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`Attorney Docket No. N0003/7002 5‘76
`N THE UNITED STATES PATENT AND TRADEMARK OFFICE
`/a,30’fly
`
`Shane D. Mattaway, et al.
`08/721,316
`September25, 1996
`GRAPHIC USER INTERFACE FOR INTERNET TELEPHONY
`APPLICATION
`
`
`
`Filed:
`For:
`
`U
`
`Examiner: George F. Wallace
`Art Unit:
`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 20‘" 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, chan;.XX/XXX,XXX" to -- 08/523,115 --;
`line 1041ange " xx1xxx,xxx" to -- 60/024,251 --;
`.
`/
`line 16, change “ X-X/XXX,XXX" to -- 08/719,894 --;
`
`line 109% “ XX/XXX,XXX" to —— 08/719,554 --;
`
`line 22, change " XX/XXX,XXX" to -- 08/719,640 --;
`,
`/
`Page 3, line 1yange “ XX/XXX,XXX" to -- 08/719,891 --;
`line 4.cha ge""XX/XXX,XXX" to -- 08/719,898 u.
`line 7, cha ge""§X/XXX,XXX" to -- 08/718,911 --.
`
`i.
`I"
`:1
`
`g
`
`;
`i.
`g
`g
`
`‘0
`1;"
`
`c-
`
`S S ,3;
`
`F11;
`“°
`"6
`N, n- r:
`a i m
`‘1' 5 C’
`
`line 10, change “ XX/XXX,XXX” to - 08/719,639 -.
`Page 8, line 5, change “a such” to --such--;
`
`Page 1 of 11
`
`LG Electronics Exhibit 1021
`
`

`

`0 O
`0/0’
`Page nine11, change "XX/XXX,XXX" to --08/719,554 -.
`Page 39,/Line/11 change''XX/XXX,XXX" to -- 08/719891—
`
`Page 27, "15/25 change “Winsoc” to -—Winsock--.
`
`Page 46, line 23. change “XX/XXX,XXX" to -- 08/719,898 --.
`
`In the Claims
`
`1.
`(Amended) A computer program product for use with a co puter system having
`
`fldisplay and an audiotransducer, the computersystem ca-a eofexecutin- oneor-
`
` ore rocesses and [operatively coupled] connecting to ot
`
`- r [computers] processes
`
`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.
`
`program code means for generati
`
`o a user-interface through which a user
`
`may control a first crocess exe
`
`tino on coact with] the computer system
`
`and cou oled to the com-uter etwork'
`
`g
`
`cororam code means for . -oterrninin the currentl assi-ned network
`
`orotocol address of the rst orocess u 0 on connection to the comouter
`
`penaork;
`
`g
`
`ro ram code mea s res onsive to the currentl assi ned network
`rotocol address;of the first
`rocess for establishin a communication
`connection with, the server
`rocess and for forwardin the assi ned
`network rotgcol address of the first
`rocess and a uni ue identifier of the
`first procesg to the server process upon establishing a ppmmunipatipn
`
`connection with the server process; and
`[b]; progra /code means] responsive to user input commands] for
`
`establishing a point-to-point communications [link] with another [computer]
`
`ro - ss over the computer network[; and];
`
`[c.
`
`pr gram code means, responsive to audio data from the audio transducer,
`
`f r transmitting the audio data over the communication link to the other
`
`Page 2 ofll
`
`

`

`_-‘--00
`
`to
`
`computer.]
`
`
`
`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:
`
`[0.1] d4 program code means, responsive o the network protocol address of a
`
`second process [the second proc
`
`sor], for establishing a point—to—point
`
`communication link between the irst [processor] process and the second
`
`[processor] process over the c mputer network.
`
`3.
`
`(Amended) The computer progra
`
`product of claim 2 wherein the program code
`
`means for establishing a point-to-point c mmunication link further comprise:
`
`[c.2] Q program code means f
`
`transmitting. from the first [processor] process
`
`%\
`
`to the server process, a uery as to whether the second [processor]
`
`[Q3] pp program code mea s for receiving a network protocol address of the
`
`process is connected t
`
`the computernetwork; and
`
`rocess from the server process, when the second
`second [processor]
`
`
`[processor]
`
`
`
`is connected to the computer network.
`
`4.
`
`(Amended) The comp ter program product of claim 2 wherein the program code
`
`means for establishing a po nt-to-point communication link further comprises:
`
`[c.2112 program c de means for transmitting an E-mail [signal] message
`
`containing
`
`the serve p rocess over the computer network;
`
`network protocol address from the first [processor] process to
`
`[c.3]g_.§ 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:
`
`Page 3 ofll
`
`

