UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`DO NOT USE IN PALM PRINTER
`(THIRD PARTY REQUESTER‘S CORRESPONDENCE ADDRESS)
`
`Blakely Sokoloif Taylor & Zafman LLP
`1279 Oakmead Parkway
`Sunnyvale. CA 94085—4040
`
`""""""""""
`
`Commlssloner for Patents
`United States Patent and Trademark Office
`P.O. Box1450
`Alexandria, VA 22313-1450
`Wuxfiotaov
`
`MAI LE D
`'c
`25 2009
`CENTRAL REEXAMINATION UN”
`
`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)).
`
`PTOL465 (Rev.07—04)
`
`Page 1 of 13
`
`Verizon Exhibit 1027
`
`

`

`Office Action in Ex Pane Reexamination
`
`Control No.
`90/010,424
`
`Patent Under Reexamination
`6131121
`
`Examiner
`ALEXANDER J. KOSOWSKI
`
`
`Art Unit
`3992
`
`- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`
`bl:] This action is made FINAL.
`ag Responsive to the communication(s) filed on 2/24/09 .
`cE] A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortened statutory period for response to this action is set to expire g monlh(s) from the mailing date of this letter.
`Failure to respond within the period for response will result in termination ofthe 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 CFR 1.550(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 l
`
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1.
`
`2.
`
`[:1 Notice of References Cited by Examiner. PTO-892.
`
`3. El
`
`Interview Summary. PTO-474.
`
`Information Disclosure Statement. PTO/SB/OB.
`
`4. D
`
`.
`
`Part Ii
`
`SUMMARY OF ACTION
`
`Claims 6—14 are subject to reexamination.
`
`Claims L5 are not subject to reexamination.
`
`Claims
`
`have
`
`been canceled in the present reexamination proceeding.
`
`EIDIZIDDIZIZ The drawings. filed on _are acceptable.
`
`Claims
`
`are patentable and/or confirmed.
`
`Claims 6-14 are rejected.
`
`Claims
`
`a
`
`re objected to.
`
`
`
`1a.
`
`1b.
`
`2.
`
`9N9)???“
`
`[:1 The proposed drawing correction. filed on _has been (7a)
`
`|:I approved (7b)|:| disapproved.
`
`[:1 Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`
`a)l:l AII b)I:I Some' c)|:| None
`
`of [be certified copies have
`
`1D - been received.
`
`2D not been received.
`
`3D been filed in Application No. __
`
`4D been filed in reexamination Control No.
`
`5B been received by the International Bureau in PCT application No.
`
`' See the attached detailed Office action for a list of the certified copies not received.
`
`9. E] Since the proceeding appears to be in condition for 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 0.6. 213.
`
`10. [:1 Other:
`
`il'third na
`cc: Rc-ucster
`US. Patent and Trademark Office
`PTOL-466 (Rev. 08-06)
`
`rcucstcr
`
`Page 2 of 13
`
`Office Action In Ex Part9 Reexamination
`
`Part oI Paper No. 20090818
`
`

`

`Application/Control Number: 90/010,424
`Art Unit: 3992
`
`Page 2
`
`‘DETAILED ACTION
`
`1)
`
`This Office action addresses claims 6-1 4 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 Parre reexamination filed on 2/24/09 (hereafter the
`
`“Request"). Claims 1—5 are not subject to reexamination.
`
`IDS
`
`2)
`
`With regard to the IDS filed 6/1 1/09:
`
`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 of interest, in a subsequent office action. See Guidelines for
`Reexamination of Cases in View of In re Portola Packaging, Inc., 110 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 088 or its equivalent mean that the information has been considered by the
`examiner to the extent noted above. MPEP § 609 (Eighth Edition, Rev. 5, August 2006).
`Regarding IDS submissions MPEP 2256 recites the following: "Where patents,
`publications, and other such items ofinformation are submitted by a party (patent owner or
`requester) in compliance with the requirements of the 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
`scope required by MPEP 2256.
`
`With regard to the IDS’s filed 8/11/09 and 8/12/09:
`
`These IDS’s have been given due consideration. However, 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 of the patent.
`
`Page 3 of 13
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`

