`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United Stiles Pntenl and Trademark Office
`AddmmCOMMISSlONER FOR PATENTS
`PD. BOUGSO >
`‘
`Alexandnn. Virgina 223114450
`uww.u5plo.guv
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`6| 3| I2l
`
`2655-DI 86
`
`6648
`
`APPLICATION NO.
`
`90/0I0,424
`
`FILING DATE
`
`02/24/2009
`
`42624
`
`7590
`
`OSII7/20I0
`
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`4300 WILSON BLVD, 7TH FLOOR
`ARLINGTON, VA 22203
`
`EXAMINER
`
`PAPERNUMBER
`
`DATE MAILED: 05/17/2010
`
`Please find below and/or attached an Office communication conceming this application or proceeding.
`
`PTO—90C (Rcv,
`
`|0/03)
`
`Page 1 of 11
`
`Verizon Exhibit 1021
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`

`

` ""1 UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Comrssmnar iorPalenE
`United Slates Palanl and Trademark Office
`PO. BoxMSO
`Alexandria, VA 22313—1450
`wuwuxplo gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`Blakely Sokolofi Taylor & Zafman LLP
`1279 Oakmead Parkway
`
`MAY 1 7 20“]
`
`Sunanale» CA 940354040
`
`ca'rnw. REEXAMINATION Ill?
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/010 424,
`
`PATENT NO. 6131121.
`
`ART UNIT 3992.
`
`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(0).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1535, 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.O7-04)
`
`Page 2 of 11
`
`

`

`.
`Office Action in Ex Parte Reexamination
`
`Control No.
`90/010,424
`.
`Examiner
`ALEXANDER J. KOSOWSKI
`
`Patent Under Reexamination
`6131121
`.
`Art Unit
`3992
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`
`bX This action is made FINAL.
`aE Responsive to the communication(s) filed on 25 November 2009.
`cl: A statement under 37 CFR 1530 has not been received from the patent owner.
`‘
`
`A shortened statutory period tor response to this action is set to expire g month(s) from the mailing date of this letter.
`Failure to respond within the period tor response will result in termination of the proceeding and issuance of an ex parte reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR1.550(c).
`It 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 I
`
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1.
`
`[I Notice of References Cited by Examiner, PTO-892.
`
`3.
`
`I:
`
`Interview Summary, PTO-474.
`
`2. E information Disclosure Statement. PTO/SB/08.
`
`4. E]
`
`.
`
`SUMMARY OF ACTION
`
`Claims 6-14 are subject to reexamination.
`
`Claims _1-_5 are not subject to reexamination.
`
`Claims
`
`have
`
`been canceled in the present reexamination proceeding,
`
`Claims 12—14 are patentable and/or confirmed.
`
`-
`
`Claims M are rejected.
`
`a ' re objected to.
`Claims
`The drawings. filed on _are acceptable.
`
`E E
`
`l
`
`I]
`
`XI
`
`E]
`
`El
`
`I]
`
`1a.
`1b.
`
`2.
`
`3 4 5 6
`
`.
`
`7. I: The proposed drawing correction, filed on _fls been (7a)
`
`E] approved (7b)|j disapproved.
`
`8. E] Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (t).
`
`a)|:| All b)I:I Some' c)|:l None
`
`of the certified copies have
`
`1|] been received.
`
`2|: not been received.
`
`3E] been filed in Application No. _
`
`4:] been filed in reexamination Control No.
`
`10. C] Other:
`
`5|: been received by the International Bureau in PCT application No.
`“ See the attached detailed Office action tor a list of the certified copies not received.
`
`9. E] Since the proceeding appears to be in condition tor 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 O.G.213.
`-
`
`cc: Re- uester (ii' third oanv re- ucstcr
`U.S. Patent and Trademark Office
`PTOL-466 (Rev. 08-06)
`
`Page 3 of 11
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`Office Action In Ex Parte Reexamination
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`Part of Paper No. 20100510
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`

