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`13/3581353
`Application Number
`Req Uest
`I” “
`Continued Examination (RCE) S H: W 0'
`Transmittal
`First Named Inventor
`amue
`-
`00
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`_
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`_
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`_
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`
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`--
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`January 25, 2012
`
`Mail Stop RCE
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`P.O. Box 1450
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`This is a Request for Continued Examination (RCE) under 37 CFR1 .114 of the above-identified application.
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`1.
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`a. El
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`i. D Consider the arguments in the Appeal Brief or Reply Brief previously filed on
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`b. E Enclosed
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`i. X Amendment/Reply
`ii.
`|:|
`Affidavit(s)/Dec|aration(s)
`2. Miscellaneous
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`iii. X Information Disclosure Statement(|DS)
`iv. D Other
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`Suspension of action on the above-identified application is requested under 37 CFR 1.103(c) for a
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`The Director is hereby authorized to charge the following fees any underpayment of fees or credit any overpayments to
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`/Alan A. Limbach/
`Alan A. Limbach
`
`CERTIFICATE OF MAILING OR TRANSMISSION
`
`Setember 13, 2013
`39,749
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`
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`I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope
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`WEST\242244072.1
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`Electronic Patent Application Fee Transmittal
`
`Title of Invention:
`
`Tandem Access Controller Within The Public Switched Telephone Network
`
`First Named Inventor/Applicant Name:
`
`Samuel F. Wood
`
`Filed as Small Entity
`
`Utility under 35 USC111(a) Filing Fees
`
`Description
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`Fee Code
`
`Quantity
`
`Sub-Total in
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`USD($)
`
`
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`X. ii
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`YMax Corporation
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` S“:-S1-;(t$a)| in
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`600
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`Miscellaneous:
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`Total in USD ($)
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`EX. 1019
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`Electronic Acknowledgement Receipt
`
`m—
`
`Title of Invention:
`
`Tandem Access Controller Within The Public Switched Telephone Network
`
`I—
`
`Payment information:
`
`Submitted with Payment
`Pavmemvpe
`PavmentwasWssfu"vre<e*vedinRAM
`RAM confirmation Number
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`Deposit Account
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`yes
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`5629
`
`071896
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`Charge any Additional Fees required under 37 C.F.R. Section 1.16 (National application filing, search, and examination fees)
`
`Auth°“zedUse*
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.17 (Patent application and reexamination proce ‘
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`Page 4 of 17
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`Charge any Additional Fees required under 37 C.F.R. Section 1.19 (Document supply fees)
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`Multi
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`Pages
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`Response After Final Action
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`.
`Response_to_7-3-13_OffIce_Ac
`tion_357323_990127.pdf
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`204512
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`0b02d0521404868ae591e39416ff7a379a3
`0b5b9
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`Information Disclosure Statement (IDS)
`Form (SB08)
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`|DS_fi|ed_with_RCE_357323-99
`0127.pdf
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`188021
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`7e1b78a880279aaa4d67ff3dc44b9547744
`6f798
`
`This is not an USPTO supplied IDS fillable form
`
`Request for Continued Examination
`(RCE)
`
`RCE_Transmitta|_357323-9901
`27.pdf
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`199951
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`afa6902897a87l 0c4f0be8f63 1 cl 3a3a578d
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`This is not a USPTO supplied RCE SB30 form.
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`Fee Worksheet (SB06)
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`fee-info.pdf
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`1ede9d9f825c9fed51ca11efad0979852337
`850e
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`EX.1019
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`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO ofthe indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`lfa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`lfa timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
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`New International Application Filed with the USPTO as a Receiving Office
`lfa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and ofthe International Filing Date (Form PCT/R0/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Application No.
`Applicant
`Filed
`TC/A.U.
`
`Conf. No.
`
`Examiner
`Title
`
`Docket No.
`
`Customer No.
`
`:
`:
`:
`:
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`:
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`:
`:
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`:
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`:
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`13/358,353
`Samuel F. Wood et al.
`January 25, 2012
`265 1
`
`7896
`
`Sonia L. Gay
`TANDEM ACCESS CONTROLLER WITHIN THE PUBLIC
`
`SWITCHED TELEPHONE NETWORK
`
`357323-990127
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`26379
`
`Stop
`Comrnlssloner for Patents
`
`PO, Box 1450
`
`CERTIFICATE OF TRANSMISSION UNDER 37 CFR 1.8
`
`I hereby certify that this correspondence is being transmitted Via electronic
`submission, attention Mail Stop Amendment, Commissioner for Patents,
`Alexandria, VA 22313-1450, on Se tember 13 2013.