`

`Application/Control Number: 90/010,424
`Art Unit: 3992
`
`Page 3
`
`Rejections
`
`3)
`
`The following three rejections are utilized by the examiner below, referencing the
`
`proposed prior art listed on pages 4-6 ofthe Request:
`
`Issue 1:
`
`Claims 6-14 in view ofNetBIOS and RFC 1531
`
`Issue 2:
`
`Claims 6-14 in view ofEtherphone, Vin and RFC 1531
`
`Issue 3:
`
`Claims 6-14 in view of VocalChat and RFC 1531
`
`4)
`
`Claim Rejections - 35 USC § 102
`
`Claim Rejection Paragraphs
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 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 ol’application for patent in the United States.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(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 art are
`such that the 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.
`
`Issue 1
`
`Page 4 of 13
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`

`

`Application/Control Number: 90/010,424
`Art Unit: 3992
`
`Page 4
`
`5)
`
`Claims 6-1 1 are rejected under 35 U.S.C. 102(b) as being unpatentable by NetBIOS (See
`
`claim mapping in Request pages 28-49, incorporated by reference).
`
`6)
`
`Claims 12-14 are are rejected under 35 U.S.C. 103(a) as being unpatentable by NetBIOS,
`
`further in view ofRFC 1531.
`
`Referring to (Claims 12-14), NetBIOS teaches a computer data signal, a method of
`
`establishing a point-to-point communication, and an apparatus for use with a computer system
`
`
`(ljetBlOS, pg. 357, 359, 371, whereby the system is implemented in networking software on
`
`personal computers and is used for connecting processes directly over a network) comprising:
`
`transmitting to a server process, a network protocol address (NetBIOS, pg. 367, 385, 388,
`
`461464, whereby a node must register with a NBNS by transmitting an identifier and current
`
`W);
`
`transmitting, to the server process, a query as to whether a second process is connected to
`
`the computer network (NetBIOS, pg. 377, 388-389, 440, 464-465, whereby an end node sends a
`
`
`guery to the NBNS to determine if another end node is connected);
`
`receiving a network protocol address of the second process from the server process, when
`
`the second process is connected to the computer network (NetBIOS, pg. 377, 389-394, 446
`
`whereby the NBNS maintains addresses of only active nodes and returns the information
`
`regarding the gueried node); and
`
`responsive to the network protocol address ofthe second process, for establishing a point-
`
`to—point communication link between the first process and the second process over the computer
`
`Page 5 of 13
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`

`

`Application/Control Number: 90/010,424
`Art Unit: 3992
`
`Page 5
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`network (NetBIOS, pg. 361, 397-400, whereby once a gueried node‘s address is found, a directed
`
`point-to—point communication is established ofthe network).
`
`In addition. NetBIOS teaches the use ofTCP/IP (NetBIOS, pg. 356—357). However,
`
`NetBIOS does not explicitly teach that the network protocol address is received by a first process
`
`following connection to a computer network.
`
`
`RFC 1531 teaches dynamically assigning IP addresses on a TCP/IP network by an
`
`Internet access server [RFC 1531, Section 2.2).
`
`Therefore it would have been obvious to one skilled in the art at the time the invention
`
`
`was made to utilize dynamically assigned IP addresses from Internet access servers in the
`
`invention taught by NetBIOS above sincethis allows for automatic reuse ofan address that is no
`
`longer needed by the host to which it was assigned (RFC 1531, Pg. 2), and since examiner notes
`
`the use ofdynamic IP address assignment in a TCP/IP network are old and well known in the art,
`
`
`and are useful to eliminate the burdensome task of manually assigning IP addresses for all
`
`networked computers.
`
`Issue 2
`
`7)
`
`Examiner notes the following will represent the Etherphone references utilized for the
`
`rejection below (All considered a single reference as published together):
`
`“Zellweger I": An Overview ofthe Etherphone System and its Applications
`
`"Swinehart ]
`
`Telephone Management in the Etherphone System
`
`"Terry": Managing Stored Voice in the Etherphone System
`
`"Swinehar! 2": System Support Requirements for Multi-media Workstations
`
`Page 6 of 13
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`