`

`Application/Control Number: 90/010,424
`Art Unit: 3992
`
`Page 2
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`DETAILED ACTION
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`1)
`
`This Office action addresses claims 6-14 of United States Patent Number 6,131,121
`
`(MattaWay et al), for which it has been determined in the Order Granting Ex Parte
`
`Reexamination (hereafter the “Order”) mailed 3/1 1/09 that a substantial new question of
`
`'patentability was raised in the Request for Ex Parte reexamination filed on 2/24/09 (hereafter the
`
`“Request”). Claims 1-5 are not subject to reexamination. This is a final office action in response
`
`to the amendment filed 1 l/25/09. The rejection ofclaims 6-1 1 are maintained below. Claims
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`12-14 are confirmed below.
`
`IDS
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`2)
`
`With regard to the lDS’s filed 12/16/09, l2/21/09, 1/26/10, 2/24/10, 3/5/10, 5/6/10:
`
`Where the IDS citations are submitted but not described, the examiner is only responsible for
`cursorily reviewing the references. The initials ofthe 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 ofCases in View ofln 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 ofthe information submitted in an IDS means that the
`examiner will consider the documents in the same manner as other documents in Office search
`
`files are considered by the examiner while conducting a search ofthe prior art in a proper field of
`search. The initials ofthe 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 ofthe 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 ofthe information."
`Accordingly, the IDS submissions have been considered by the Examiner only with the
`sc0pe 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 ofthe patent.
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`Page 4 of 11
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`

`

`Application/Control Number: 90/010,424
`Art Unit: 3992
`
`Page 3
`
`Claim Rejection Paragraphs
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`3)
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`Claim Rejections - 35 USC § 102
`
`The following is a quotation ofthe appropriate paragraphs of35 USC. 102 that form the
`
`basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(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 ofupplieation for patent in the United States.
`
`Issue 1
`
`4)
`
`Claims 6-1 I are rejected under 35 USC. 102(b) as being unpatentable by NetBlOS (See
`
`claim mapping in Request pages 28-49, incorporated by reference).
`
`Issue 2
`
`5)
`
`Claims 6-] l are rejected under 35 USC. 102(b) as being unpatentable by Etherphone
`
`(See claim mapping in Request pages 62-80, incorporated by reference).
`
`Response to Arguments
`
`6)
`
`In response to the amendment filed 1 l /25/O9, some rejections are sustained as noted
`
`above, and others have been withdrawn. The following aspects ofthe current prosecution will be
`
`addressed as noted below:
`
`a)
`
`b)
`
`0)
`
`d)
`
`VocalChat are not printed publications.
`
`The l.l32 Declaration
`
`Objective evidence of non-obviousness
`
`Withdrawn rejections
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`Page 5 of 11
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`

`

`Application/Control Number: 90/010,424
`Art Unit: 3992
`
`V
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`Page 4
`
`e)
`
`Maintained rejections
`
`a)
`
`The amendment submitted 1 l/25/09 includes arguments that the VocalChat references
`
`are not printed publications. The Patent Owner (PO) cites exhibit K ofthe Request (the
`
`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
`
`C.F.R. 1.68, including not setting forth in the body of the declaration that all statements made of
`
`the declarant's own knowledge are true and that all statements made on information and belief
`
`are believed to be true. Therefore, PO’s arguments questioning the declaration as well as
`
`whether printed publication status has been established as set forth under statute are found
`
`persuasive. Examiner therefore withdraws all rejections utilizing the VocalChat references.
`
`b)
`
`Examiner notes that all evidence presented has been considered in its entirety, including
`
`both PO’s arguments and amendments, including secondary considerations, as well as the 1.132
`
`Declaration submitted by expert Ketan Mayer—Patel.
`
`c)
`
`Examiner notes that PO’s arguments regarding objective evidence of non-obviousness,
`
`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
`
`MPEP 716.03. Therefore, this evidence is not found persuasive.
`
`Page 6 of 11
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`

`

`Application/Control Number: 90/010,424
`An Unit: 3992
`
`Page 5
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`d)
`
`In light of PO’s arguments filed 1 1/25/09, as well as the declaration of expert Mayer-
`
`Patel, examiner withdraws the rejections of claims 12-14. Examiner finds the presented
`
`arguments to be persuasive.
`
`With regard to the NetBIOS rejection, examiner agrees with declarant Mayer-Patel that
`
`bringing dynamic addressing into a NetBlOS type system would create a new set of obstacles
`
`that would need to be solved that are not obvious in view ofthe combination of references.
`
`With regard to the rejection under Etherphone, examiner notes that a similar argument
`
`applies to Etherphone as to NetBlOS, namely that combining the system with dynamic
`
`addressing would create new, non obvious obstacles to overcome.
`
`A reasons for confirmation for the claims discussed above will follow in a subsequent
`
`office action.
`
`e)
`
`The rejection ofclaims 6-] l, as amended, are maintained in view ofNetBlOS and
`
`Etherphone. Examiner notes that although claims 6-8 have been amended, the amendments
`
`simply move existing claim limitations to a slightly different position in the claims. This does
`
`not affect the claim interpretation, and therefore the cited claim mappings in the rejection above
`
`still apply.
`
`With regard to the rejection ofclaims 6'11 under NetBIOS, maintained above:
`
`Examiner first notes that claims 6-11 do not require any dynamic addressing limitations,
`
`unlike claims 12-14. Claim 6 recites, for example "forward to the server process a network
`
`protocol address. . .fo||owing connection ofthe first process to the computer network". This
`
`claim language implies that the computer may already have an IP address before connecting to
`
`Page 7 of 11
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`