`

`.0
`
`.0
`
`
`
`V
`S‘Q'
`
`
`7.
`In a computer system aving a diEpI y and an audio transducer, the
`
`
`c
`
`puter system capable of executing one or mo
`
`processes and communicating with
`
`her processes and a server process over a co puter network, a method for
`
`establishing point-to-point communications with ther processes comprising:
`
`A.
`
`determining the currently assign
`
`
`process upon connection to the omputer network;
`
`network protocol address of the first
`
`B.
`
`establishing a communication onnection with the server process once
`
`the assigned network protoco of the first process is known;
`
`C.
`
`ton/varding the assigned ne
`
`ork protocol address of the first process to
`
`the server process upon e ablishing a communication connection with
`
`the server process; and
`
`
`
`D.
`
`computer network.
`
`establishing a point-to-p nt communication with another process over the
`
`
`The method of claim 7 wher in the program step D comprises:
`
`ocess is connected to the computer network; and
`
`01
`
`transmitting, fromt
`
`first process to the server process, a query as to
`
`whether a second
`
`02
`
`protocol address of the second process from the
`
`network.
`
`The method of clai
`
`7 wherein the program step D comprises:
`
`receiving a netwo
`
`server process,
`hen the second process is connected to the computer
`
`
`
`transmitting n E-mail message containing a network protocol address
`
`from the fi
`
`second network protocol address from a second process over
`the comp ter network.
`
`A method for e tablishing a point-to-point communication from a caller process
`
`process to the server process over the computer network;
`
`D.1
`
`02
`
`receiving
`
`10.
`
`to a callee process 0 er a computer network, the caller process having a user interface
`
`and being operativel coupled to the callee process and a server process over the
`
`Page 4 of 11
`
`

`

`computer network, the method comprising the steps of:
`
`
`
`generating an element representing a first corn unication line;
`generating an element representing a first call 9 process;
`
`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
`
`representing the first callee process with
`
`e element representing the first
`
`communication line.
`
`
`
`
`r comprises the steps of:
`querying the server process as to th on-line status of the first callee
`
`receiving a network protocol addr $3 of the first callee process over the
`
`The method of claim 10 wherein step C furt
`
`process; and
`
`A.-
`
`B.
`
`C.
`
`C.1
`
`02
`
`11.
`
`12.
`
`13.
`
`computer network from the serv r process.
`
`The method of claim 10 further com rising the step of:
`
`D.
`
`generating an element repr senting a second communication line.
`
`The method of claim 10 further omprising the step of:
`
`E.
`
`F.
`
`terminating the point-to point communication from the caller process to
`
`the first callee proces , in response to the user disassociating the element
`representing the firs callee process from the element representing the
`
`first communicatio line; and
`establishing a diff rent point-to-point communication from the caller
`
`process to the fir t callee process, in response to the user associating the
`element repres nting the first callee processor with the element
`
`representing t e second communication line.
`
`The method of cla'
`
`
`
`14.
`
`10 further comprising the steps of:
`
`D.
`
`E.
`
`generating an element representing a second callee process; and
`
`establishi g a conference point-to-point communication between the caller
`
`Page 5 ofll
`
`

`

`process and the first and second callee proc sses, in response to the
`
`user associating the element representing
`
`e second callee process with
`
`
`
`the element representing the first commu cation line.
`
`
`15.
`
`The method of claim 10 further comprising the tep of:
`
`F.
`
`removing the second callee process fr m the conference point-to-point
`communication in response to the use! disassociating the element
`
`representing the second callee proc $5 from the element representing the
`
`first communication line.
`
`
`
`The method of claim 10 further compri ng the steps of:
`
`generating an element repres
`
`d
`temporarily disabling the po'nt-to-point communication between the caller
`
`16.
`
`D.
`
`E.
`
`temporarily disabled status;
`
`ting a communication line having a
`
`Q)?
`
`process and the first calle process, in response to the user associating
`the element representin the first callee process with the element
`
`representing the com nication line having a temporarily disabled status.
`
`
`rein the element generated in step D represents a
`communication line on hold stat s.
`
`The method of claim 16 w
`
`17.
`
`18.
`
`The method of claim 1 wherein the element generated in step D represents a
`
`communication line on mut
`
`
`status.
`
`19.
`
`The method of cl m 10 wherein the caller process further comprises a visual
`
`display and the ser interface comprises a graphic user interface.
`
`
`
`20.
`
`The method 0 claim 19 wherein the user interface is a graphic user interface
`
`and the elements 9 nerated in steps A and B are graphic elements.
`
`Page 6 ofll
`
`

