
`a.
`
`PolleT. Zellweger, et al., An Overview of the Etherphone
`
`System and its Applications, IEEE CONFERENCE ON COMPUTER
`
`WoRKSTATIONS (March 1988), 160-168 (hereinafter "Zellweger 1").
`
`b.
`
`Daniel C. Swinehart, Telephone Management in the
`
`Etherphone System, PROCEEDINGS OF THE IEEE/IEICE GLOBAL
`
`TELECOMMUNICATIONS CONFERENCE (November 1987), 1176-1180
`
`(hereinafter "Swinehart 1 ").
`
`c.
`
`Douglas B. Terry and Daniel C. Swinehart, Managing
`
`Stored Voice in the Etherphone System, ACM TRANSACTIONS ON
`
`COMPUTER SYSTEMS 6(1) (February 1988), 3-27 (hereinafter "Terry").
`
`d.
`
`Daniel C. Swinehart, System Support Requirements for
`
`Multi-media Workstations, PROCEEDINGS OF THE SPEECHTECH '88
`
`CoNFERENCE (April1988), 82-83 (hereinafter "Swinehart 2").
`
`e.
`
`PolleT. Zellweger, Active Paths through Multimedia
`
`Documents, DOCUMENT MANIPULATION AND TYPOGRAPHY, J.C. AN VILET
`
`(ED.), CAMBRIDGE UNIVERSITY PRESS (1988) (hereinafter "Zellweger 2").
`
`Exhibit D
`
`Yin, Barrick M., et al., Multimedia Conferencing in the Etherphone
`
`Environment, IEEE COMPUTER SOCIETY (October 1991) ("Vin"); and
`
`Exhibit E
`
`Droms, R., Dynamic Host Configuration Protocol, RFC 1531 (Oct. 1993)
`
`("RFC 1531")
`
`Exhibit F
`
`Pinard, et al., U.S. Patent No. 5,533,110 ("Pinard")
`
`Exhibit G
`
`VocalChat User's Guide, Version 2.0 (1994) ("User's Guide")
`
`Exhibit H
`
`VocalChat Readme File, Version 2.02 (June, 1994) ("Readme")
`
`Exhibit I
`
`VocalChat 1.01 Networking Information (March 6, 1994) ("VocalChat
`
`Networking")
`
`Exhibit J
`
`VocalChat Information, Version 2.02 (July 18, 1994) ("Help File")
`
`Exhibit K
`
`VocalChat Troubleshooting Help File, Version 2.02 (July 18, 1994)
`
`("Troubleshooting Help File")
`
`6 of 172
`
`Samsung - Exhibit 1022 - Page 8
`
`

`
`III. OVERVIEW OF THE '704 PATENT
`
`Before providing detailed explanations of the pertinency and manner of applying the
`
`cited prior art to the claims, presented here is an overview of the '704 patent and its prosecution
`
`history. The '704 patent issued on August 22, 2000, and includes 44 claims, of which claims 1,
`
`2, 4, 10, 21, 32, 33, 38, 43, and 44 are independent.
`
`A.
`
`Subject Matter of the '704 Patent
`
`The '704 patent describes two different techniques for locating computer processes on a
`
`network. Referring to Figure 1 of the '704 patent (reproduced below), one technique relies on a
`
`"connection server" (26) to locate processes and a second technique relies on a "mail server"
`(28) to locate processes. 3 According to the first technique, each computer (referred to as a
`
`"processing unit" in the '704 patent) registers its IP addresses with the connection server (26).
`
`The IP address of each "online" computer is stored within a database (34) on the connection
`
`server. As described in the '704 patent (referring to Figure 1):
`
`Upon the first user initiating the point-to-point Internet protocol when the first
`user is logged on to Internet 24, the first processing unit 12 automatically
`transmits its associated E-mail address and its dynamically allocated IP address to
`the connection server 26. The connection server 26 then stores these addresses in
`the database 34 and timestamps the stored addresses using timer 32. The first user
`operating the first processing unit 12 is thus established in the database 34 as an
`active on-line party available for communication using the disclosed point-to(cid:173)
`point Internet protocol. Similarly, a second user operating the second processing
`unit 22, upon connection to the Internet 24 through a connection service provider,
`is processed by the connection server 26 to be established in the database 34 as an
`active on-line party. 4
`
`3 The first technique is referred to as the "primary point-to-point Internet protocol" and the second technique is
`referred to as the "secondary point-to-point internet protocol." See, e.g., '704 patent, Col. 5, line 55- Col. 6, line 29.
