. Kirk UNITED STIgS DEPARTMENT OF COMMERCE
`Patent and Trademark Office
`'
`a
`99;
`Address:
`COMMISSIONER OF PATENTS AND TRADEMARKS
`”hm 0*
`Washington. DC. 20231
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`
`\
`
`meme
`03/719, 554
`IZI'EI/‘EE/‘EIE-
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`nasweommvemon _
`MATTQNAY
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`Ni:l':li]:31l7l:il:l4
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`KUDIRHA & JDBSE, LLP
`TNEI CENTER PLAZA
`8mm MA 1
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`moi/om —|
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`PATEL,A
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`_—
`2732
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`DATE MAILED:
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`UiB/IZId/‘R'?
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`0
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`Please find below and/or attached an Office communication concerning this application or
`proceeding.
`
`Commisslonar of Patents and Trademarks
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`PTO-90C (Rev. 2/95)
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`Page 1 0f 7
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`1- Elle Copy
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`Verizon Exhibit 1026
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`

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`Office Aetion summary
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`Applicant(s)
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`Application No.
`08/719,554
`Examiner
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`S. MITTAWAY ET AL
`Group Art Unit
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`lll
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`‘
`(Illlllllllllllllll
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`[Xi Responsive to communicationls) filed on rhe agg/ication fi/ed 09/25/7996
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`D This action is FINAL.
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`El Since this application is in condition for a||0wance except for formal matters, prosecution as to the merits is closed
`in accordance with the practice under Ex parre Quayle, 1935 CD. 11; 453 0.6. 213.
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`month(sl. or thirty days, whichever
`3
`A shortened statutory period for response to this action is set to expire
`is longer, from the mailing date of this communication. Failure to respond within the period for response will cause the
`application to become abandoned.
`(35 U.S.C. § 133). Extensions of time may be obtained under the provisions of
`37 CFR1.136(a).
`
`Disposition of Claims
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`IX Claim(s) 7-6
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`Of the above. claimls)
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`CI Claimlsl
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`E Claim(s) 7-6
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`is/are pending in the application.
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`is/are withdrawn from consideration.
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`is/are allowed.
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`is/are rejected.
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`is/are objected to.
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`are subject to restriction or election requirement.
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`l: Claimls)
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`l: Claims
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`Application Papers
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`
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`
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`I: See the attached Notice of Draftsperson's Patent Drawing Review, PTO-948.
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`CI The drawing(s) filed on
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`l: The proposed drawing carrection, filed on
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`CI The specification is objected to by the Examiner.
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`is/are objected to by the Examiner.
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`is
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`Cepproved
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`Cdisapproved.
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`L_ The oath or declaration is objected to by the Examiner.
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`Priority under 35 U.S.C. § 119
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`l: Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 119(aj-(d).
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`Cl AII D Some"
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`EINone
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`of the CERTIFIED copies of the priority documents have been
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`[I received.
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`,
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`El received in Application No. (Series Code/Serial Number)
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`El received in this national stage application from the International Bureau (PCT Rule 17.2(a)).
`‘Certified copies not received:
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`Cl Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e).
`
`Attachmentls)
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`03 Notice of References Cited. PTO-892
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`IX Information Disclosure Statement(s), PTO-1449, Paper No(s).
`El Interview Summary, PTO-413
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`CI Notice of Draftsperson's Patent Drawing Review, PTO-948
`(:| Notice of Informal Patent Application, PTO-152
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`U. S. Patent and Trademark Office
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`PTO-326 (Rev. 9-95)
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`Page 2 of 7
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`—- SEE OFFICE ACTION ON THE FOLLOWING PAGES ---
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`Office Action Summary
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`Part of Paper No.
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`6
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`

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`1‘
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`Application/Control Number: 08/719,554
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`Page 2
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`An Unit: 2732
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`1.
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`This application has been filed with informal drawings which are acceptable for examination
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`purposes only. Formal drawings will be required when the application is allowed.
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`The nonstatutory double patenting rejection is based on ajudicial |y created doctrine grounded
`2.
`in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise
`extension ofthe "right to exclude" granted by a patent and to prevent possible harassment by multiple
`assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759
`F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA
`1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970);and, In re Thorington, 418
`F.2d 528, 163 USPQ 644 (CCPA 1969).
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321© may be used to
`overcome an actual or provisional rejection based on a nonstatutory double patenting ground
`provided the conflicting application or patent is shown to be commonly owned with this application.
`See 37 CFR 1.130(b).
`Effective January 1, 1994, a registered attorney or agent of record may sign a terminal
`disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
`
`3.
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`Claims 1-6 are provisionally rejected under thejudicial ly created doctrine ofdouble patenting
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`over claims 1-4,6-11,21,23,24,26-64,66, and 67 of copending Application No.08/533,1 15. This is
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`a provisional double patenting rejection since the conflicting claims have not yet been patented.
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`The subject matter claimed in the instant application is fully disclosed in the referenced
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`copending application and would be covered by any patent granted on that copending application
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`since the referenced copending application and the instant application are claiming common subject
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`matter, as follows: program code means for transmitting a query, program code means for receiving
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`a network protocol address, program code means for establishing a point-to-point communication
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`link etc.
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`Page 3 of 7
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`

