UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED S'l‘A’l"ES DEPARTMENT OF‘ COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`l’.0. B
`I450
`Alcxan '5, Virginia 223l3-I450
`www.usplo.gov
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`90/010,416
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`02/17/2009
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`6108704
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`2655-0 I 88
`
`I061
`
`42624
`
`7590
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`05/ll/2010
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`EXAMINER
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`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`4300 WILSON BLVD., 7TH FLOOR
`ARLINGTON, VA 22203
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`ART UN”
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`PAPER NUMBER
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`DATE MAILED: 05/l l/2010
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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. I0/03)
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`Page 1 of 12
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`Verizon Exhibit 1022
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`

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`; ‘ V UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria. VA 22313-1450
`wuwuusptugov
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`DO NOT USE IN PALM PRINTER
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`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
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`Blakely Sokoloff Taylor & Zafrnan LLP
`
`1279 Oakmead Parkway
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`Sunnyvale. CA 940854040
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`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
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`REEXAMINATION CONTROL NO. 90/010 416.
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`PATENT NO. 6108704.
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`ART UNIT 3992.
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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 parte reexamination proceeding (37 CFR 1.550(f)).
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`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 panfe reexamination requester will be
`acknowledged or considered (37 CFR 1.550(9)).
`
`F’TOL—465 (Rev.O7-O4)
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`Page 2 of 12
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`Office Action in Ex Parte Reexamination
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`Control No.
`90/010,416
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`Examiner
`ALEXANDER J. KOSOWSKI
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`Patent Under Reexamination
`6108704
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`Art Unit
`8992
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`
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`-— The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
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`bfi This action is made FINAL.
`afl Responsive to the communication(s) filed on 27 November 2009 .
`CE] A statement under 37 CFR 1530 has not been received from the patent owner.
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`
`
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`A shortened statutory period for response to this action is set to expire g month(s) from the mailing date of this letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination
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`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`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.
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`
`
`
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`Part I
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`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
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`
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`3.
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`I:]
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`Interview Summary. PTO-474.
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`4. E]
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`.
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`Claims 1-7 and 10-44 are subject to reexamination.
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`Claims 8 and 9 are not subject to reexamination.
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`.
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`l:] The proposed drawing correction, filed on ____h_a_s been (7a)
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`E] approved (7b)l:] disapproved.
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`.
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`I:I Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
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`a)Cl All b)l:] Some’ c)E| None
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`ofthe certified copies have
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`1[] been received.
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`2[:] not been received.
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`SCI been filed in Application No. ________
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`4[:] been filed in reexamination Control No. _________
`5[:] 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.
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`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 DC. 213.
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`
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` 10. D Other:
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` cc: Rcuester ifthird arty reuesler
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`U 8. Patent and Trademark Office
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`PTOL-466 (Rev. 08-06)
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`Office Action in Ex Pane Reexamination
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`Part of Paper No. 20100503
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`Page 3 of 12
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` 1. D Notice of References Cited by Examiner. PTO—892.
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`IX]
`Information Disclosure Statement. PTO/SB/08.
` SUMMARY OF ACTION
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`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 and/or confirmed.
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` Claims 43 and 44 are rejected.
`Claims
`are objected to.
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`
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`Dlfliflfillflfigl The drawings, filed on
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`are acceptable.
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`

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`Application/Control Number: 90/010,416
`Art Unit: 3992
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`Page 2
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`DETAILED ACTION
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`1)
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`This Office action addresses claims 1-7 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
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`Reexamination (hereafter the “Order”) mailed 3/11/09 thata substantial new question of
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`patentability was raised in the Request for Ex Parte reexamination filed on 2/17/09 (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 11/27/09. 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)
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`With regard to the IDS’s filed 12/14/09, 12/21/09, 1/26/10, 2/24/10, 3/5/10, 5/6/10:
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`Where the IDS 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 of interest, in a subsequent office action. See Guidelines for
`Reexamination of Cases in View of In re Portola Packaging, Inc., 1 10 F.3d 786, 42 USPQ2d
`1295 (Fed. Cir. 1997), 64 FR at 15347, 1223 Off. Gaz. Pat. Office at 125 (response to comment
`6).
`
`Consideration by the examiner of the information submitted in an IDS means that the
`examiner will consider the documents in the same manner as other documents in Office search
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`files are considered by the examiner while conducting a search of the prior art in a proper field of
`search. The initials of the examiner placed adjacent to the citations on the PTO-1449 or
`PTO/SB/08A and 08B or its equivalent 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, unlessotherwise noted.
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`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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`

