IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re PATENT APPLICATION OF:
`
`Attorney Docket:
`
`2655-0186
`
`Net2Phone, Inc. (Patent No. 6,131,121)
`Control No.:
`90/010,424
`
`Group Art Unit:
`3992
`Examiner: KOSOWSKI, Alexander
`
`Issue Date: October 10, 2000
`
`Date:
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`July 19, 2010
`
`Title: POINT-TO-POINT COMPUTER
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`NETWORK COMMUNICATION UTILITY
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`DYNAMICALLY ASSIGNED NETWORK
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`PROTOCOL ADDRESSES
`
`Confirmation No.:
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`6648
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`AMENDMENT AFTER FINAL REJECTION IN A RE-EXAMINATION
`
`Hon. Commissioner of Patents
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`
`Sir:
`
`In response to the Office Action dated May 17, 2010, the Assignee hereby requests the
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`automatic one-month extension of time proscribed in MPEP 2265 for “a first timely response to
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`an Office Action” after a final rejection in a rat-examination and submits:
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`Amendments beginning on page 2 of this paper; and
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`Remarks/Arguments beginning on page 4 of this paper.
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`Page 1 of 7
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`_
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`Verizon Exhibit 1022
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`

`

`Re-Examination of Patent No. 6,131,121
`Control No.: 90/010,424
`
`February 24, 2009
`Filed:
`Reply to Office Action of May 17, 2010
`
`AMENDMENTS TO THE CLAIMS
`
`Please amend the claims undergoing re-examination as follows:
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`6. (Twice Amended) A computer program product for use with a computer system
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`capable of executing a first process and connecting to other processes and a server process over a
`
`computer network, the computer program product comprising a computer usable medium having
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`computer readable code means embodied in the medium comprising:-
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`A. program code configured to, following connection of the first process to the computer
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`network, forward to the server process a dynamically assigned network protocol address at which
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`the first process is connected to the computer network;
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`B. program code configured to query the address server as to whether the second process
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`is connected to the computer network;
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`C. program code configured to receive a dynamically assigned network protocol address
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`of the second process from the address server, when the second process is connected to the
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`computer network; and
`D. program code configured to respond to the network protocol address of the second
`process, establish a point-to—point communication link with the second process over the
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`computer network.
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`7. (Twice Amended) A computer data signal embodied in a carrier wave comprising:
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`A. program code configured to, following connection of a first process to a computer
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`network, forward to a server process a dynamically assigned network protocol address at which
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`the first process is connected to the computer network;
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`B. program code configured to query the server process as to whether a second process is
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`connected to the computer network;
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`Page 2 of 7
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`

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`Re-Examination of Patent No. 6,131,121
`Control No.: 90/010,424
`Filed:
`February 24, 2009
`Reply to Office Action of May 17, 2010
`
`C. program code configured to receive a dynamically assigned network protocol address
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`of the second process from the server process, when the second process is connected to the
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`computer network; and
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`D. program code, responsive to the network protocol address of the second process, and
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`configured to establish a point-to-point communication connection with the second process over
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`the computer network.
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`8. (Twice Amended) An apparatus for use with a computer system, the computer system
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`executing a first process operatively coupled over a computer network to a second process and a
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`directory database server process, the apparatus comprising:
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`A. program logic configured to, following connection of the first process to the computer
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`network forward to the address server a dygamically assigned network[,] protocol address at
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`which the first process is connected to the computer network;
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`B. program logic configured to query the address server as to whether the second process
`
`is connected to the computer network;
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`C. program logic configured to receive a dvnamically assigned network protocol address
`
`of the second process from the address server, when the second process is connected to the
`
`computer network; and
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`D. program logic configured to, in response to the network protocol address of the second
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`process, establish a point-to-point communication link with the second process over the
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`computer network.
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`Page 3 of 7
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`

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`Re-Examination of Patent No. 6,131,121
`Control No.: 90/010,424
`
`February 24, 2009
`Filed:
`Reply to Office Action of May 17, 2010
`
`REMARKS/ARGUMENTS
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`Favorable reconsideration of the claims currently undergoing re-examination, in view of
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`the present amendment and in light of the following discussion, is respectfully requested.
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`STATUS OF THE CLAIMS AND SUPPORT FOR CHANGES TO THE CLAIMS
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`Claims 6-14 are pending and the subject of this re-examination; claims 1-5 are not subject
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`to re-examination. Claims 6-8 have been amended herewith to explicitly recite what was already
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`inherent -- that the addresses are “dynamically assigned.” The claim amendments also remove
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`the previous amendments in light of the fact that the Office Action has provided no weight to the
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`previous changes. Specifically, the Office Action states “Examiner notes that although claims 6-
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`8 have been amended, the amendments simply move existing claim limitations to a slightly
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`different position in the claims. This does not affect the claim interpretation. . ..” No claims
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`have been added or canceled herewith.
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`The changes to claims 6-8 are supported by claims 6-8 themselves and by col. 6, lines 53-
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`59, which states “When either of processing units 12, 22 logs on to the Internet via a dial—up
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`connection, the respective unit is provided a dynamically allocated IP address by an Internet
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`service provider.” Thus, no new matter has been added.
`It is respectfully requested that the amendments herein be entered given that the claim
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`changes place claims 6-11 “in better form for consideration on appeal” as specified in 37 CPR.
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`l.ll6(b)(2) in light of the remarks on dynamic addressing in the Office Action in section 6d.
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`Moreover, the claim changes do not require further consideration and/or search. In fact, the
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`addition of “dynamically assigned” to the amended claims is consistent with the remarks in the
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`previous response which stated “The changes are intended to make more explicit what is
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`believed to be understood already —- that those claims refer to dynamic addressing.” The
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`removal of the previous amendments also does not require further consideration and/or search in
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`Page 4 of 7
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`

