`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`Unltcd States Patent and Trademark OITICI
`Addnsa: COMMTSSIONER FOR PATENTS
`FD. Box 1450
`Alcxuflril. Virginia 223l i-Idsfl
`M.uspto.gov
`
`APPLICATION NO.
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`901'0|0.416
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`FILING DRTE
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`02“ N2 009
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`42624
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`7590
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`05” IQUIO
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`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`4300 WILSON BLVD. 7TH FLOOR
`ARLINGTON, VA 22203
`
`FIRST NAMED INVEN‘DOR
`
`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`6] 08?04
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`2655-0! 83
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`lflfil
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`EXAMINER
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`“RT UN"
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`PAPER NUM HE R
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`DATE MAlLED: 05” 112010
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`PTO-90C (Rev. [0!03)
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`Page 1 of 12
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`Cisco--Exhibit1022
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`Page 1 of 12
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`Cisco -- Exhibit 1022
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`CWISSIOI’I Br ID! P318 HE
`Unilecl Siam; Patent and Trademark OffltB
`PO. 5011450
`Alexandrla, VA 2931 3-1450
`mannequin
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`DO NOT USE IN PALM PRINTER
`
`{THIRD PARTY REGUESTER'S CORRESPONDENCE RDDRESS}
`
`Blakely Sokoloff Taylor 8. Zafman LLP
`
`1279 Oakmead Parkway
`
`Sunnyvale. CA 94085-4040
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/010 416.
`
`PATENT NO. m.
`
`ART UNIT 3992.
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`~.
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`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parfe reexamination proceeding (3? CFR 1.550(0).
`
`Where this copy is supplied after the reply by requester. 37 CFR 1.535, or the time for filing a
`reply has passed. no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(9)).
`
`PTOL—465 {Rev.0?-04)
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`Page 2 of 12
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`Cisco-- Exhibit 1022
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`Page 2 of 12
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`Cisco -- Exhibit 1022
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`Office Action in Ex Parte Reexamination
`
`Patent Under Reexamination
`Control No.
`
`902010.416 6108704
`Examine-r
`ALEXANDER J. KOSOWSKI
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`
`bE This action is made FINAL.
`3E Responsive to the communicationts) filed on 27 Novel-near 2003 .
`cl: A statement under 37 CFR 1.530 has not been received from the patent Owner.
`
`A shortened statutory period for response to this action is set to expire g monthts) from the mailing date of this letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuance oi an ex parte reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550tc}.
`If the period for response specified above is less than thirty (30} days. a response within the statutory minimum of thirty (30) days
`will be considered timely.
`
`Part |
`
`THE FOLLOWING ATTACHMENTiS) ARE PART OF THIS ACTION:
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`1. E] Notice of References Cited by Examiner. PTO-892.
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`2. E information Disclosure Statement. PTOI'SBI‘OS.
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`3.
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`4.
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`I] Interview Summary, PTO-474.
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`II]
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`.
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`Part It
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`SUMMARY OF ACTION
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`ta.
`b.
`1
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`2.
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`3.
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`4.
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`5.
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`s.
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`7.
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`a.
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`UBEIEHZIZIEIIZIIZI
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`Claims 1-7 and 10-44 are subject to reexamination.
`ClaimsW are not subject to reexamination.
`
`Claims 10 and 21 have been canceled in the present reexamination proceeding.
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`Claims 1-7 11-20 22—42 are patentable andior confirmed.
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`Claims 43 and 44 are rejected.
`
`Claims JG obiected to.
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`The drawings, filed on JG acceptable.
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`The proposed drawing correction, filed on
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`has been (To) C] approved (7b)I:I disapproved.
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`Acknowledgment is made of the priority claim under 35 U.5.C. § 119(aJ-(d) or (I).
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`ail] Alt b)I:I Some“ c)I:| None
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`of the certified copies have
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`10. I] Other:
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`1|:I been received.
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`2|:I not been received.
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`3|] been filed in Apptication No. M
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`4|:I been filed in reexamination Control No. w___
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`5|:I been received by the International Bureau in PCT application No. _
`‘ See the attached detailed Office action for a list of the certified copies not received.
`
`9. El Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal
`matters. prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 CD.
`11. 453 0.6. 213.