`

`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
`
`distinctly claim the subject matter which Applicants regard as their invention. Applicants
`
`respectfully request reexamination and reconsideration.
`
`Applicants have amended the specification to supply the serial numbers of all
`
`patent applications referenced in the specification.
`
`In addition, minor grammatical
`
`errors have been corrected to over come the Examiner’s objections to the specification.
`
`Claims 1-4 have been objected to as being indefinite for failing to particularly
`
`point out and distinctly claim the subject matter which Applicants regard as the
`
`invention.
`
`In response, claims 1-4 has been amended, where appropriate, in a manner
`
`which is believed to overcome the objections of the Examiner.
`
`Claims 1-3 and 5-6 have been rejected under 35 USC §102(a) as being
`
`anticipated by Vocal Tec Internet Phone Version 2.5 (hereafter "IPHONE"). Prior to
`
`discussing the specific amendments to the claims, Applicants would like to briefly
`
`discuss the subject invention in light of the rejections.
`
`As stated in the Background of the Invention section of the subject specification,
`
`the locating users over a computer network has been difficult without knowing the
`
`temporary or dynamically assigned Internet Protocol address of the user. The subject
`
`application discloses a client and server system and a protocol in which client
`
`processes, upon connection to an Internet Protocol based network, forward their
`
`current dynamically assigned Internet Protocol address to a global server which acts as
`
`a repository of directory information for all other client processes.
`
`In addition, the global
`
`server associates with the Internet Protocol address of a particular client process, a
`
`unique handle, e.g. the client’s e-mail address. With this technique, the on-line status
`
`of prospective callees may be determined even though the callee is not currently
`
`connected to the network. More specifically, each client process, upon receiving an
`
`Internet Protocol address after connection to an IP-based network, automatically and
`
`transparently notifies the global server that it is currently on line, its E-mail address and
`
`7
`
`Page 7 ofll
`
`

`

`the network protocol address at which the client process may be contacted. Thereafter,
`
`the global server monitors the status of the client process and is capable of providing
`
`directory information including the Internet Protocol address of the client process to
`
`other clients processes who wish to communicate therewith.
`
`In order for a WebPhone
`
`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
`
`representing the prospective callee from the caller's personal directory or submits a
`
`query to the global server process. the query including information identifying the
`
`prospective callee. The global server utilizes the handle, eg. the E-mail address, or
`
`other identifier contained in the query, and determines whether the callee is currently
`
`connected to the network.
`
`If so, the current dynamically assigned Internet Protocol
`
`address of the callee is then returned to the caller's WebPhone and a point-to-point
`
`communication is initiated. The whole process occurs transparently to the WebPhone
`
`caller user.
`
`Conversely, the Vocal Tec lPhone literature cited by the Examiner, as well as the
`
`NetScape Cool Talk product utilize servers executing the Internet Relay Chat (IRC)
`
`protocol, such protocol provides an impractical solution to the problem of locating a
`
`users dynamically assigned Internet Protocol address. Specifically, the IRC protocol is
`
`defined in the Internet Engineer Task Force (IETF) Standard RFC 1459 available at
`
`<http://info.internetisi.edu/in-notes/rfc/files/rfci459.txt>. Briefly, a typical server
`
`adhering to the lRC protocol supports approximately 24 users who are “joined" on an
`
`individual “channel". To initiate communications with a callee, a caller has to manually
`
`search oneor more lRC servers for the desired callee. Specifically, to locate a
`
`particular callee, a caller needs to know (1) the server which that callee is connected to
`
`and (2) the “channel" or “topic" that callee has “joined". Practically, in order to find a
`
`particular individual a prospective callee, the caller would need to know which of many
`
`IRC sewers around the world the callee frequented in an attempt to connect to the
`
`proper IRC server.
`
`If the IRC server already had 24 users connected, any attempt to
`
`contact that particular IRC server would be rejected until one or more users drop off the
`
`server.
`
`If connection to the IRC server is established, the caller would need to browse
`
`8
`
`Page 8 ofll
`
`

`

`through any “channels” in which the prospective callee may be located.
`
`According to the IRC protocol, there is no field or identifier which “uniquely"
`
`identifies an IRC server user. Each user connects to an IRC server using a "nickname”
`
`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
`
`Version 2.5 provides no functionality beyond that of a conventional IRC client. A user is
`
`presented with a list of “joined" lRC users from which a selection can be made. Once a
`
`nickname is selected from the IRC server, information about the user, including an
`
`Internet Protocol address are provided to the selecting party.
`
`In contrast, the present invention provides a global server that can be queried to
`
`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
`users and topics in search of the person to whom he or she wishes to communicate.
`
`As disclosed in the specification, a Webphone user merely selects information
`
`identifying the user from either a personal directory or the results of a query from the
`
`global server to establish a point-to-point communication connection with the desired
`
`callee.
`
`Claim 1 has been amended to now recite the above-identified aspects of
`
`Applicants’ invention. Specifically, claim 1 now recites a computer program product
`
`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 fonIvarding the assigned network protocol
`
`address of the first process and a unique identifier of the first process to the server
`
`process upon establishing a communication with the server" (claim 1, lines 10-17). All
`
`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 fowvarding to a server process the network protocol address and other
`
`9
`
`Page 9 ofll
`
`

`

`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
`
`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
`
`process sending its network protocol address to the prospective callee process directly
`
`in an e-mail message, as described in the specification (pp.15-18).
`
`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
`
`user interface in which establishment of calls, conferencing of parties, transferring of
`
`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,
`
`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
`
`allowance and a notice to that effect is respectfully requested.
`
`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
`
`Page 10 ofll
`
`

`

`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,
`
`Bruce D. Jobse. aeg. No. 33,518
`
`KUDIRKA 8. JOBSE, LLP
`Two Center Plaza
`
`Boston, MA 02108
`
`(617) 367-4600
`
`11
`
`Page 11 ofll
`
`

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