PTOISB/08a (01-10)
`Doc code: IDS
`Approved for use through 07/31/2012. OMB 0651-0031
`Doc description: Information Disclosure Statement (IDS) Filed
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number.
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`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`( Not for submission under 37 CFR 1.99)
`
`Application Number
`
`12103138
`
`Filing Date
`
`First Named Inventor
`
`2008-04-15
`I Mark R. Smith
`
`Art Unit
`
`Examiner Name
`
`2617
`I CHAMBERS, TANGELA T
`
`Attorney Docket Number
`
`29CP-175060
`
`Examiner Cite
`Initial*
`No
`
`Patent Number
`
`Kind
`Code1 Issue Date
`
`Name of Patentee or Applicant
`of cited Document
`
`Pages.Columns,Lines where
`Relevant Passages or Relevant
`Figures Appear
`
`U.S.PATENTS
`
`Remove
`
`1
`
`If you wish to add additional U.S. Patent citation information please click the Add button.
`
`U.S.PATENT APPLICATION PUBLICATIONS
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`Examiner
`Initial*
`
`Cite No
`
`Publication
`Number
`
`Kind Publication
`Code1 Date
`
`Name of Patentee or Applicant
`of cited Document
`
`Pages.Columns,Lines where
`Relevant Passages or Relevant
`Figures Appear
`
`1
`
`20080220739
`
`A1
`
`2008-09-11
`
`MUOIO etal.
`
`2
`
`3
`
`4
`
`5
`
`20050222913
`
`A1
`
`2005-10-06
`
`EISENBERG
`
`20060149644
`
`A1
`
`2006-07-06
`
`SULMAR et al.
`
`20070162553
`
`A1
`
`2007-07-12
`
`DEWING etal.
`
`20040058667
`
`A1
`
`2004-03-25
`
`PIENMAKI et al.
`
`EFSWeb2.1.17
`
`GTL 1004
`IPR of U.S. Patent No. 8,626,118
`
`GTL 1004-1
`
`

`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`( Not for submission under 37 CFR 1.99)
`
`Application Number
`
`12103138
`
`Filing Date
`
`First Named Inventor
`
`Art Unit
`
`Examiner Name
`
`2008-04-15
`I Mark R. Smith
`2617
`I CHAMBERS, TANGELA T
`
`Attorney Docket Number
`
`29CP-175060
`
`6
`
`7
`
`8
`
`20020183040
`
`A1
`
`2002-12-05
`
`LUNDSTROM et al.
`
`20030027555
`
`A1
`
`2003-02-06
`
`MALACKOWSKI et al.
`
`20060098796
`
`A1
`
`2006-05-11
`
`LINK
`
`If you wish to add additional U.S. Published Application citation information please click the Add button. Add
`Remove
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`FOREIGN PATENT DOCUMENTS
`
`Examiner Cite Foreign Document
`Initial*
`No Number3
`
`Country
`Code2 i
`
`Kind Publication
`Code4 Date
`
`Name of Patentee or
`Applicant of cited
`Document
`
`Pages.Columns,Lines
`where Relevant
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`T5
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`1
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`D
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`NON-PATENT LITERATURE DOCUMENTS
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`(book, magazine, journal, serial, symposium, catalog, etc), date, pages(s), volume-issue number(s),
`publisher, city and/or country where published.
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`T5
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`1
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`D
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`If you wish to add additional non-patent literature document citation information please click the Add button Add
`
`Examiner Signature I
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`I Date Considered
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`EXAMINER SIGNATURE
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`*EXAMINER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through a
`citation if not in conformance and not considered. Include copy of this form with next communication to applicant.
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`EFSWeb2.1.17
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`GTL 1004-2
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`

`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`( Not for submission under 37 CFR 1.99)
`
`Application Number
`
`12103138
`
`Filing Date
`
`First Named Inventor
`
`Art Unit
`
`Examiner Name
`
`2008-04-15
`I Mark R. Smith
`2617
`I CHAMBERS, TANGELA T
`
`Attorney Docket Number
`
`29CP-175060
`
`1 See Kind Codes of USPTO Patent Documents at www.USPTO.GOV or MPEP 901.04. 2 Enter office that issued the document, by the two-letter code (WI PO
`Standard ST.3). 3 For Japanese patent documents, the indication of the year of the reign of the Emperor must precede the serial number of the patent document.
`4 Kind of document by the appropriate symbols as indicated on the document under WI PO Standard ST.16 if possible. 5 Applicant is to place a check mark here i
`English language translation is attached.
`
`EFSWeb2.1.17
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`GTL 1004-3
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`