`
`
`cc: chucslcr (if third party requester)
`us. Patent and Trademark Olliee
`PTOL-466 (Rev. 00-06)
`
`Office Action in Ex Farte Reexamination
`
`Part or Paper No. 20100503
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`Page 3 of 12
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`Cisco-- Exhibit1022
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`Page 3 of 12
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`Cisco -- Exhibit 1022
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`

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`ApplicationfControl Number: 901’010,416
`Art Unit: 3992
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`Page 2
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`DETAILED ACTION
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`1)
`
`This Office action addresses claims 1-? and 10-44 of United States Patent Number
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`6,108,704 (Hutton et al), for which it has been determined in the Order Granting Ex Parte
`
`Reexamination (hereafter the “Order”) mailed 3! 1 1109 that a substantial new question of
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`patentability was raised in the Request for Ex Pane reexamination filed on 2!] 7(09 (hereafter the
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`“Request”}. Claims 8-9 are not subject to reexamination. This is a final office action in response
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`to the amendment filed 1 lf27t‘09. The rejection of claims 44-45 is maintained below. All other
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`previously rejected claims are confirmed below.
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`IDS
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`2)
`
`With regard to the IDS’s filed 12ll4f09, 12f21f09, 1(261’10, 2f24l10, 3f5f10, 5f6fl0:
`
`Where the lDS citations are submitted but not described, the examiner is only responsible for
`cursorily reviewing the references. The initials of the examiner on the PTO-1449 indicate only
`that degree of review unless the reference is either applied against the claims, or discussed by the
`examiner as pertinent art ofinterest, in a subsequent office action. See Guidelines for
`Reexamination of Cases in View ofIn re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d
`1295 (Fed. Cir. 1997), 64 FR at 15347, 1223 Off. Gaz. Pat. Office at 325 (response to comment
`6).
`
`Consideration by the examiner of the information submitted in an IDS means that the
`examiner will consider the docwnents in the same manner as other documents in Office search
`
`files are considered by the examiner while conducting a search of the prior art in a proper field of
`search. The initials ofthe examiner placed adjacent to the citations on the PTO—i449 or
`PTOJSBHOSA and 083 or its equivaient mean that the information has been considered by the
`examiner to the extent noted above.
`
`Regarding IDS submissions MPEP 2256 recites the following: "Where patents,
`publications, and other such items of information are submitted by a party (patent owner or
`requester) in compliance with the requirements of the rules, the requisite degree of consideration
`to be given to such information will be normally limited by the degree to which the party filing
`the information citation has explained the content and relevance of the information"
`Accordingly, the IDS submissions have been considered by the Examiner only with the
`scope required by MPEP 2256, unless otherwise noted.
`
`in addition, that which are not either prior art patents or prior art printed publications
`have been crossed out so as not to appear reprinted on the front page of the patent.
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`Page 4 of 12
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`Cisco -- Exhibit 1022
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`ApplicationiControl Number: 90i010,416
`Art Unit: 3992
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`Page 3
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`3)
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`Claim Rejections - 35 USC § I02
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`Ciaim Rejection Paragraphs
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. l02 that form the
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`basis for the rejections under this section made in this Office action:
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`A persorr shall be entitled to a patent unless -
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`(b) the invention was patented or described in a printed publication in this ora foreign country or in public use or on
`salt: in this country. more than one year prior to the date ot‘application for patent in the United States.
`
`Issue 1
`
`4)
`
`Claims 43-44 are rejected under 35 U.S.C. 10203) as being unpatentable by NetBIOS
`
`(See claim mapping chart in Exhibit M, pages 36-40, incorporated by reference).
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`Issue 2
`
`S)
`
`Examiner notes the following will represent the Etherphone references utilized for the
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`rejection below (All considered a single reference as published together):
`
`"Zeliweger ": An Overview ofthe Etherphone System and its Applications
`
`”Swineharr ”: Telephone Management in the Etherphone System
`
`"Terry": Managing Stored Voice in the Etherphone System
`
`“Swinehart 2 System Support Requirements for Multi~media Workstations
`
`"Zellweger 2 Active Paths through Multimedia Documents
`
`6)
`
`Claims 43-44 are rejected under 35 U.S.C. 102(b) as being unpatentable by Etherphone
`
`(See claim mapping chart in Exhibit N, pages 33-35, incorporated by reference).
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`ApplicationfControl Number: 90f010,416
`Art Unit: 3992
`
`Page 4
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`Response to Arguments
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`7)
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`In response to the amendment filed 1 1127509, some rejections are sustained as noted
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`above, and others have been withdrawn. The following aspects of the current prosecution will be
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`addressed as noted below:
`
`I
`
`a)
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`b)
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`c)
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`d)
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`e)
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`VocalChat are not printed publications.
`
`The 1.132 Declaration
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`Objective evidence of non-obviousness
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`Withdrawn rejections
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`Maintained rejections
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`a)
`
`The amendment submitted 1 197109 includes arguments that the VocalCha’t references
`
`are not printed publications. The Patent Owner (PO) cites exhibit L ofthe Request (the
`
`.