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`Application/Control Number: 90/010,424
`
`Page 6
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`Art Unit: 3992
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`"Zellweger 2 Active Paths through Multimedia Documents
`
`8)
`
`Claims 6-1 I are rejected under 35 U.S.C. 102(b) as being unpatentable by Etherphone
`
`(See claim mapping in Request pages 62-80, incorporated by reference).
`
`9)
`
`Claims 12—14 are rejected under 35 U.S.C. 103(a) as being unpatentable by Etherphone,
`
`further in view of Vin, further in view of RFC 1531
`
`Referring to (Claims 12-14), Etherphone teaches a computer data signal, a method of
`
`establishing a point-to-point communication, and an apparatus for use with a computer system
`
`(Zellweger 1, pg. 1-2. Swinehart 2, pg. 1, Terry, pg. 4, whereby Etherphone functionality is
`
`
`implemented in networking software run on computer and used to connect remote users via a
`
`network] comprising:
`
`transmitting to a server process, a network protocol address (Swinehart 1, pg. 2, 4,
`
`Zellweger 1, pg. 5, Terry, pg. 3. whereby a voice control server receives network address ofa
`
`connected process);
`
`transmitting, to the server process, a query as to whether a second process is connected to
`
`the computer network (Zellweger 1, pg. 3, 5, Swinehart 1, pg. 2, 4, whereby a guegy is sent to a
`
`server to determine the location and logged in status ofa second Ethegphone);
`
`receiving a network protocol address ofthe second process from the server process, when
`
`the second process is connected to the computer network (Swinehart 1, pg. 4, whereby a
`
`workstation receives the network address ofa second workstation from Voice Control Server
`
`when the second workstation is connected to the server); and
`
`Page 7 of 13
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`

`

`Application/Control Number: 90/010,424
`Art Unit: 3992
`
`Page 7
`
`responsive to the network protocol address ofthe second process, for establishing a point—
`
`to~point communication link between the first process and the second process over the computer
`
`network (Swinehart 1, pg. 4, Zellweger 1, pg. 2, Swinehart 2, pg. 1, whereby once network
`
`addresses are known, voice datagrams are transmitted directly among participants, bypassing the
`
`control server).
`
`However, Ethemhone does not explicitly teach that the network protocol address is
`
`received by a first process following connection to a computer network.
`
`Vin teaches an Ether_phone implementation whereby 1ntemet communications and IP
`
`addresses are used (Vin, page 77 and Figure 5).
`
`RFC 1531 teaches dynamically assigning IP addresses on a TCP/IP network by an
`
`1ntemet access server (RFC 1531, Section 2.2)..
`
`
`Therefore, it would have been obvious to one skilled in the art at the time the invention
`
`
`was made to utilize the computer program product taught by Ethemhone above in an Internet
`
`
`based system utilizing dynamically assigned IP addresses from 1ntemet access servers as taught
`
`by Vin and RFC 1531 since Ethepphone was intended for use in multiple networks and
`
`communication rotocols 'l‘err
`
`acre 3
`
`since Vin and Ethe hone both describe the same
`
`Ethegphone system, since examiner notes that Internet and IP address-based networks are old and
`
`well known in the art and would be a natural extension from an ethemet-based system, since
`
`dynamic allocation oflP addresses allows for automatic reuse ofan address that is no longer
`
`needed by the host to which it was assigned (RFC 1531, Pg. 2:, and since examiner notes the use
`
`of dynamic IP address assignment in a TCP/IP network are old and well known in the an, and
`
`Page 8 of 13
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`

`

`Application/Control Number: 90/010,424
`Art Unit: 3992
`
`Page 8
`
`are useful to eliminate the burdensome task of manually assigning IP addresses for all networked
`
`computers.
`
`Issue 3
`
`10)
`
`Examiner notes the following will represent the VocalChat references utilized for the
`
`rejection below:
`
`"User '5 Guide ": VocalChat User’s Guide, Version 2.0
`
`“Readme ”: VocalChat Readme File, Version 2.02
`
`”Networking Information VocalChat 1.01 Networking Information
`
`”Help File ”: VocalChat. Information, Version 2.02
`
`"Troubleshooting Help File ": VocalChat Troubleshooting Help File, Version 2.02
`
`1 1)
`
`Claims 6-1 1 are rejected under 35 U.S.C. 103(a) as being unpatentable by VocalChat
`
`(See claim mapping in Request pages 90-] 10, incorporated by reference).
`
`In addition examiner notes that it would have been obvious to one skilled in the art at the
`
`time the invention was made to combine all five VocalChat References utilized above since they
`
`all describe a VocalChat system which shares numerous common features including a central
`
`server to store addresses and VocalChat client software and which all interoperate in the same
`
`basic manner
`
`Page 9 of 13
`
`