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`Application/Control Number: 90/010,416
`Art Unit: 3992
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`Page 3
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`3)
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`Claim Rejections - 35 USC § 102
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`Claim Rejection Paragraphs
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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 —
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on
`sale in this country. more than one year prior to the date of application for patent in the United States.
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`Issue 1
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`4)
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`Claims 43-44 are rejected under 35 U.S.C. l02(b) as being unpatentable by NetBlOS
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`(See claim mapping chart in Exhibit M, pages 36-40, incorporated by reference).
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`Issue 2
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`5)
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`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):
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`“Zellweger ": An Overview of the Etherphone System and its Applications
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`“Swirzehart”: Telephone Management in the Etherphone System
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`“Terry Managing Stored Voice in the Etherphone System
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`“Swineharl 2 System Support Requirements for Mu1ti—media Workstations
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`"Zellweger 2 Active Paths through Multimedia Documents
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`6)
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`Claims 43-44 are rejected under 35 U.S.C. l02(b) as being unpatentable by Etherphone
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`(See claim mapping chart in Exhibit N, pages 33-35, incorporated by reference).
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`Page 5 of 12
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`

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`Application/Control Number: 90/0| 0,416
`Art Unit: 3992
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`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 1/27/09, 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:
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`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.
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`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)
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`The amendment submitted 1 1/27/09 includes arguments that the VocalChat references
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`are not printed publications. The Patent Owner (PO) cites exhibit L of the Request (the
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`‘
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`declaration of Alon Cohen) as the only evidence provided by P0 that the VocalChat references ‘
`are printed publications. Examiner notes that the Alon Cohen declaration fails to comply with 37
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`CFR. 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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`Page 6 of 12
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`

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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 1.132 Declaration
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`submitted by expert Ketan Mayer-Patel.
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`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
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`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.
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`d)
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`In light of PO’s arguments and amendments filed 1 1/27/09, as well as the declaration of
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`expert Mayer-Patel, examiner withdraws the rejections ofclairns 1-7 and 10-42. Examiner finds
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`the presented arguments to be persuasive.
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`With regard to the NetBios rejection, examiner agrees with declarant Mayer-Patel that
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`bringing dynamic addressing into a NetBlOS type system would create anew set of obstacles
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`that would need to be solved that are not obvious in view of the combination of references.
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`In
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`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.
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`In addition, amended claims 1 1 and 22 (previously 10 and 21) now require the
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`dynamic addressing aspects of the other claims 1-7 and 10-42.
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`With regard to the rejection under Etherphone, examiner agrees with declarant Mayer-
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`Patel that the Etherphone system, which utilizes a datagram multicast, would not be obviously
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`Page 7 of 12
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`

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`Application/Control Number: 90/010,416
`Art Unit: 3992
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`Page 6
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`combinable with DHCP due to expiration of address leases.
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`In addition, amended claims 11 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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`e)
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`The rejection of claims 43-44 are maintained in view of NetBIOS and Etherphone.
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`With regard to the rejection under NetBIOS, maintained above:
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`PO first argues with regard to claim 43 that NetBlOS does not teach that "the processes
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`receive network protocol address ‘following connection to the computer network”. However,
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`examiner notes that this limitation is not required by the current claim language. (ilaim 43
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`recites "the network protocol address forwarded to the database following connection to the
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`computer network". This claim language implies that the computer may already have an IP
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`address before connecting to the server, Examiner notes, for example, that claim 1 requires
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`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
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`under 35 U.S.C. l02(b), despite PO attempting to argue a rejection under 35 U.S.C. 103(a) which
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`was not made. As claim 43 does not require the same DHCP aspects as other independent
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`claims, the arguments are therefore not found persuasive in view of declarant Mayer-Patel.
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`PO secondly argues with regard to claim 43 that NetBIOS does not teach a database
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`“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
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`synonymous with an “on-line status", and that an “active name" simply refers to "a name that has
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`Page 8 of 12
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`