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`declaration ofAlon Cohen) as the only evidence provided by P0 that the VocaIChat references '
`are printed publications. Examiner notes that the Alon Cohen declaration fails to comply with 3'?
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`C.F.R. 1.68, including not setting forth in the body of the declaration that all statements made of
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`the declarant's own knowledge are true and that all statements made on information and belief
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`are believed to be true. Therefore, PO’s arguments questioning the declaration as well as
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`whether printed publication status has been established as set forth under statute are found
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`persuasive. Examiner therefore withdraws all rejections utilizing the VocalChat references.
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`
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`Page 6 of 12
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`Application/Control Number: 90/010,416
`Art Unit: 3992
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`Page 5
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`b)
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`Examiner notes that all evidence presented has been considered in its entirety, including
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`both PO’s arguments, including secondary considerations, as well as the l.l32 Declaration
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`submitted by expert Ketan Mayer-Patel.
`
`c)
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`Examiner notes that PO’s arguments regarding objective evidence of non-obviousness,
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`including commercial success and failure of others have been considered, however no nexus has
`
`been provided between the claimed invention and the submitted evidence as required by at least
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`MPEP 716.03. Therefore, this evidence is not found persuasive.
`
`d)
`
`In light of PO’s arguments and amendments filed 1 1/27/09, as well as the declaration of
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`expen Mayer-Patel, examiner withdraws the rejections ofclaims I-7 and 10-42. Examiner finds
`
`the presented arguments to be persuasive.
`
`With regard to the NetBios rejection, examiner agrees with declarant Mayer-Patel that
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`bringing dynamic addressing into a NetBIOS type system would create a new set of obstacles
`
`that would need to be solved that are not obvious in view of the combination of references.
`
`In
`
`addition, examiner notes with regard to the rejection of claims 10-31 that NetBIOS does not
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`necessarily inherently include a "user interface", and support for such inherency is not currently
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`of record.
`
`In addition, amended claims I I and 22 (previously 10 and 21) now require the
`
`dynamic addressing aSpects of the other claims 1-7 and 10-42.
`
`With regard to the rejection under Etherphone, examiner agrees with declarant Mayer-
`
`Patel that the Etherphone system, which utilizes a datagram multicast, would not be obviously
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`Application/Control Number: 90/010,416
`Art Unit: 3992
`
`Page 6
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`combinable with DHCP due to expiration of address leases. In addition, amended claims 1 l and
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`22 (previously 10 and 21) now require the dynamic aspects of the other claims 1-7 and 10-42.
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`A reasons for confirmation for the claims discussed above will follow in a subsequent
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`office action.
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`c)
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`The rejection of claims 43-44 are maintained in view of NetBlOS and Etherphone.
`
`With regard to the rejection under NetBlOS, maintained above:
`
`PO first argues with regard to claim 43 that NetBlOS does not teach that "the processes
`
`receive network protocol address ‘following connection to the computer network’”. However,
`
`examiner notes that this limitation is not required by the current claim language. Claim 43
`
`recites "the network protocol address forwarded to the database following connection to the
`
`computer network". This claim language implies that the computer may already have an IP
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`address before connecting to the sewer. Examiner notes, for example, that claim 1 requires
`
`receiving a network protocol address "following connection to the computer network". Claim 43
`does not require this. Examiner notes that the original rejection was meant to be a rejection
`
`under 35 U.S.C. 102(b), despite P0 attempting to argue a rejection under 35 U.S.C. 103(a) which
`
`was not made. As claim 43 does not require the same DHCP aspects as other independent
`
`claims, the arguments are therefore not found persuasive in view of declarant Mayer-Patel.
`
`PO secondly argues with regard to claim 43 that NetBlOS does not teach a database
`
`“having a network protocol address for a selected plurality of processes having on-line status
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`with respect to the computer network”. PO argues that having an “active name” is not
`
`synonymous with an “on-line status", and that an “active name" simply refers to "a name that has
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`ApplicationJControl Number: 901’010,416
`Art Unit: 3992
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`Page 7
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`been registered and that has not yet been de-registered". However, examiner notes that PO's
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`specification a: col. 5 lines 39—44 teaches that the on-line status information may not always be
`
`current, and may be updated, for example, only every 24 hours based on operator configuration.
`Therefore, the database ofNetBIOS which contains active name information reads on claim 43,
`
`whether or not the user data is current.
`
`With regard to claim 44, PO argues similar to the dynamic addressing argument above
`
`with regard to claim 43. Claim 44 also recites “forwarding” rather than “reCeiving” an address.