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`Application/Control Number: 08/719,554
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`Page 3
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`Art Unit: 2732
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`Furthermore, there is no apparent reason why applicant would be prevented from presenting
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`claims con-esponding to those ofthe instant application in the other copending application. See In
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`re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
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`4.
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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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`(e) the invention was described in a patent granted on an application for patent by another filed in the United States
`before the invention thereofby the applicant for patent, or on an intemational application by another who has fulfilled
`the requirements of paragraphs (1 ), (2), and (4) of section 37l© of this title before the invention thereof by the
`applicant for patent.
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`5.
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`Claims l-6 are rejected under 35 U.S.C. 102(e) as being anticipated by Gordon (5,608,786).
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`Gordon teaches a system operating to establish a point-to-point connection through a network
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`utilizing address and telephone connection setup based on active status response to queries of a
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`connection database. See Abstract; figs.
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`1 and 5; col. 1-3, 4-6, and 8-10. Thus, Gordon reads on the
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`claimed method.
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`6.
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section
`102 ofthis title, ifthe differences between the subject matter sought to be patented and the prior an are such that the
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`Page 4 of 7
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`

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`Application/Control Number: 08/719,554
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`Page 4
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`Art Unit: 2732
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`subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary
`skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
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`7.
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`Claims 1-6 are rejected under 35 U.S.C, 103(a) as being unpatentable over Cohn etral
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`(5,740,231) in view of Morgan et a1 (5,524,254).
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`Cohn et al disclose in figs. 6 and I3 and col. l5, lines 20-63, col. 23, line 29- col. 24, line 42,
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`a multimedia server which uses a communication protocol in which the requesting node sends a
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`request for communication with another node through a address server, which contains an address
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`database, to obtain the address and routing information necessary to complete the communication.
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`Cohn et al do not specify searching the database to match the address with the destination node.
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`Morgan et al in col. 3—4 teaches the look-up procedure into the database which is performed to
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`retrieve the matching address from the database for use in initiating communications Over a network.
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`Therefore,
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`it would have been obvious to one skilled in the art
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`to include a database and
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`search/retrieval mechanism to locate the needed network address because such a mechanism permits
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`the database to modify over time to allow dynamic address assignment thus reducing the need to
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`larger address identifiers and thus the amount of data that needs to be transmitted with each packet
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`of data.
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`7.
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`Any response to this action should be mailed to:
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`Page 5 of 7
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`

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`Application/Control Number: 08/719,554
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`Page 5
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`Art Unit: 2732
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`Commissioner of Patents and Trademarks
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`Washington, DC. 20231
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`or faxed to:
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`(703) 308-9051, (for formal communications intended for entry)
`
`Or:
`
`(703) 308—5403 (for
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`informal or draft communications, please label
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`"PROPOSED" or "DRAFT”)
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`Hand-delivered responses should be brought to Crystal Park 11, 2021 Crystal Drive,
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`Arlington. VA., Sixth Floor (Receptionist).
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`8.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to A.llT PATEL whose telephone number is (703) 308-5347. The examiner can
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`normally be reached on Monday-Thursday from 6:30 to 5:00.
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`Page 6 of 7
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`Application/Control Number: 08/719,554
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`Page 6
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`A11 Unit: 2732
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`lfattempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor,
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`DOUGLAS OLMS, can be reached on (703) 305-4703. The fax phone number for this Group is
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`(703) 305-5403.
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`Any inquiry ofa general nature or relating to the status ofthis application or proceeding
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`should be directed to the Group receptionist whose telephone number is (703) 305-3900 .
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`AJIT PATEL
`
`February 23, 1999
`
`WMJJ
`Am Patel
`Primary Elm“
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`I
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`Page 7 of 7
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