`
`ATTORNEY DOCKET NO. NOOO3/7000W
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`00’
`
`Applicant:
`Serial No.:
`
`Glenn W. Hutton
`08/533,115
`
`Filed:
`...
`For:
`Examiner:
`Art Unit:
`
`September 25, 1995
`POINT-TO-POINT INTERNET PROTOCOL
`Richard J. Gregson, Esq.
`2302
`‘
`
`CERTIFICATE OF MAILING
`
`I hereby certify that the following correspondence is being deposited with the United States Postal
`Service as first class mail in an envelope addressed to the Assistant Commissioner for Patents,
`
`Washington, DC. 20231 on December 2, 1997.
`
`E
`
`(D
`
`Bruce D. Jobse
`
`Assistant Commissioner for Patents
`
`Washington, DC. 20231
`
`Sir:
`
`In the Title
`
`AMENDMENT
`-
`
`_ .1
`
`r1“?-
`i
`F7.
`l1 2 2:};
`r\) — '—,
`
`8 3'», m
`D ‘1 d
`
`Please delete the title as filed and insert -- Method and Apparatus for
`
`Establishing Point-to-Point Communications Over a Computer Network --.
`
`. aifiséiufi'iterfacing” insert --to--.
`
`In the Specification
`III/$3111.33“ KDMANQBWQ’IM
`02 “2:203
`165.00 CH
`Page 6
`
`18, change “by" to -—to--.
`
`PageflWead-only"to--randomaccess--;
`Ii /, change “other" to --another--.
`Page 1%:e 17, change "the connection server 26" to --a connection service
`
`Page 1 of 10
`
`Verizon Exhibit 1018
`
`

`

`provider--.
`
`Page 13, l'
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`6, change ”the connection server 26" to --a connection service
`
`provider--.
`
`In the Claims
`
`Please amend the claims as follows:
`
`
`22.
`
`(Amended) A computer program product for use with a comp “-r system,
`
`the computer system having first urocessor coera ivel cou-led to . 5- 0nd orocessor
`[and second processors] and a sewer [operatively coupled] ove . computer network,
`
`the computer program product comprising:
`
`\
`
`a computer useable medium having program de means embodied in the
`medium for establishing a point-to-poi
`commu'cations link between the first
`
`processor and a second processor‘over .- c puter network, the medium further
`
`comprising:
`
`program code means for tr ' s
`
`tting . E-mail signal comprising a network
`
`protocol address [from1Lfthe
`
`st proc
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`or to the second processor [server] over the
`
`computer network;
`program code » eans for receiving a second network protocol address from the
`
`second processo over the computer network; and
`
`progr ' code means, responsive to the second network protocol address, for
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`establish' 9 a point-to-point communication link between the first processor and the
`
`seco 4 processor over a computer network.
`
`WW 42.
`
`steps A and B are graphic eleme sandi-t e step of establishing a [point-to-
`
`(Amended) The method ofclaim 41 wherein [the—el
`
`ents generated in
`
` communication
`
`oin link as described in step C is performed in response to a
`
`user
`
`ipulating the graphic elements on the graphic user interface.
`
`-2-
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`Page 2 of 10
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`

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`Please add the following claims:
`
`WV 54.
`
`steps of :
`
`A method oflocating a userover a computernetwork comprisin
`
`a.
`
`maintaining an Internet accessible list having a p
`
`e
`
`rality of entries,
`
`
`each entry comprising an electronic mail address and a corresp
`
`address for a process currently connected to the Internet; and}
`b.
`in response to identification of one o (e list entries by a requesting
`
`ding Internet protocol
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`process, providing one of the electronic mail address nd the corresponding Internet
`
`protocol address of the identified entry to the requ sting process.
`
`55.
`
`A method for locating users h
`
`ing dynamically assigned network protocol
`
`I”?
`
`addresses over a computer network, the
`
`a.
`
`ethod comprising the steps of:
`
`
`maintaining in a mputer memory, a network accessible
`
`compilation of entries, each entry mprising a network protocol address and a
`
`corresponding identifier for a us r connected to the computer network;
`
`b.
`
`in respon/e to identification ofone ofthe entries by a requesting
`
`identifier and the network protocol address to the
`
`process providing one oft
`
`requesting process.
`
`56.
`
`The
`
`C.
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`thod of claim 55 further comprising the step of:
`
`modifying the compilation of entries.
`
`
`
`
`
`
`57.
`
`he method of claim 56 wherein step c further comprises:
`
`c.1
`
`adding an entry to the compilation upon the occurrence of a
`
`predeter
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`ined event.
`
`The method of claim 57 wherein the predetermined event comprises
`
`n9 ification by a user process of an assigned network protocol address.
`
`-3-
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`Page 3 of 10
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`59.
`
`The method of claim 56 wherein step c further 0 4prises:
`
`c.1
`
`deleting an entry from the compilation pon the occurrence of a
`
`predetermined event.
`
`
`
`60.
`
`A computer program product for us with a server apparatus operatively
`
`coupled over a computer network to one or n? e computer processes, the computer
`
`I
`
`
`
`e medium having program code
`
`program product comprising a computer us
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`embodied in the medium the program co e comprising:
`
`a.