`
`Therefore, referring to claim 44, see the response to arguments for claim 43 above.
`
`PO also argues with regard to claim 44 that NetBIOS does not teach that an "active
`
`name" is syn0nymous with " whether the second process is connected to the computer network".
`
`As noted by examiner above with regard to claim 43, NetBIOS teaches that a process has
`
`' connected and wasactive. There is no claim requirement that the database be current based on
`
`PO’s specification.
`
`With regard to the rejection under Etherphone, maintained above:
`
`PO argues with regard to claim 43 that Figure 3 of Zellewegerl “does not show that the
`
`cited database includes the claimed "network protocol address".
`
`in response, examiner notes that
`
`Figure 3 references a user interface aspect of Etherphone. This is separate from the hardware
`
`workings of the system. Swinehartl, page 4, clearly teaches that the “voice control server
`
`manages voice switching by sending to each Etherphone or service the network addresses of the
`
`other participants". Therefore, the database contains the required network protocol addresses.
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`Applicatiow‘Control Number: 901010316
`Art Unit: 3992
`
`Page 8
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`Next, P0 argues that Etherphone does not disclose the required dynamic addressing. In
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`response, examiner notes the response to NetBIOS above. Dynamic addressing is not required in
`
`the claim language ofclaim 43.
`
`With regard to claim 44, PO argues that no citation has been made regarding a query .
`
`being sent to an address server. Examiner notes that given a broadest reasonable interpretation,
`
`an address server is merely a server that can hold a database of addresses. The term does not
`
`specifically require the server to perform DHCP functionality. Zellevvegerl, page 3, clearly
`
`teaches the use of remote procedure calls to a server for establishing connections between two
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`parties, which reads on the claimed limitation.
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`Therefore, the current arguments regarding claims 43-44 are not persuasive, and the
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`rejections above are maintained.
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`Applicatiom’Control Number: 90l010,416
`Art Unit: 3992
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`-
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`Page 9
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`THIS ACTION IS MADE FINAL.
`
`Conclusion
`
`Extensions of time under 37 CFR 1.136(3) do not apply in reexamination
`
`proceedings. The provisions of 3? CFR l.-l 36 apply only to "an applicant" and not to parties in a
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`reexamination proceeding. Further, in 35 U.S.C. 305 and in 37 CFR 1.550(3), it is required that
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`reexamination proceedings "will be conducted with special dispatch within the Office."
`
`Extensions of time in reexamination proceedings are provided for in 37 CFR
`
`1.550(e). A request for extension oftirne must be filed on or before the day on which a response
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`to this action is due, and it must be accompanied by the petition fee set forth in 37 CFR l.17(g).
`
`The mere filing ofa request will not effect any extension oftime. An extension oftime will be
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`granted only for sufficient cause, and for a reasonable time specified.
`
`The filing ofa timely first response to this final rejection will be construed as including a
`request to extend the shortened statutory period for an additional month, which will be granted
`
`even if previous extensions have been granted.
`
`In no event however, will the statutory period for
`
`response expire later than SIX MONTHS from the mailing date ofthe final action. See MPEP §
`
`2265.
`
`Ali correSpondence relating to this ex parte reexamination proceeding should be directed
`
`as follows:
`
`By U.S. Postal Service Mail to:
`
`Mail Stop Ex Parte Reexam
`
`
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`Page IO
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`Application/Control Number: 90/010,416
`Art Unit: 3992
`
`Al 1N: Central Reexamination Unit
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By hand to:
`
`Customer Service Window
`
`Randolph Building
`401 Dulany St.
`Alexandria, VA 22314
`
`By EFS-Web:
`
`Registered users of EFS-Web may alternatively submit such correspondence via the
`electronic filing system EFS-Web, at
`
`httpsz/lsportal.uspto.gov/agthenticate/authenticateuserlocalepfhtml
`
`EFS-Web offers the benefit of quick submission to the particular area of the Office that
`needs to act on the correspondence. Also, EFS-Web submissions are “soft scanned” (i.e.,
`electronically uploaded) directly into the official file for the reexamination proceeding, which
`offers parties the opportunity to review the content of their submissions afier the “soft scanning‘
`process is complete.
`
`’
`
`Any inquiry concerning this communication or earlier communications from the
`
`Reexamination Legal Advisor or Examiner, or as to the status of this proceeding, should be
`
`directed to the Central Reexamination Unit at telephone number (571) 272~7705.
`
`/AlexanderJ Kosowski/
`
`.
`
`7 5
`
`Primary Examiner, Art Unit 3992
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`Page 12 of 12
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