`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`( Not for submission under 37 CFR 1.99)
`
`Application Number
`
`12103138
`
`Filing Date
`
`First Named Inventor
`
`Art Unit
`
`Examiner Name
`
`2008-04-15
`I Mark R. Smith
`2617
`I CHAMBERS, TANGELA T
`
`Attorney Docket Number
`
`29CP-175060
`
`Please see 37 CFR 1.97 and 1.98 to make the appropriate selection(s):
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`CERTIFICATION STATEMENT
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`That each item of information contained in the information disclosure statement was first cited in any communication
`D from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the
`information disclosure statement. See 37 CFR 1.97(e)(1 ).
`
`OR
`
`That no item of information contained in the information disclosure statement was cited in a communication from a
`foreign patent office in a counterpart foreign application. and, to the knowledge of the person signing the certification
`after making reasonable inquiry, no item of information contained in the information disclosure statement was known to
`D any individual designated in 37 CFR 1.56(c) more than three months prior to the filing of the information disclosure
`statement. See 37 CFR 1.97(e)(2).
`
`D See attached certification statement.
`D The fee set forth in 37 CFR 1.17 (p) has been submitted herewith.
`~ A certification statement is not submitted herewith.
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`SIGNATURE
`A signature of the applicant or representative is required in accordance with CFR 1.33, 1 0.18. Please see CFR 1.4(d) for the
`form of the signature.
`
`Signature
`
`Name/Print
`
`/David E. Heisey/
`
`David E. Heisey
`
`Date (YYYY-MM-DD)
`
`2013-03-01
`
`Registration Number
`
`42651
`
`This collection of information is required by 37 CFR 1.97 and 1.98. The information is required to obtain or retain a benefit by the
`public which is to file (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR
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`FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria,
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`EFSWeb2.1.17
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`GTL 1004-4
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`Privacy Act Statement
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`The information provided by you in this form will be subject to the following routine uses:
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`The information on this form will be treated confidentially to the extent allowed under the Freedom of Information Act
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`his/her designee, during an inspection of records conducted by GSA as part of that agency's responsibility to
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`A record from this system of records may be disclosed, as a routine use, to the public after either publication of
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`A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local law
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`EFSWeb2.1.17
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`GTL 1004-5
`
`

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`Electronic Patent Application Fee Transmittal
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`Application Number:
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`Filing Date:
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`Title of Invention:
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`SYSTEM AND METHOD FOR AUTHORIZING AND MONETIZING COLLECT
`CELLULAR TELEPHONE CALLS
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`First Named Inventor/Applicant Name:
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`Mark R. Smith
`
`Filer:
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`DAVID E. HEISEY/Cynthia Stroesser
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`Attorney Docket Number:
`
`29CP-175060
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`Filed as Large Entity
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`ex parte reexam Filing Fees
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`Description
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`Fee Code
`
`Quantity
`
`Amount
`
`Sub-Total in
`USD($)
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`REQUEST FOR EX PARTE REEXAMINATION
`
`1812
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`17750
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`GTL 1004-6
`
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`Description
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`Fee Code
`
`Quantity
`
`Amount
`
`Sub-Total in
`USD($)
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`
`Total in USD ($)
`
`17750
`
`GTL 1004-7
`
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`Electronic Acknowledgement Receipt
`
`EFSID:
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`Application Number:
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`15098777
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`90012802
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`International Application Number:
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`Confirmation Number:
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`4779
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`
`SYSTEM AND METHOD FOR AUTHORIZING AND MONETIZING COLLECT
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`
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`
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`
`Customer Number:
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`Filer:
`
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`
`DAVID E. HEISEY
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`Attorney Docket Number:
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`Receipt Date:
`
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`
`Filing Date:
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`Payment information:
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`yes
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`$17750
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`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
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`Charge any Additional Fees required under 37 C.F.R. Section 1.16 (National application filing, search, and examination fees)
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`GTL 1004-8
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`Charge any Additional Fees required under 37 C.F.R. Section 1.19 (Document supply fees)
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`Charge any Additional Fees required under 37 C.F.R. Section 1.20 (Post Issuance fees)
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`Charge any Additional Fees required under 37 C.F.R. Section 1.21 (Miscellaneous fees and charges)
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`Reexam Certificate of Service
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`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
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`New Applications Under 35 U.S.C. 111
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`
`PTO/SB/57 (07-12)
`Approved for use through 02/28/2013. OMB 0651-0064
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`(Also referred to as FORM PT0-1465)
`REQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`Mail Stop Ex Parte Reexam
`Attorney Docket No.: 29CP-175060
`Commissioner for Patents
`P.O. Box 1450
`Date: March 1, 2013
`Alexandria, VA 22313-1450
`8,190,121
`[X] This is a request for ex parte reexamination pursuant to 37 CFR 1.510 of patent number
`issued May 29, 2012
`The request is made by:
`- - - - - - - - -
`0 patent owner.
`[X] third party requester.
`[X] The name and address of the person requesting reexamination is:
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`
`1.
`
`2.
`
`12275 El Camino Real, Suite 200
`San Diego, CA 92130
`
`3.
`
`a. A check in the amount of$ _____ is enclosed to cover the reexamination fee, 37 CFR 1.20(c)(1 ),
`
`b.
`
`c.
`
`The Director is hereby authorized to charge the fee as set forth in 37 CFR 1.20(c)(1)
`to Deposit Account No. 504562
`,
`Payment by credit card. Form PT0-2038 is attached; or
`
`d. Payment made via EFS-Web.
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`Any refund should be made by D check or [X] credit to Deposit Account No. _5_0_4_5_6_2 ____ _
`37 CFR 1.26( c). If payment is made by credit card, refund must be to credit card account.
`[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 1.510(b)(4)
`
`4.
`
`5.
`
`CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`
`D Landscape Table on CD
`
`6. D
`7. D
`
`b. Specification Sequence Listing on:
`
`Nucleotide and/or Amino Acid Sequence Submission
`If applicable, items a. - c. are required.
`a. D Computer Readable Form (CRF)
`i. D CD-ROM (2 copies) or CD-R (2 copies); or
`ii. D paper
`c. D Statements verifying identity of above copies
`8. D A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is included.
`[X] Reexamination of claim(s) _1_-_5_9 ______________________ is requested.
`9.
`10. [X] A copy of every patent or printed publication relied upon is submitted herewith including a listing thereof on
`Form PTO/SB/08, PT0-1449, or equivalent.
`
`11. D An English language translation of all necessary and pertinent non-English language patents and/or printed
`publications is included.
`
`[Page 1 of 2]
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`GTL 1004-14
`
`