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`Application/Control Number: 90/010,416
`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 at col. 5 lines 39-44 teaches that the on-line status information may not always be
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`current, and may be updated, for example, only every 24 hours based on operator configuration.
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`Therefore, the database ofNetBIOS which contains active name information reads on claim 43,
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`whether or not the user data is current.
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`With regard to claim 44, PO argues similar to the dynamic addressing argument above
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`with regard to claim 43. Claim 44 also recites “forwarding” rather than “receiving” an address.
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`Therefore, referring to claim 44, see the response to arguments for claim 43 above.
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`PO also argues with regard to claim 44 that NetBIOS does not teach that an "active
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`name" is synonymous with "whether the second process is connected to the computer network".
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`As noted by examiner above with regard to claim 43, NetBIOS teaches that a process has
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`' connected and wasactive. There is no claim requirement that the database be current based on
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`PO’s specification.
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`With regard to the rejection under Etherphone, maintained above:
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`PO argues with regard to claim 43 that Figure 3 of Zellewegerl “does not show that the
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`cited database includes the claimed "network protocol address".
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`In response, examiner notes that
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`Figure 3 references a user interface aspect of Etherphone. This is separate from the hardware
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`workings of the system. Swinehartl , page 4, clearly teaches that the “voice control server
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`manages voice switching by sending to each Etherphone or service the network addresses of the
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`other participants". Therefore, the database contains the required network protocol addresses.
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`Page 9 of 12
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`

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`Application/Control Number: 90/010,416
`Art Unit: 3992
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`4
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`Page 8
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`Next, PO argues that Etherphone does not disclose the required dynamic addressing. In
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`response, examiner notes the response to NetB1OS above. Dynamic addressing is not required in
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`the claim language of claim 43.
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`With regard to claim 44, PO argues that no citation has been made regarding a query \
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`being sent to an address server. Examiner notes that given a broadest reasonable interpretation,
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`an address server is merely a server that can hold a database of addresses. The term does not
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`specifically require the server to perform DHCP functionality. Zellewegerl, page 3, clearly
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`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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`Page 10 of 12
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`

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`Application/Control Number: 90/010,416
`Art Unit: 3992
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`v
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`Page 9
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`THIS ACTION IS MADE FINAL.
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`Conclusion
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`Extensions of time under 37 CFR 1.l36(a) do not apply in reexamination
`proceedings. The provisions of 37 CFR l.l36 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 l.550(a), it is required that
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`reexamination proceedings "will be conducted with special dispatch within the Office."
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`Extensions of time in reexamination proceedings are provided for in 37 CFR
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`l.550(c). A request for extension of time 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 1.17(g).
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`The mere filing of a request will not effect any extension of time. An extension of time will be
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`granted only for sufficient cause, and for a reasonable time specified.
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`The filing of a timely first response to this final rejections will be construed as including a
`request to extend the shortened statutory period for an additional month, which will be granted
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`even if previous extensions have been granted.
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`In no event however, will the statutory period for
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`response expire later than SIX MONTHS from the mailing date of the final action. See MPEP §
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`2265.
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`All correspondence relating to this ex parte reexamination proceeding should be directed
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`as follows:
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`By U.S. Postal Service Mail to:
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`Mail Stop Ex Parte Reexam
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`Page 11 of 12
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`

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`Page 10
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`Application/Control Number: 90/010,416
`Art Unit: 3992
`
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. 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//sgortal.uspto.gov/authenticate/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 after the “soft scanning’
`process is complete.
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`3
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`Any inquiry concerning this communication or earlier communications from the
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`Reexamination Legal Advisor or Examiner, or as to the status of this proceeding, should be
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`directed to the Central Reexamination Unit at telephone number (571) 272-7705.
`
`/AlexanderJ Kosowski/
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`Primary Examiner, Art Unit 3992
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`. £
`58 I(
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`Page 12 of 12