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`COMMISSIONER OF PATENTS AND TRADEMARKS
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`1,115:/7’21_.;316
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`cu-9/'2-5/96.
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`mAT'mwAY
`
`r‘
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`..n:-Base
`BR|_|IZ:E In
`BUUHSTEIN & HUDIRHA
`cam: BEAIZIIZIN STREET
`Ia-:u;T:::N MA n:r::1r.n:5:
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`._m.-:.1/.;.4z.;.
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`—; ii
`WALL-’-\'3E.~'-'='
`
`2751
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`5
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`DATE MAILED:
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`U -‘l / '2 U / 913
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`Please flnd below and/or attached an Office communication concerning this application or
`proceeding.
`
`Commissioner of Patents and Trademarks
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`"°'°°c (R''’' 2'95)
`us. (:90: 1995437-638130022
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`Page 1 of 11
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`1- File Copy
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`LG Electronics Exhibit 1023
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`

`
`Office Action Summary
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`08!721,316
`Nlattaway et at.
`E,,,,,,,,,,,,
`G,,,,,,,,.,,, U,,,,
`.
`I.
`I
`llllllllllllllllllllllci
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`E Responsive to communication{s} filed on Se £25 1996 Dec 22 1996 and Mar 30 1998
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`D This action is FINAL.
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`prosecution as to the merits is closed
`D Since this application is in condition for allowance except for formal matters,
`in accordance with the practice under Ex pane Qui:-M935 C.D. 11; 453 O6. 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 CFR1.136[a).
`
`Disposition of Claim
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`El Ctaim{s) 1-6
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`israre pending in the applicat
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`Of the above, claim[s)
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`'
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`islare withdrawn from consideration
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`D Claimisj
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`Z] Claim(s)1‘-6
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`|:] Claimnlsj
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`D Claims
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`is.-‘are allowed.
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`israre rejected.
`
`isiare objected to.
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`are subject to restriction or election requirement.
`
`Application Papers
`El See the attached Notice of Drafl:sperson‘s Patent Drawing Review, PTO-948.
`
`D The drawingtsj filed on
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`isfare objected to by the Examiner.
`
`D The proposed drawing correction, filed on
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`is D approved D:lisapproved_
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`K] The specification is objected to by the Examiner.
`
`D The oath or declaration is objected to by the Examiner.
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`Priority under 35 U.S.C. § 119
`D Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d).
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`D All Dsome‘
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`lE]one
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`of the CERTIFIED copies of the priority documents have been
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`D received.
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`D received in Apptication No. (Series Code.-‘Serial Number)
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`_
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`D received in this national stage application from the International Bureau (PCT Rule 17_2[aj)_
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`‘Certified copies not received:
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`D Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § ‘i19{e).
`
`Attachrnentfsj
`Notice of References Cited, PTO—892
`
`[IQ Information Disclosure Statement{s), PTO-1449, Paper No(s).
`D Interview Summary, PTO-413
`
`Notice of Draftsperson's Patent Drawing Review, PTO-948
`D Notice of Informal Patent Application, PTO-152
`
`U. 3. Patent and Trademark Office
`
`PTO-326 (Rev. 9-95)
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`Office Action Summary
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`Part of Paper No.
`
`-— SEE OFFICE ACTION ON THE FOLLOWING PAGES -
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`Page 2 of 11
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`

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

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`Serial Number: 08172 13 16
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`Art Unit: 2751
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`and a “connection server" on page 35 of the Specification. In Claim 4, “email signal” appears to
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`read more clearly as “email address." In Claim 5, “processing” would read more clearly if
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`applicants specified the functions intended.
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`The claims have been examined insofar as clarity and reasonable certainty permits.
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`Appropriate correction is required.
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`Claim Rejections - 35 USC § 102
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`4.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`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.
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`5.
`
`Claims 1-3 and 5-6 are rejected under 35 U.S.C. l02(a) as being anticipated by VocalTec
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`Internet Phone” Version 2.5 (hereinafter “IPHONB”).
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`IPHONE is Internet telephony software with a graphic user interface that allows real-time
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`Internet voice communication between two computers--having one or more speakers and at least
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`one microphone--via a direct computer-to-computer link using TCPHP or SLIPIPPP.
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`IPHONE
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`utilizes lRCs (Internet Relay Servers) as Internet Phone Directories to remedy the difficulty
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`arising from identifying another’s dynamically assigned IP address, which changes each time a
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`user logs into his or her Internet Service Provider.
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`As to Claim 1, IPHONE is a computer program product for use with a computer system
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`having a dispiay and on audio transducer--it is software inherently for use with the computer
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`Page 4 of 11
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`

