`
`UNITED STATES DEPARTMENT OF COMMERCE
`United Stale: Palm! and Tradcrnark Office
`Addrrss: COMMISSIONER FOR PATENTS
`A
`,Virgini| 22m.iaso
`.gov
`
`APPLICATION NO.
`
`90/010.424
`
`FILING DATE
`
`02/24/2009
`
`42624
`
`7590
`
`08lI6l20|0
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`6] 3! I21
`
`2655-0I86
`
`6643
`
`EXAMINER
`
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`4300 WILSON BLVD., 7TH FLOOR
`ARLINGTON, VA 22203
`
`DATE MAILED: OB/I6/2010
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. IO/03)
`
`Page 1 of 7
`
`Verizon Exhibit 1025
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`
`
`
`
`TRADEMARK OFFICE
`UNITED STATES PATENT
` Commissioner for Patents
`United States Patent and Trademark Onice
`P.O.Box1450
`Alexandria, VA 2231 3-1 450
`wwwuxplmoor
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER‘S CORRESPONDENCE ADDRESS)
`
`Blakely Sokolofi Taylor & Zafman L.LP
`
`-
`
`-
`
`1279 Oakmead Parkway
`
`Sunnyvale‘ CA 940854040
`
`I 6
`
`CENTRAL REEXAIVIINATION UNIT
`
`EXPARTE 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(f)).
`
`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)).
`
`PTOIL-465 (Rev.07-04)
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`Page 2 of 7
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`
`
`Control No.
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`.
`:
`0/0 0, 2
`Notice of Intent to Issue
`9
`1_ 4 4
`‘ Ex Parte Reexamination Certificate
`E"“'“'"°'
`ALEXANDER J.
`KOSOWSKI
`
`-9 The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`
`
`
`Patent Under Reexamination
`
`s131'121
`_
`A” U"'‘
`- 3992
`
`Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is
`subject to reopening at the initiative of the Office or upon petition. Cf. 37 CFR 1.313(a). A Certificate will be
`issued in view of
`
`(a) Q Patent owner's communication(s) filed: 28 July 2010.
`(b)
`[:1 Patent owner's late response filed:
`.
`(c)
`[:1 Patent owner's failure to file an appropriate response to the Office action mailed:
`(d)
`[:1 Patent owner's failure to timely file an Appeal Brief (37 CFR 41.31).
`(e) El Other:
`Status of Ex Pan‘e Reexamination:
`(f) Change in the Specification:
`(g) Change in the Drawing(s):
`(h) Status of the Claim(s):
`
`I] Yes IZ No
`I] Yes IX No
`
`(1) Patent claim(s) confirmed: 12-14.
`(2) Patent claim(s) amended'(inc|uding dependent on amended claim(s)): 6_-1_1
`(3) Patent claim(s) cancelled:
`.
`-
`(4) Newly presented claim(s) patentable:
`(5) Newly presented cancelled claims:
`
`.
`
`Note the attached statement of reasons for patentability and/or confirmation. Any comments considered
`necessary by patent owner regarding reasons for patentability and/or confirmation must be submitted promptly
`to avoid processing delays. Such submission(s) should be labeled: "Comments On Statement of Reasons for
`Patentability and/or Confirmation."
`
`3.l:l
`
`Note attached NOTICE OF REFERENCES CITED (PTO-892)._
`
`4.[:l
`
`Note attached LIST OF REFERENCES CITED (P-TO/SB/08).
`
`_5.D
`6.D
`
`.l:l
`
`.l:l
`
`.l:l
`
`The drawing correction request filed on
`
`is:
`
`[:1 approved
`
`lj disapproved.
`
`Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)—(d) or (f).
`a)|:| All
`b)[:J Some‘
`’ c)[:] None
`of the certified copies have
`C] been received.
`[:1 not been received.
`.
`[:1 been filed in Application No.
`.
`[:1 been filed in reexamination Control No.
`[:1 been received by the International Bureau in PCT Application No.
`
`" Certified copies not received:
`
`Note attached Examiner's Amendment.
`
`Note attached Interview Summary (PTO—474).
`Other:
`
`;_Tj|
`
`cc: Rcguestcr (ifthird pan)’ rcguesler)
`U.S. Patent and Trademark Office
`PTOL-469 (Rev.08-06)
`
`Notice of intent to Issue Ex Parte Reexamination Certificate
`
`Part of Paper No 20100810
`
`Page 3 of 7
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`
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`Application/Control Number: 90/010,424
`
`Art Unit: 3992
`
`'
`
`Page 2
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`DETAILED ACTION
`
`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 questionlof
`
`patentability was raised in the Request for Ex Parle reexamination filed on 2/24/09 (hereafier the
`
`“Request”). Claims 1-5 are not subject to reexamination. This action is in response to the
`
`supplemental amendment filed after final on 7/28/10. _ Claims 6-14 are hereby confirmed and/or
`
`allowable.
`
`REMARKS
`
`2)
`
`Examiner notes that the amendment filed 7/28/l 0 includes amendments to claims 9-1 1
`
`that are similar to those made to claims 6-8 in the previous afier final amendment filed 7/19/10.
`
`As noted in the advisory action mailed 7/27/10, claims 6-8 were allowable in view ofthese
`
`amendments. Therefore,‘ claims 9-11 are now also allowable. Both after final amendments have
`
`been entered by the examiner.
`
`' STATEMENT ‘OF REASONS FOR PATENTABILITY AHVD/OR COl\lFIRMAT1ON
`
`3)
`
`Claims 6-14 are confirmed.
`
`The following is an examiner's statement of reasons for confirmation of the claims found
`
`patentable in this reexamination proceeding:
`
`Referring to claims 6-1 1, the claims are allowable over the prior art that was explained in
`
`the request and determined to raise a substantial new question of patentability in the order
`
`granting reexamination and over the prior art that was applied and discussed by the examiner in
`
`Page 4 of 7
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`
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`Application/Control Number: 90/010,424
`Art Unit: 3992
`
`Page 3
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`the present reexamination proceeding because that prior art does not explicitly teach dynamically
`
`assigned network protocol addressing, in combination with the remainingielements or features of
`
`the claimed invention.
`
`Referring to claims 12-14, the claims are allowable over the prior art that was explained
`
`in the request and determined to raise a substantial new question of patentability in the order
`
`granting reexamination and over the prior art that was applied and discussed by the examiner in
`
`the present reexamination proceeding because that prior art does not explicitly teach receiving
`
`network protocol addresses from a server, in combination with the remaining elements or
`
`features ofthe claimed invention.
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`Page 5 of 7
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`
`
`Application/Control Number: 90/010,424
`Art Unit: 3992
`
`g
`
`’
`
`V Page 4
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`Conclusion
`
`All correspondence relating to this ex parte reexamination proceeding should be directed
`
`as follows:
`
`By U.S. Postal Service Mail to:
`
`Mail Stop Ex Pane Reexam
`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
`
`https://sportal .uspto.glov/authenticate/authenticateuserlocalepfh(ml
`
`EFS-Web offers the benefit of quick 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.
`
`Page 6 of 7
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`
`
`Application/Control Number: 90/010,424
`Art Unit: 3992
`
`’
`
`Page 5
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`Any inquiry conceming 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 (571) 272-7705.
`
`/Alexander] Kosowski/
`
`Primaxy Examiner, Art Unit 3992
`
`EDK
`
`3,06
`A’uv3€4?/
`
`Page 7 of 7