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`program code con gured to maintain, in a computer memory, a
`
`network; and
`
`network accessible compilation of en ries, each entry comprising a network protocol
`
`address and a corresponding iden ' Ier for a process connected to the computer
`
`program (Zide responsive to identification of one of the entries by a
`
`requesting process and conf ured to provide one of the identifier and the network
`
`b.
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`protocol address to the req esting process.
`
`61.
`
`The comp ter program product of claim 60 further comprising:
`
`c.
`
`pr gram code configured to modify the compilation of entries.
`
`62.
`
`The omputer program product of claim 61 wherein program code
`
`configured to mo ify comprises:
`
`0.
`
`program code configured to add an entry to the compilation upon
`
`the occurrenc of a predetermined event.
`
` The computer program product of claim 62 wherein the predetermined
`
`event co prises notification by a process of an assigned network protocol address.
`
`64.
`
`The computer program product of claim 60 wherein step c further
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`.4-
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`Page 4 of 10
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`comprises:
`
`
`
`0.1
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`program code co
`
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`0 delete an entry from the compilation
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`upon the occu
`
`
`
`o a predetermined event.
`
`
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`over a computer network to a plurali
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`e computer program product
`
`65.
`
`
`
`operatively coupled
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`A computer program product for use with a se
`
`
`of processes
`
`comprising a computer usable medium avin
`rogram code embodied thereon the
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`program code comprising:
`
`program co
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`
`
`d to receive the current network protocol
`
`e network;
`ses co pled t
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`gram code c
`Igured to receive an identifier associated with
`
`a.
`
`b.
`
`address of one of the proc
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`and
`
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`said one proces
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`protoco ddress and the associated identifier of said one process from other processes
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`program code configured to receive queries for one of the network
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`ove he computer network.
`
`A computer program productfor usewith a computeQWmfl‘he/
`(\7 66.
`computer system including a first process operatively coupl?dov r a computer network
`to a second process and a server process , theye program product comprising a
`
`
`computer usable medium having computer re
`
`Ie program code embodied therein,
`
`the program code means comprising:
`
`a.
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`e configured to access a directory database, the
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`program c
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`database having a netw
`
`the computer network; and
`program code responsive to one of the network protocol addresses
`
`protocol address for a plurality of processes having on-Iine
`
`status with respect
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`ured to establish a point-to—point communication link from the first process to
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`and con
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`the econd process over the computer network.
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`Page 5 of 10
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`67.
`
`er network
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`shing a point-to-point
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`In a first computer process operatively coupled over a co
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`s comprising the steps of:
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`communication between the first and second proce
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`to a second process and an address server, a method of es
`
`to whether the second process is
`
`A.
`
`
`
`connected to the computer netwo
`
`querying the address serve
`
`
`ork protocol address of the second process from the
`
`B.
`
`C
`
`W)
`
`receiving a n
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`address server, whe
`e second process is connected to the computer network; and
`
`esponsive to the network protocol address of the second process,
`establish' g a point-to-point communication link with the second process over the
`
`
`co
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`uter network.
`
`68.
`
`
`ed over a computer network
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`to a second process and an E-mai sewer, a
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`0d of establishing a point-to-point
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`communication between the first an se
`
`
`
`In a first computer process operatively co
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`d processes comprising the steps of:
`
`A.
`
`transmitting an E-m ' s nal comprising a network protocol address of
`
`
`B.
`
`
`the first process to the seco
`process ver the computer network;
`second etwork rotocol address from the second process
`receivin
`
`
`etwork; and
`responsive to the second network protocol address, establishing a
`
`over the compute
`
`
`oint communication link between the first process and the second process
`
`' computer network.
`
`REMARKS
`
`'Applicant has considered carefully the Office Action dated June 2, 1997 and the
`
`references cited therein.
`
`In response, the title, specification, and claims have been
`
`amended. Applicant respectfully requests reexamination of the application.
`
`The title ofthe application has now been changed to ”METHOD AND
`
`APPARATUS FOR ESTABLISHING POINT-TO-POINT COMMUNICATIONS OVER A
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`-6-
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`Page 6 of 10
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`COMPUTER NETWORK. Applicant asserts that the title as amended is indicative of
`
`the invention to which the claims are directed.
`
`Regarding the multiple information disclosures submitted prior to examination,
`
`many of the submitted references were located during patentability searches not
`
`performed by applicant's current counsel. Applicant’s current counsel submitted such
`
`references under the continuing duty of candor under 37 C.F.R. §§56, 1.97, 1.98. The
`
`Applicant is relying on the Examiner‘s expertise to determine the relevance of the
`
`references to the claimed subject matter.
`
`As requested by the Examiner, the applicant has checked the specification for
`
`minor errors and has, in response. amended the specification as set forth herein. No
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`new matter is believed to be added by these changes to the specification.
`
`Claim 22 has been amended to conform the claim language with the
`
`specification. Such amendments are not required to distinguish the claimed subject
`
`matter over any of the cited references, whether considered singularly or in
`
`combination.