`4 '704 patent, Col. 5, lines 25-38.
`
`7 of 172
`
`Samsung - Exhibit 1022 - Page 9
`
`

`
`12\
`---~-------------~~----; I
`
`241
`-----~------------
`
`FIG. I
`
`' I
`
`I
`I
`I
`I
`I
`I
`L-------------------J
`
`In order to initiate a connection with the second computer (22) on the network, the first
`
`computer (12) retrieves the current IP address of the second computer from the connection server
`
`(26). Once the first computer knows the IP address of the second computer, it can establish a
`
`point-to-point connection with the second computer. As described in the '704 patent:
`
`The first processing unit 12 then sends a query, including the E-mail address of
`the callee, to the connection server 26. The connection server 26 then searches the
`database 34 to determine whether the callee is logged-in by finding any stored
`information corresponding to the callee's E-mail address indicating that the callee
`is active and on-line. If the callee is active and on-line, the connection server 26
`then performs the primary point-to-point Internet protocol; i.e. the IP address of
`the callee is retrieved from the database 34 and sent to the first processing unit 12.
`The first processing unit 12 may then directly establish the point-to-point Internet
`communications with the callee using the IP address of the callee. 5
`
`The second technique for locating computers on a network (the "secondary point-to-point
`
`Internet protocol") utilizes the email server (28) illustrated in Figure 1. The second technique is
`
`used "if the connection server 26 is non-responsive, inoperative, and/or unable to perform the
`primary point-to-point Internet protocol, as a non-responsive condition."6 Using the second
`
`technique, the first computer (12) transmits an email message which includes the IP address of
`the first user and a session number (referred to as a "<ConnectRequest>" message). 7 After
`
`receiving the email message from the mail server, the second computer (22) uses the IP address
`
`and session number to establish a point-to-point connection with the first computer (12). As
`
`described in the '704 patent:
`
`5 '704 patent, Col. 5, lines 55-67.
`6 '704 patent, Col. 6, lines 20-23.
`7 '704 patent, Col. 6, lines 31-36.
`
`8 of 172
`
`Samsung - Exhibit 1022 - Page 10
`
`

`
`Upon detecting and/or receiVmg the incoming E-mail signal from the first
`processing unit 12, the second processing unit 22 may assign or may be assigned
`a temporary IP address. Therefore, the delivery of the E-mail through the Internet
`24 provides the second processing unit 22 with a session number as well as IP
`addresses of both the first processing unit 12 and the second processing unit 22.
`
`Point-to-point communication may then be established by the processing units 12,
`22. For example, the second processing unit 22 may process the E-mail signal to
`extract the <ConnectRequest> message, including the IP address of the first
`processing unit 12 and the session number. The second processing unit 22 may
`then open a socket and generate a <ConnectOK> response signal, which includes
`the temporary IP address of the second processing unit 22 as well as the session
`number. 8
`
`While the independent claims of the '704 patent are not expressly limited to a particular
`protocol standard, the embodiments described in the '704 patent utilize the TCP/IP protoco1. 9
`
`Thus, the focus of the '704 patent is a central repository of IP addresses which is queried to
`
`locate computers on a network.
`
`--50
`
`48
`
`FIG. 6
`
`FIG. 5
`
`The '704 patent also describes a graphical user interface ("GUI") for managing calls on a
`
`computer. The GUI, illustrated in Figures 5 and 6 of the '704 patent (reproduced above),
`
`includes a status area (38) which is used to indicate ...
`
`. . . a called user by name and/or by IP address or telephone number; a current
`function such as C2; a current time; a current operating status such as "IN USE",
`
`8 '704 patent, Col. 7, lines 10-25.
`9 See, e.g., '704 patent, Col. 5, lines 8-14 and 22-38.