`
`DLA PIPER LLP (Us)
`
`Alexandria, VA 22313-1450
`
`By:
`
`/Alan A. Limbacm
`Alan A. Limbach
`
`RESPONSE TO OFFICE ACTION OF JULY 3, 2013, SUBMITTED WITH RCE
`
`Sir:
`
`In response to the Office Action of July 3, 2013, and in conjunction with the RCE filed
`
`herewith, please amend the above identified application as follows:
`
`Amendments to the Claims are reflected in the listing of claims which begins on page 2 of this
`
`paper.
`
`Remarks/Arguments begin on page 5 of this paper.
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`Appl. No.: 13/358,353
`Docket No.: 357323-990127
`
`Response to Office Action of July 3, 2013
`
`Amendments to the Claims:
`
`This listing of claims will replace all prior versions, and listings, of claims in the application:
`
`Listing of Claims:
`
`l.
`
`(Currently Amended) A method of using control criteria to route a
`
`communication between a user with access to a voice over IP (VOIP) communication network,
`
`and a called party with access to the public switched telephone network (PSTN) comprising:
`
`receiving at a controller a signaling message indicating a communication from the user
`
`via the VOIP network;
`
`using information in the signaling message to retrieve control criteria from a database,
`
`where the control criteria has been authenticated and derived from selections previously made by
`
`said user via a web server; and
`
`using data associated with the communication combined with the control criteria to route
`
`the communication from the controller to the called party via a PSTN tandem switch without
`
`traversing any intervening switches between the controller and the PSTN tandem switch.
`
`2.
`
`3.
`
`message.
`
`(Original) The method of claim l where the communication comprises a call.
`
`(Original) The method of claim l where the communication comprises a short
`
`4.
`
`(Previously Presented) The method of claim l where the signaling message
`
`indicating a communication is for a first call, and the routing of the communication constitutes a
`
`second call from the controller.
`
`5.
`
`(Previously Presented) The method of claim 4 where the control criteria includes
`
`a phone number of the user.
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`Appl. No.: 13/358,353
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`Response to Office Action of July 3, 2013
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`6.
`
`(Previously Presented) The method of claim 4 where the selections made by the
`
`user via a web server include a selection of a phone number.
`
`7.
`
`(Previously Presented) The method of claim 4 where the selections made by the
`
`user via a web server include an entering of a credit card number.
`
`8.
`
`(Previously Presented) The method of claim 4 where the selections made by the
`
`user via a web server include an entering of personal information.
`
`9.
`
`(Previously Presented) The method of claim 4 where the selections made by the
`
`user via a web server include a selection of features.
`
`10.
`
`(Previously Presented) The method of claim 9 where the selection of features
`
`includes a selection of selective call forwarding.
`
`ll.
`
`(Previously Presented) The method of claim 9 where the selection of features
`
`includes a selection of caller ID blocking.
`
`12.
`
`(Previously Presented) The method of claim 4 where the control criteria include
`
`security measures.
`
`13.
`
`(Previously Presented) The method of claim 12 where the security measures
`
`include the prevention of denial of service attacks.
`
`14.
`
`(Previously Presented) The method of claim 12 where the security measures
`
`include no direct access to a gateway.
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`Appl. No.: 13/358,353
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`Response to Office Action of July 3, 2013
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`15.
`
`(Previously Presented) The method of claim 12 where the security measures
`
`include an additional security layer to prevent hacking.
`
`16.
`
`(Original) The method of claim 12, wherein the security measures include VOIP
`
`link degradation detection.
`
`17.
`
`(Original) The method of claim 12, wherein the security measures include
`
`automatic cutover to the PSTN.
`
`18.
`
`(Original) The method of claim 12, wherein the security measures include
`
`conditional call blocking.
`
`19.
`
`(Original) The method of claim l2, wherein the security measures include call
`
`logging.
`
`20.
`
`(Previously Presented) The method of claim 12, wherein the security measures
`
`include authentication of a calling party.
`
`21.
`
`(Previously Presented) The method of claim l where the controller is of a
`
`distributed nature supporting multiple subsystems.
`
`22.
`
`(Previously Presented) The method of claim 21, where one of the multiple
`
`subsystems is a digital signal processing (DSP) subsystem.
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`Appl. No.: 13/358,353
`Docket No.: 357323-990127
`
`Response to Office Action of July 3, 2013
`
`Claims 1-22 are pending. Claim 1 has been amended. Reconsideration is respectfully
`
`REMARKS/ARGUMENTS
`
`requested.