`

`Application/Control Number: 90/010,424
`Art Unit: 3992
`
`Page 6
`
`the server. Examiner notes, for example, that claim 12 requires receiving a network protocol
`
`address "following connection to a computer network". Examiner notes that the original
`
`rejection was meant to be a rejection under 35 U.S.C. 102(b), despite PO attempting to argue a
`
`rejection under 35 U.S.C. 103(a) which was not made. Therefore, any arguments directed
`
`towards a combination with RFC 153] do not apply to claims 6-11.
`
`PO argues that NetBlOS does not teach “program code configured to query the address
`
`server as to whether the second process is connected to the computer network”. PO argues that
`
`haying an “active name” is not synonymous with “being connected to the computer network",
`
`and that an “active name" simply refers to "a name that has been registered and that has not yet
`
`been de-registered". Examiner first notes that the claims recite “whether the second process is
`
`connected”, and under a broadest reasonable interpretation, this limitation could simply mean
`
`that a user is registered with the system.
`
`in addition, examiner notes that PO's specification at
`
`co]. 5 lines 39—44 teaches that the on-line status information may hot always be current, and may
`
`be updated, for example, only every 24 hours based on operator configuration. Assuming a user
`being “connected" is comparable to that user being “on-line", then the database of NetBlOS
`
`which contains active name information, reads on the claims, whether or not the userwdata is
`
`current.
`
`PO also argues that NetBlOS does not teach “that an acquired IP address can be
`
`reasonably relied upon by a requesting end-node to confirm that an end-node associated with a
`
`sought name is, in fact, ‘connected to the computer network’“. However, examiner notes that the
`
`claims only require connecting to a “process”, not necessarily to a particular name.
`
`With regard to the rejection ofclaims 6-11 under Etherphone, maintained above:
`
`,
`
`Page 8 of 11
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`

`

`Application/Control Number: 90/010,424
`An Unit: 3992
`
`Page 7
`
`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. Zellewegerl , page 3, clearly teaches the use of remote
`
`procedure calls to a server for establishing connections between two parties, which reads on the
`
`claimed limitation.
`
`PO also argues that Figure 3 onellewegerl “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. Swinehart 1, page 4, clearly teaches that the “voice control server manages voice
`
`switching by sending to each Etherphone or service the network addresses ofthe other
`
`participants". Therefore, the database contains the required network protocol addresses.
`
`Therefore, the current arguments regarding claims 6-] 1 are not persuasive, and the
`
`rejections above are maintained.
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`Page 9 of 11
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`

`

`Application/Control Number: 90/0I0,424
`Art Unit: 3992
`
`Page 8
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`THIS ACTION IS MADE FINAL.
`
`Conclusion
`
`Extensions of time under 37 CFR 1.136(a) do not apply in reexamination
`
`proceedings. The provisions 0f37 CFR 1.136 apply only to "an applicant" and not to parties in a
`
`reexamination proceeding. Further, in 35 U.S.C. 305 and in 37 CFR 1.550(a), it is required that
`
`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 oftime must be filed on or before the day on which a response
`
`to this action is due, and it must be accompanied by the petition fee set forth in 37 CFR l.l7(g).
`
`The mere filing ofa request will not effect any extension oftime. An extension oftime will be
`
`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 ifprevious 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.
`
`All correspondence relating to this ex parte reexamination proceeding should be directed
`
`as follows:
`
`By US Postal Service Mail to:
`
`Mail Stop Ex Parte Reexam
`
`Page 10 of 11
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`

`

`Page 9
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`Application/Control Number: 90/010,424
`
`Art Unit: 3992
`
`ATTN: 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
`
`https://sponal.usptogov/authenticate/authenticateuserlocalepf.html
`
`EFS-Web offers the benefit ofquick submission to the particular area ofthe 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 oftheir submissions after 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 ofthis proceeding, should be
`
`directed to the Central Reexamination Unit at telephone number (57]) 272-7705.
`
`/Alexander.l Kosowski/
`
`Primary Examiner, Art Unit'3992
`
`W!
`; .
`2: S K
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`Page 11 of 11
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