`

`Application/Control Number: 90/010,424
`An Unit: 3992
`
`Page 9
`
`12)
`
`Claims 12-14 are rejected under 35 U.S.C. 103(a) as being unpatentable by the
`
`combination of all five VocalChat references listed above (hereafter “VocalChat References”),
`
`further in view of RFC 1531.
`
`Referring to (Claims 12—14), VocalChat teaches a computer data signal, a method of
`
`establishing a point-to-point communication, and an apparatus for use with a computer system
`
`User’s Guide
`
`. 5 7-8 Hel File
`
`. 2 whereb VocalChat is im lemented as a
`
`ro ram on a
`
`computer, and utilized to connect computers on a network) comprising:
`
`transmitting to a server process, a network protocol address (User’s Guide, pg. 5,
`
`Network Information, pg. 2, 10, Help File, pg. 28, whereby a connection to a server is made to
`
`register current network protocol addresses);
`
`transmitting, to the server process, a query as to whether a second process is connected to
`
`the computer network (Help File, pg. 2, 22, 26, Network Information, pg. 10, whereby a client
`
`Query to a server is used to locate users on the network);
`
`receiving a network protocol address of the second process from the server process, when
`
`the second process is connected to the computer network (Help File. pg. 2, 22, whereby
`
`VocalChat receives information from the connection file through the network of unique users
`
`registered); and
`
`responsive to the network protocol address ofthe second process, for establishing a point-
`
`to-point communication link between the first process and the second process over the computer
`
`network {Help File, pg. 17, User Guide, pg. 2, whereby user-to-user access over a network is
`
`established once network addresses are known).
`
`Page 10 of 13
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`

`

`Application/Control Number: 90/010,424
`
`Page 10
`
`Art Unit: 3992
`
`In addition, VocalChat teaches the use of TCP/IP (Troubleshooting Help File. pg. 28).
`
`HoweverI VocalChat does not explicitly teach that the network protocol address is received by a
`
`first process following connection to a computer network..
`
`RFC 1531 teaches dynamically assigning IP addresses on a TCP/IP network by an
`
`lntemet access server (RFC 1531, Section 2.2).
`
`Therefore it would have been obvious to one skilled in the art at the time the invention
`
`
`was made to combine all five VocalChat References utilized above since they all describe a
`
`VocalChat system which shares numerous common features including a central server to store
`
`addresses and VocalChat client software and which all interoperate in the same basic manner.
`
`In
`
`addition it would have been obvious to utilize dynamically assigned IP addresses from Internet
`
`
`access servers in the invention taught by VocalChat above since this allows for automatic reuse
`
`ofan address that is no longer needed by the host to which it was assigned (RFC 153 1, Pg. 2),
`
`
`and since examiner notes the use of dynamic IP address assignment in a TCP/IP network are old
`
`and well known in the art, and are useful to eliminate the burdensome task of manually assigning
`
`IP addresses for all networked computers.
`
`Page 11 of 13
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`

`

`Application/Control Number: 90/010,424
`Art Unit: 3992
`
`Page 1
`
`1
`
`Conclusion
`
`All correspondence relating to this ex'parte reexamination proceeding should be directed
`
`as follows:
`
`By US. Postal Service Mail to:
`
`Mail Stop Ex Pane Reexam
`ATIN: 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
`
`httpsz/Isportal.uspto.gov/authenticate/authenticateuserlocalepfhtml
`
`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 12 of 13
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`

`

`Application/Control Number: 90/010,424
`Art Unit: 3992
`
`Page 12
`
`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.
`
`/A|exander J Kosowski/
`
`Primary Examiner, Art Unit 3992
`
`CM.
`
`ES Id
`
`Page 13 of 13
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`