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`Serial Number: 08/721316
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`An Unit: 2751
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`'
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`i
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`Page 4
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`systems of two users, with each system having a display, and at least one speaker and
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`microphone.
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`Moreover, each system is operatively coupled to other computers and a server over a
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`computer network. Inhercntly the systems of each user is connected to the Internet, through
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`which they each are coupled to a plurality of computers and an IRC (lntemet Relay Server)
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`server.
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`IPHONE, a computer program product, inherently provides a computer usable medium
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`(one or more floppy disks, a CD-ROM, etc...) having computer readable code means (executable
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`code) embodied in the medium.
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`Furthermore, IPHONE, a computer program product, provides means, responsive to user
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`input commands, for establishing a point-to-point communications link with another computer
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`over the computer network. Inherently, IPHONE contains executable code, which when
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`executed, receives a user input (the clicking of the left button of a mouse whose pointer is above a
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`“Quick Dial Button,” see Internet Phone Help Index, Using Internet Phone (link), Setting a Quick
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`Dial Button (link)) and establishes a direct (see Readme.txt file, which is bundled with
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`iphone25.exe, §AlgQut Zhe Internet Phone and 13;, “The actual talk is done directly between the
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`PC's running the Internet Phone, and NOT via the IRC.”) point-to-point communications link
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`with another computer over the Internet. And as noted supra, IPHONE utilizes IRCs as Internet
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`Phone Directories to remedy the difficulty arising from identifying another’s dynamically assigned
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`IP address, which changes each time a user logs in to his or her Internet Service Provider.
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`Page 5 ofll
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`

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`Serial Number: 08/721316
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`Art Unit: 2751
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`Page 5_
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`Furthermore, IPHONE, a computer program product, provides means, responsive to
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`audio data from the audio transducer, for transmitting the audio data over the communications
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`link to the other computer. Inherently, when one of the two users with an established point—to-
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`point communications link speaks into his or her microphone, the analog audio signal is convened
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`by sofiware or hardware means to a digital signal and then sent through the Internet to the
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`computer of the other user.
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`Lastly, IPHONE provides meansfor generating a user-interface through which a user
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`may coact with the computer system. IPHONE, as a computer program product, inherently
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`contains executable code. This code, when executed, generates a plurality of windows with menu
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`bars and icons through which a user fully interacts with the software to fully effectuate Internet
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`telephony through his or her computer system. The user, as noted supra, may click the left button
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`of a mouse whose pointer is above a “Quick Dial Button,” which initiates and establishes a point-
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`to-point communications link with another computer (inherently, via its IP address) over the
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`Internet.
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`As to Claim 2, which depends on Claim l, IPHONE, a computer program product,
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`provides, in conjunction with its means for establishing a point-to-point communication link,
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`program code means, responsive to the networkprotocol address ofa secondprocessor, for
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`establishing a point—to-point communication link between afirst processor and a second
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`processor over the computer network
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`Page 6 of 11
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`

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`Serial Number: 08/721316
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`Art Unit: 2751
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`Page 6
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`Inherently, IPHONE, a computer program product, provides program code, which in
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`conjunction with its means for establishing a point-to-point communication link, when executed,
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`initiates and establishes, in response to a user clicking the left button of a mouse, whose pointer is
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`above a “Quick Dial Button” (see cite supra) a point-to-point communication link with another’s
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`computer, which is either a TCP/IP or SLIP/PPP communication link via the other’s IP address
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`over the Internet (see Internet Phone Help Index, Quick Tour (link), 4th page thereof).
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`As to Claim 3, which depends on Claim 2, IPHONE, a computer program product,
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`provides, in conjunction with its meansfor establishing a point-to-point communication link,
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`program code means for transmitting, jrom a first processor to a server, a query as to whether a
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`second processor is connected to the computer network‘, and program code means for receiving a
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`network protocol address ofthe second processor from the server, when the second processor is
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`connected to the computer network
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`IPHONE, a computer program product, provides program code, which in conjunction
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`with its means for establishing a point-to-point communication link, when executed, inherently
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`transmits, from a first processor to an IRC server, a query as to whether another user, whose
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`identity (name and email address) is contained in a Quick Dial Button, is connected to the IRC
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`network; and program code, which receives another’s IP address from an IRC server, when the
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`other is connected to the IRC network.
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`As to Claim 5, which depends on Claim 1, IPHONE, a program product, inherently
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`provides program code means for processing audio data. The analog audio data captured by a
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`Page 7 ofll
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`