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`and other control icons such as a down arrow icon 40 for scrolling down a list of
`parties on a current conference line. The operating status may include such
`annunciators as "IN USE", "IDLE", "BUSY", "NO ANSWER", "OFFLINE",
`"CALL", "DIALING", "MESSAGES", and "SPEEDDIAL." 10
`
`Figures 5 and 6 also illustrate a set of graphical icons ( 42) which are "configured to
`substantially simulate a telephone handset or a cellular telephone interface." 11 The icons provide
`
`functions typically found on a telephone such as speed dial (SPD), hold (HLD), send (i.e., initiate
`
`call) (SND), end call (END), mute (MUT). Icons are also provided to indicate individual
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`telephone "lines" (L1-L3) and "conference lines" (C1-C3). An active call may be transferred to
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`a different line by "by clicking and dragging the status area 38, which is represented by a
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`reduced icon 46. Dragging the reduced icon 46 to any one of line icons L1-L4 transfers the
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`called party in use to the selected line, and dragging the reduced icon 46 to any one of
`conference line icons C1-C3 adds the called party to the selected conference call." 12
`
`B.
`
`Prosecution History of the '704 Patent
`
`The application which resulted in the '704 patent was filed on September 25, 1995. The
`'704 patent application 13 initially included a total of 20 claims. This was extended to 53 claims
`.
`1'
`.
`d
`14
`v1a a pre 1mmary amen ment.
`
`The PTO mailed a first Office Action on June 2, 1997, rejecting all 53 claims under 35
`
`U.S.C. § 103 as being unpatentable in view of several prior art references, including Civanlar,
`
`U.S. Patent No. 5,581,552 ("Civanlar"). As noted by the Examiner, Civanlar discloses "a
`
`communication protocol in which the requesting node sends a request for communication with
`
`another node through an address server, which contains an address database, to obtain the
`address and routing information necessary to complete the communication." 15
`
`The Applicants filed an Amendment and Response on December 2, 1997 in which they
`
`added claims 54-68 and distinguished the invention from the cited references as follows:
`
`the current
`for determining
`techniques
`invention provides
`Applicant's
`dynamically assigned network protocal [sic] address of a user process connected
`
`10 '704 patent, Col. 8, lines 42-50.
`11 '704 patent, Col. 8, lines 58-60.
`12 '704 patent, Col. 9, lines 36-42.
`13 Application serial no. 08/533,11 resulting in the '704 patent is referred to as the '"704 application."
`14 See Preliminary Amendment (AprilS, 1996).
`15 Office Action (June 2, 1997), page 3.
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`to the network. The first technique utilizes a dedicated server which acts as a
`network address/information directory from which calling processes can obtain
`information. When a first process connects to the networks, the process logs-on
`to the server and provides the server with the network protocal [sic] address under
`which the process is currently operating. A second process wishing to establish
`communications with the first process, connects to the server and request the
`network protocal [sic] address under which the first process is currently operating.
`Upon receipt of the network protocal [sic] address of the first process, the second
`process establishes communications with the first process directly, without any
`intervention [sic] from the address/information server. 16
`
`The Applicants also submitted a Declaration of Prior Invention under 37 U.S.C. § 1.131,
`
`stating "to overcome the rejection of all claims under 35 U.S.C. § 103 as being unpatentable over
`
`Civanlar, et al. in view of Morgan et al. and/or further in view of December et al ... In light of
`
`the declaration and accompanying exhibits, all rejections based on the Civanlar et al. reference
`are deemed moot." 17
`
`The PTO mailed a second Office Action on April 14, 1998 indicating a restriction
`
`requirement under 35 U.S.C. § 121. The Applicants mailed a response to the restriction
`
`requirement on August 11, 1998, electing a group of claims (Group 1).
`
`An Office Action mailed on October 28, 1998 rejected all pending claims under 35
`
`U.S.C. § 102(e) and 35 U.S.C. § 103. The Applicants mailed an Amendment and Response on
`
`March 1, 1999, cancelling claims 1-4 and 6-11 and amending numerous claims. The Applicants
`
`again distinguished the alleged "invention" over the cited prior art, stating:
`
`Applicants' invention solves a fundamental problem associated with the Internet. ..