`
`Claim 42 has been amended to correct a grammatical error and any potential
`
`problems under 37 C.F.R. §112, second paragraph. Such amendment is not required
`
`to distinguish the claimed subject matter over any of the cited references, whether
`
`considered singularly or in combination.
`
`Applicant submits herewith a declaration of prior invention under 37 CFR 1.131
`
`to overcome the rejection of all claims under 35 U.S.C. §103 as being unpatentable
`
`over Civanlar et al. in view of Morgan et al. and/or further in view of December et al.
`
`The declaration is submitted with a facsimile signature of the declarant inventor. The
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`original signed declaration will be submitted as soon as it becomes available.
`
`In light of
`
`the declaration and acconpanying exhibits. all rejections based on the Civanlar et al.
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`reference are deemed moot.
`
`In addition, Applicant has the following remarks. One of the major factors
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`Page 7 of 10
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`inhibiting dynamic communications over the Internet, and other computer networks,
`
`is
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`the inability to obtain the current dynamically assigned network protocal address of a .
`
`user process connected to the network. This problem is analogous to trying to call
`
`someone whose telephone number changes after each call. Applicant's invention
`
`provides techniques for determining the current dynamically assigned network protocal
`
`address of a user process connected to the network. The first technique utilizes a
`
`dedicated server which acts as a network address/information directory from which
`
`calling processes can obtain information. When a first process connects to the
`
`network, the process logs-on to the server and provides the server with the network
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`protocal address under which the first process is currently operating. A second process
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`wishing to establish communications with the first process, connects to the server and
`
`request the network protocal address under which the first process is currently
`
`operating. Upon receipt of the network protocal address of the first process,
`
`the
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`second process establishes communications with the first process directly, without any
`
`intervenion from the address/ information server.
`
`The Examiner has repeatedly indicated that Civanlar et al. in view of Morgan et
`
`al.
`
`teach an address server and database utilized to initiate communications between
`
`two nodes. Conversly, in the present invention, communications between two nodes,
`
`e.g. processes, are initiated by soley by one of the processes. The address server may
`
`have optionally supplied address information to one of the processes. but the address
`
`server does not establish the point-to-point communication connection between the
`
`nodes. Applicant has reviewed Civanlar et al. in view of Morgan et al. and has found
`
`no disclosure or suggestion of this first claimed technique whether the references are
`
`considered singularly or in combination.
`
`Applicant's invention provides a second techniques for determining the current
`
`dynamically assigned network protocal address of a user process connected to the
`
`In the second technique, a first process wishing to establish communications
`network.
`with a second process, sends, .via E-mail,
`the network protocal address UHW
`
`~8—
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`Page 8 of 10
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`the first process is currently operating to the second process. Upon receipt of the'E-
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`mail message,
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`the second process sends to the first process, via E-mail, the network
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`protocal address under which the second process is currently operating. Upon receipt
`
`of the network protocal address of the second process,
`
`the first process establishes
`
`communications with the second process directly, without any intervenion from the
`
`address/ information server. This second technique may be used in addition to or in
`
`place of the first technique. As with the first technique, communications between two
`
`nodes, e.g. processes, are initiated by soley by one of the processes. The address
`
`‘server does not establish the point-to-point communication connection between the
`
`nodes. Applicant has reviewed Civanlar et al. in view of Morgan et al. and further in
`
`view of December et al. and has found no disclosure or suggestion of this second
`
`claimed technique whether the references are considered singularly or in combination.
`
`Applicant respectfully traverses the rejection of claims 32-42 and 43-53 under 35
`
`U.S.C. §103 as being unpatentable over Civanlar et al. in view of Morgan et al. and
`
`further in view of December et al. Claims 32-42 are directed to a method for
`
`establishing a point-to-point communication link from a caller processor to a callee
`
`processor over a computer network by associating graphic elements representing
`
`communication line and a first callee processor. Claims 43-53 essentially comprise a
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`computer program product claim counterparts to claims 32-42. Applicant has reviewed
`
`the cited references in detail and can find no suggestion or disclosure of generating
`
`graphic elements representing a communication line or a callee processor or
`
`establishment of a point-to-point communication link by associating the graphic
`
`element.
`
`Applicant submits herewith new claims 54-68 to more particularly point out and
`
`distinctly claim the subject matter which the Applicant regards as the invention. All
`
`claims are believed allowable over any of the references cited by the Applicant, whether
`
`considered singularly or in combination. Accordingly, Applicant believes this application
`
`is in condition for allowance and a notice to that effect is respectfully requested.
`
`lfthe
`
`_g_
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`Page 9 of 10
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`Examiner has any questions regarding this amendment or the application in general he
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`is invited to call the Applicant's attorney at the number listed below.
`
`The Commissioner is hereby authorized to charge any other fees under 37
`
`C.F.R. §1.16 and 1.17 that may be required, or credit any overpayment, to our Deposit
`
`Account No. 20-0065.
`
`Respectfully submitted,
`
`2?.
`
`nJce D. Jobse
`
`Reg. No. 33,518
`KUDIRKA & JOBSE, P.C.
`One Beacon Street
`
`Boston. MA 02108
`
`(617) 367-4600
`
`-10-
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`Page 10 of 10
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