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`Serial Number: 08/721316
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`Art Unit: 2751
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`Page 7
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`microphone is inherently converted to digital format before transmission across the Internet to
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`another user, where it is converted back to analog before directed to one or more speakers.
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`As to Claim 6, which depends on Claim 5, IPHONE teaches the use of VOCALTEC’s VC
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`Card, a voice compression card, by its users to increase the efficiency and quality of
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`communication (see Jnterngt Phone Help Indgg, 1/sing[nte:ngtP1;_qng (link), What is zntgrngt
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`11% (link), last paragraph).
`
`Claim Rejections - 35 USC § 102/103
`
`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. l02(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
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`second network protocol address from a second processor over the computer network,
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`inherently; and appears to provide program code means for transmitting an E-mail signal
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`containing a network protocol address from a first processor to a server over a computer
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`network
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`Page 8 ofll
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`

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`Serial Number: 08/721316
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`Art Unit: 2751
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`Page 8
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`IPHONE, when executed, inherently provides program code means for receiving the IP
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`address from a second processor over the computer network, since a direct Intemet connection
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`between the second and first processors is ultimately achieved. However as to the 102/103 issue,
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`it appears likely that IPHONE, when executed, provides program code for transmitting an E-mail
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`signal (E-mail address) containing a network protocol address (IP address) from a first processor
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`(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
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`is “on-line.” A user of IPHONE supplies the program with “user information” including his or her
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`email address, name and other information. When the user “logs on” to an IRC server, inherently
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`the user’s IP address and some type of identifying information is sent to the server, since another
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`user is able to locate the former user via a query containing some identifying information. An
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`email address is sufficiently unique to be efficient search criteria for locating a specific record
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`(user) against a list of records (users) for identification of whether a particular user is on-line, i.e.)
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`available to receive a “call.” It is highly likely that a user’s E-mail address is used by IPI-IONE as
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`search criteria.
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`Insofar as IPHONE does not use an E-mail address as search criteria, it would have been
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`obvious to one ordinarily skilled in the art at the time the invention was made to have used an E-
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`mail address as unique search criteria for determining whether a user associated with the E-mail
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`address was “on-line.” It would have been highly desirable to locate a specific user rather than a
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`Page 9 ofll
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`

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`Serial Number: 031721316
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`Art Unit: 2751
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`plurality of users, arising from use of common search criteria, so that a correct communication
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`link could be established in a minimal amount of time.
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`Conclusion
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`9.
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`The following prior art made of record and not relied upon is considered pertinent to
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`applicants’ disclosure:
`
`a.
`
`R 0 , www.q5.com. Examiner considers this website,
`eeti
`nd Cooltal
`Netsca e Conferenc
`which works in conjunction with the Internet telephony software product Netscape®Cooltalk'""‘, as a
`potential 102(a)r'l 02(b) bar to applicants’ claims and as a highly probative l03(a) reference.
`
`Gill, Re: Getting IP address ofPPP-connected Mac, <j gull-03 0495 10053 50001@pm0 l 2-
`l1.dialip.mich.net>.
`Examiner considers this l03(a) reference as strong motivation to combine with prior art-lntemet
`telephony software, such as Netscape®CooltalkT’“, both a central Internet database for the storage
`and dissemination of dynamically assigned IP addresses of lntemet telephony software users
`wishing to disseminate their IP addresses to others connected to the lntemet, as well as program code
`to operatively interact with said database.
`
`Qtfl, Re: Internet Phonefor Mac?, <jgull-17049501!6450{}0l@pm049-28.dialip.mich.net>.
`Examiner considers this 103(a) reference as strong motivation to combine with prior art lntemet
`telephony software both software andfor hardware-based compression means, as well as a central
`lntemet database for the storage and dissemination of the dynamically assigned IP addresses of
`lntemet telephony sofiware users wishing to disseminate their IP addresses to others connected to
`the lntemet, and program code to operatively interact with said database.
`
`10.
`
`Please address inquiries concerning this and earlier communications from the examiner to
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`George F. Wallace, whose telephone number is 7031305-2277. Examiner can be reached M-F
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`from 9:00 a.m. to 5:00 p.tn. EST.
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`If attempts to reach the examiner by phone fail, Eddie P. Chan, examiner's supervisor,
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`can be reached at 703305-9712.
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`The fax number for Art Unit 2751 is 7ll3l308-6606.
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`Page 10 of 11
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`

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`Serial Number: 08!'721316
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`Art Unit: 2751
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`Any inquiry of a general nature or relating to the status of this application should be
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`directed to the Group receptionist at 703805-3900.
`
`. Wallace, J.D.’
`eorge
`March 26, 1998
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`Page 11 of 11