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`Re—Examination ofPatent No. 6,131,121
`
`Control No.: 90/010,424
`
`February 24, 2009
`Filed:
`Reply to Office Action of May 17, 2010
`
`light of the Office Action’s statement that the previous change “does not affect the claim
`
`interpretation. . . .”
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`RESPONSE TO REJECTIONS
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`In the outstanding Office Action, one of the previous grounds for rejection was
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`withdrawn, the patentability of claims 12-14 was confirmed, but claims 6-1 1 were again rejected
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`as follows:
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`1. Claims 6—1 1 were alleged to be anticipated by NetBIOS; and
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`2. Claims 6-14 were alleged to be anticipated by the Etherphone papers.
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`, Both of those rejections are respectfully traVersed for the reasons set forth below.
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`The rejection of Claims 6-11 under 35 U.S.C. 102(1)) over NetBIOS
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`Claims 6-11 are rejected under 35 U.S.C. 102 as being anticipated by NetBIOS. That
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`ground for rejection has been overcome by the amendments to claims 6-8.
`
`Claim 6 has been amended to recite “program code configured to forward to the server
`
`process a dynamically assigned network protocol address at which the first process is connected
`
`to the computer network following connection of the first process to the computer network.”
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`Claim 6 has further been amended to recite “program code configured to receive a dynamically
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`assigged network protocol address of the second process from the server process.” Claims 7 and
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`8 have been amended similarly. Those changes are believed to overcome the outstanding ground
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`for rejection in light of the comments on dynamic addressing in section 6d of the office action
`
`which state:
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`,
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`With respect to the NetBIOS rejection, examiner agrees with declarant
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`Mayer—Patel that bringing dynamic addressing into a NetBIOS type system would
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`create a new set of obstacles that would need to be solved that are not obvious in
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`view of the combination of references.
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`Page 5 of 7
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`

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`Re-Examination of Patent No. 6,131,121
`Control No.: 90/010,424
`
`February 24, 2009
`Filed:
`Reply to Office Action of May 17, 2010
`
`Accordingly, the patentability of claims 6-1 1 over NetBIOS should be confirmed.
`
`The rejection of claims 6—11 under 35 U.S.C. 102; La) over the Ethemhone papers
`
`Claims 6-11 have been rejected under 35 U.S.C. 102(b) as being anticipated by the
`
`Etherphone papers. That ground for rejection has been overcome by the amendments to claims
`
`68.
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`Claim 6 has- been amended to recite “program code configured to forward to the server
`
`process a dynamically assigned network protocol address at which the first process is connected
`
`to the computer network following connection of the first process to the computer network.”
`
`Claim 6 has further been amended to recite “program code configured to receive a dynamically
`
`assigfigl network protocol address of the second process from the server process.” Claims 7 and
`
`8 have been amended similarly. Those changes are believed to overcome the outstanding ground
`
`for rejection in light of the comments on dynamic addressing in section 6d of the office action
`
`which state:
`
`With respect to the rejection under Etherphone, examiner notes that a
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`similar argument applies to Etherphone as to NetBIOS, namely that combining
`
`the system with dynamic addressing would create new, non obvious obstacles to
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`overcome.
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`Accordingly, the patentability of claims 6—11 over the Etherphone papers should be confirmed.
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`Page 6 of 7
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`

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`
`
`By: / Michael R. Casey /
`
`
`Michael R Casey, PhD.
`Re istration No.: 40,294
`
`Re-Examination of Patent No. 6,131,121
`Control No.: 90/010,424
`Filed:
`February 24, 2009
`Reply to Office Action of May 17, 2010
`
`Consequently, in light of the above discussions, the outstanding grounds for rejection are
`
`believed to have been overcome and the patentability of the claims subject to re—examination
`
`should be indicated as confirmed. An early and favorable action to that effect is respectfully
`
`requested.
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`CHARGE STATEMENT: Deposit Account No. 501860, order no. 2655-0186.
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`The Commissioner is hereby authorized to charge any fee specifically authorized hereafter. or any missing or
`Insufficient fee(s) filed, or asserted to be filed, or which should have been filed herewith or concerning any paper filed
`hereafter. and which may be required under Rules 16-18 (missing or insufficiencies only) now or hereafter relative to
`this application and the resulting Official Document under Rule 20. or credit any overpayment. to our Accounting/
`Order Nos. shown above. for which purpose a duplicate copy of this sheet is attached.
`
`
`
`This CHARGE STATEMENT does not authorize charge of the issue fee until/unless an
`issue fee transmittal sheet is filed.
`_._—______l
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`Respectfully submitted,
`
`
`CUSTOMER NUMBER
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`42624
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`
`
`Davidson Berquist Jackson & Gowdey LLP
`4300 Wilson Blvd., 7th Floor, Arlington, Virginia 22203
`Main: (703) 894-6400 0 FAX: (703) 894—6430
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`Page 7 of 7
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