`
`EXHIBIT A
`EXHIBIT A
`
`GTL 1004-15
`
`GTL 1004-15
`
`

`
`111111111111111111111111111111111111111111111111111111111111111111111111111
`US008190121B2
`
`c12) United States Patent
`Smith et al.
`
`(10) Patent No.:
`(45) Date of Patent:
`
`US 8,190,121 B2
`May 29,2012
`
`(54) SYSTEM AND METHOD FOR AUTHORIZING
`AND MONETIZING COLLECT CELLULAR
`TELEPHONE CALLS
`
`(75)
`
`Inventors: Mark R. Smith, Coral Springs, FL (US);
`Jeremy R. Martin, Boca Raton, FL
`(US); Michael J. FitzGibbon, Delray
`Beach, FL (US); Matthew Joseph
`Simons, Plymouth, MI (US); John L.
`Duffy, Delray Beach, FL (US)
`
`(73) Assignee: 3C Interactive LLC, Boca Raton, FL
`(US)
`
`( *) Notice:
`
`Subject to any disclaimer, the term of this
`patent is extended or adjusted under 35
`U.S.C. 154(b) by 953 days.
`
`(21) Appl. No.: 12/103,138
`
`(22) Filed:
`
`Apr. 15, 2008
`
`(65)
`
`Prior Publication Data
`
`US 2009/0054031 Al
`
`Feb.26,2009
`
`Related U.S. Application Data
`
`(60) Provisional application No. 60/935,634, filed on Aug.
`23,2007.
`
`(51)
`
`Int. Cl.
`H04W 4124
`(2009.01)
`(52) U.S. Cl .
`........................................ 455/406; 455/408
`(58) Field of Classification Search ................... 455/406
`See application file for complete search history.
`
`(56)
`
`References Cited
`
`U.S. PATENT DOCUMENTS
`7,042,992 B1 *
`5/2006 Falcone eta!. ........... 379/114.21
`2002/0183040 A1 *
`12/2002 Lundstrom et al ............ 455/406
`2003/0027555 A1 *
`2/2003 Malackowski et al ........ 455/414
`2004/0058667 A1 *
`3/2004 Pienmaki eta!. ............. 455/406
`2004/0102180 A1 *
`5/2004 Olah ............................. 455/406
`2005/0078808 A1 *
`4/2005 Winstead eta!. .......... 379/114.2
`2006/0098796 A1 *
`5/2006 Link ........................ 379/114.21
`2007/0162553 A1 *
`7/2007 Dewing eta!. ................ 709/207
`2008/0220739 A1 *
`9/2008 Muoio eta!. .................. 455/406
`201110092183 A1 *
`4/2011 Wieczorek .................... 455/406
`FOREIGN PATENT DOCUMENTS
`1670276 A1 * 6/2006
`EP
`2369971 A * 6/2002
`GB
`* cited by examiner
`Primary Examiner- Nick Corsaro
`Assistant Examiner- Tangela T. Chambers
`(74) Attorney, Agent, or Firm- Zimmerman Intellectual
`Property Services LLC
`ABSTRACT
`(57)
`The collect cellular call identifies the cellular telephone car(cid:173)
`rier and called party cell phone. After determining whether
`the carrier and phone accept message service charges (SMS),
`a voice response module seeks positive authorization from
`the called party with the telephone. If positive, the system
`facilitates a connection between the calling party and the
`called party and initiates a predetermined billing charge
`assigned to the cellular telephone number. If the carrier or the
`cell phone is not enabled or if no authorization is obtained
`from the called party, the system facilitates a denial of
`completion signal. A timer monitors the length a the collect
`cellular call. Databases are accessed to locate the carrier and
`called cell phone number approved list of numbers and deny(cid:173)
`service list of numbers.
`59 Claims, 4 Drawing Sheets
`
`GTL 1004-16
`
`