`The problem is: How can a global network user be located if he/she has no
`permanent network address?
`
`Applicants have disclosed a solution to the above-described problem. The solution
`utilizes a client/server system. In the disclosed system, a client process contacts a
`dedicated address directory server and forwards to the server the network protocol
`address to which it has been assigned upon connection to the computer network,
`along with other identification information. The dedicated address directory server
`maintains a compilation or list of entries, each of which contain a process identifier
`and the corresponding network protocol address forwarded to the server by the
`process itself. Other processes wishing to contact a desired target process simply
`
`16 Office Action Response (December 2, 1997), page 8.
`17 Amendment and Response (December 2, 1997), page 7. We question the sufficiency of the support document,
`"webph.doc," submitted with the Declaration of Prior Invention. However, because the prior art we rely upon
`predates the priority date of this document, we did not perform a detailed analysis related to this document.
`
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`query the address directory server to determine whether the target process is on-line
`and the current network protocol address at which the target process is located. 18
`
`In addition, with respect to independent Claims 10 and 21 of the '704 patent (and
`
`associated dependent claims), the Applicants argued that these claims were "directed to a method
`
`for establishing a point-to-point communication link with the user interface of a client process by
`associating elements representing a communication line and various processes." 19
`
`A Notice of Allowability was mailed on May 25, 1999, allowing Claims 21, 23-24, 26-
`
`64, 66, and 67 (which issued as Claims 1-44). The '704 patent issued on August 22,2000.
`
`IV.
`
`SUBSTANTIAL NEW QUESTION (SNQ) OF PATENTABILITY AS REQUIRED
`BY 37 C.F.R 1.510 (b)(l)
`
`The following section provides a list of the SNQs and detailed explanation of the prior art
`
`references relied upon in the present request for the SNQ, including references not previously
`
`considered by the PTO.
`
`A.
`
`SNQs Raised by NetBIOS
`
`A SNQ as to Claims 1-7 and 32-44 is raised by NetBIOS. NetBIOS anticipates all of the
`
`limitations of these claims, including teachings of Civanlar, which were used by the Examiner in
`
`a§ 103 rejection against the instant claims. This reference was removed from consideration due
`
`to the acceptance of a 37 C.P.R. § 1.131 declaration which swore behind the date of Civanlar.
`
`While Civanlar shows an address server for storing network protocol addresses usable by
`
`network nodes to establish point-to-point communications, the question of patentability was
`
`removed when the reference was antedated. See, e.g., Civanlar, col. 3, lines 1-4 ("The address
`
`server contains an address data base for performing address resolution, i.e., translation, between
`
`the at least two addresses of each ELAN end-point in response to requests for such
`
`translations.").
`
`NetBIOS, which was not cited or discussed in the prosecution of the '704 patent, presents
`
`a SNQ of patentability because it, like Civanlar, discloses an address server (referred to as a
`
`"NetBIOS Name Server" or "NBNS") with an address database for storing network protocol
`
`addresses usable by network nodes to establish point-to-point communications, as discussed in
`
`18 Amendment and Response (March 1, 1999), page 14.
`19 Office Action response (March 1, 1999), page 17.
`
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`detail below. See, e.g., NetBIOS at 367 (describing how the NBNS acts as a '"bulletin board' on
`
`which name/address information is freely posted (and removed) by P and M nodes without
`
`validation by the NBNS. Alternatively, the NBNS may elect to completely manage and validate
`
`names."). See also id. at 388 ("Name query transactions are initiated by endnodes to obtain the
`
`IP address(es) and other attributes associated with a NetBIOS name.").
`
`Recall also that, during prosecution of the '704 patent, the Applicants argued that the
`
`claimed invention ...
`
`. . . utilizes a dedicated server which acts as a network address/information
`directory from which calling processes can obtain information. When a first
`process connects to the networks, the process logs-on to the server and provides
`the server with the network protocal [sic] address under which the process is
`currently operating. A second process wishing to establish communications with
`the first process, connects to the server and request the network protocal [sic]
`address under which the first process is currently operating. Upon receipt of the
`network protocal [sic] address of the first process, the second process establishes
`communications with the first process directly, without any intervention [sic]
`from the address/information server.
`
`