`
`Calling
`Party
`10
`
`12~
`
`fl
`
`16
`
`Provider
`Operator J--_..L._---~
`Service
`(OSP)
`
`--,---1
`
`I
`
`Cell
`Phone
`Connect
`Service
`(CCS)
`
`$
`From
`./---------
`~-----~--- Carrier 22
`
`'-43
`
`~
`00 .
`
`~
`~
`~
`
`~ = ~
`
`Carrier
`c
`
`26
`
`Phone
`Service
`Provider
`(Telecom)
`
`28
`
`I Collect
`Call
`Billing
`Serv.
`
`~Alternate e Coiled Party 11
`
`29
`
`24
`
`Carrierl
`
`/
`
`I B - : / /
`$ / , ,/1/ Module
`~) I
`To [!_43
`ccs
`20
`
`I
`
`/ / (
`\
`$ ,
`
`20
`
`22
`
`31
`
`Coiled
`
`3
`
`6
`
`~
`~
`N
`~'-CI
`N
`
`0 ....
`
`N
`
`('D
`('D
`
`rJ1 =(cid:173)
`.....
`....
`0 .....
`
`.j;o.
`
`d
`rJl
`"'010
`""""'
`\C
`"'=
`""""' N
`""""' = N
`
`~
`r-J
`~ Porty 30
`A /
`{
`JBiiil
`\ L.__}j
`'
`\ '~ --~ '
`-~41
`~-$
`
`''----
`
`- - -
`
`FIG.1
`
`GTL 1004-17
`
`

`
`U.S. Patent
`
`May 29,2012
`
`Sheet 2 of 4
`
`US 8,190,121 B2
`
`50
`
`ItS
`
`Collect Call Placed W/ OSP
`Designated as Cell Connect Serv.(CCS)
`W/ Called Cell Phone No.
`
`FIG.2
`
`52
`
`OSP Passes
`To CCS
`
`56
`
`Carrier,etc.
`
`No. in
`
`N
`
`Place Call to CalledCell No. W/
`Interactive Voice Response (IVR) Module
`
`64
`
`66
`
`GTL 1004-18
`
`

`
`U.S. Patent
`
`May 29,2012
`
`Sheet 3 of 4
`
`US 8,190,121 B2
`
`68
`
`FIG.2A
`
`81
`
`83
`
`IVR Serv.
`Not Available"
`ms
`
`N
`
`OSP Notifies CCS
`of Called Party Cell No.,
`Active Session id,Price
`Point
`
`IVR msg "We will Connect
`
`76
`
`78
`
`80
`
`91
`
`CCS,send
`SMS Premium
`Chg. to Called
`Party Cell
`No. Carrier
`
`93
`
`Log Call Event
`In Internal 1---~
`db
`
`GTL 1004-19
`
`

`
`U.S. Patent
`
`May 29,2012
`
`Sheet 4 of 4
`
`US 8,190,121 B2
`
`IVR Time Limit Reminder
`Sent as IVR msg.
`
`FIG.2B
`
`GTL 1004-20
`
`

`
`US 8,190,121 B2
`
`1
`SYSTEM AND METHOD FOR AUTHORIZING
`AND MONETIZING COLLECT CELLULAR
`TELEPHONE CALLS
`
`This is a regular patent application based upon and claim-
`ing the benefit of priority of provisional patent application
`Ser. No. 60/935,634, filedAug. 23,2007, the content of which
`is incorporated herein by reference thereto.
`The present invention relates to a method, a system and
`programming instructions stored on computer readable 10
`medium for authorizing and monetizing collect cellular tele(cid:173)
`phone calls.
`
`5
`
`2
`connect the caller and the called party). A timing function is
`often activated upon facilitating the connection between the
`calling party and the called party. In order to det