`
`1. Rejection of Claims 1-2, 4-6, 8-10, 12, and 18-21 Under §103ga[
`
`Claims 1-2, 4-6, 8-10, 12, and 18-21 stand rejected under 35 U.S.C. l03(a) as being
`
`unpatentable over U.S. Patent 6,747,970 (Lamb) in view of U.S. Patent 8,380,783 (Jones) and
`
`U.S. Patent 5,598,464 (Hess). The Applicants respectfully traverse this rejection.
`
`Before discussing the rejection it would be useful to discuss the conventional operation of
`
`public switched telephone networks (PSTNs) and the Applicant’s invention as recited in the
`
`amended claims herein.
`
`It is well known that a conventional PSTN includes edge switches (commonly referred to
`
`as central office switches or C.O. switches) that originate and terminate calls for connected
`
`subscribers, and tandem switches which route those calls internally within the PSTN (i.e. tandem
`
`switches are not capable of originating or terminating PSTN calls, but rather directs calls to/from
`
`an edge switch or another tandem switch). See paragraphs [0005], [0006], [0009] and [0037] of
`
`the present application. Therefore, it is the edge switches that place and receive calls for
`
`connected subscribers (i.e. telephones), and those calls are directed between the edge switches
`
`via one or more tandem switches.
`
`Edge switches have well known disadvantages. Edge devices add cost, degrade voice
`
`and transmission quality, can be difficult to program, are not easily programmed remotely, can
`
`require the user to pay for two lines, provide lower quality of service, and cannot provide the
`
`same level of functionality as a system that controls the PSTN directly. See paragraph [00l3].
`
`In contrast, the present invention is a method of using a controller at the border between a
`
`voice over IP (VOIP) communication network and a circuit-switched network such as the PSTN.
`
`The controller can be used to add features and security measures to each call that crosses the
`
`border. The controller can be separate and independent from the VOIP network and the circuit
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`Appl. No.: 13/358,353
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`Response to Office Action of July 3, 2013
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`switched network to which it is connected. The controller is connected to (and routes
`
`communications to) the PSTN tandem switch, bypassing (and eliminating the need for) a PSTN
`
`edge switch.
`
`Claim l
`
`To better clarify the present invention, claim l has been amended to recite, among other
`
`things, that the communication (using data associated with the communication combined with
`
`the control criteria) is routed from the controller to the called party Via a PSTN tandem switch
`
`without trayersin an intervenin switches between the controller and the PSTN tandem switch.
`
`No new matter has been added, as this feature is shown in Figs l-2 and 7-8 of the present
`
`application, with communications routed from controller l0 to PSTN tandem switch(es) l6
`
`without any intervening switches (i.e. no edge switches). Figure l of the present application is
`
`reproduced below:
`
`
`
`TANDEM SWITCH
`
`
` TANDEM
`
`ACCESS
`
`CONTROLLER
`
`
`
`FIG. 1
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`Appl. No.: 13/358,353
`Docket No.: 357323-990127
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`Response to Office Action of July 3, 2013
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`This configuration and method is distinguishable from systems such as Lamb which rely
`
`on PSTN edge switches to route communications from VOIP networks to PSTNs. With the
`
`present invention, edge switches not only are bypassed, but they could be rendered obsolete in
`
`the routing of communications between IP (VOIP) communication networks and public switched
`
`telephone networks (PSTNs). There is no suggestion in Lamb of routing calls from a VOIP
`
`communications network using a controller connected to a PSTN tandem switch with no
`
`intervening switches, as recited in claim l. Instead, calls from server 203 of Lamb are routed
`
`into the PSTN l0l via edge switch 202-2. See Figure 3 of Lamb below:
`
`
`
`There is no suggestion in Lamb of routing communications from a controller into a PSTN
`
`tandem switch with no intervening switches, as recited in claim l. The addition of Jones and
`
`Hess fails to cure these deficiencies of Lamb. Therefore, it is submitted that claim 1 as amended
`
`is not rendered obvious by Lamb, Jones and Hess.
`
`Claims 2 4-6 8-10 l2 and l8-2l
`
`Claims 2, 4-6, 8-10, 12 and 18-21 depend from claim 1, and are therefore considered
`
`allowable for the reasons set forth above with respect to claim 1.
`
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`Appl. No.: 13/358,353
`Docket No.: 357323-990127
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`Response to Office Action of July 3, 2013
`
`2. Rejection of Claim 3 Under §103jaj
`
`Claim 3 stands rejected under 35 U.S.C. l03(a) as being unpatentable over Lamb in view
`
`of Jones and Hess, and in further view of U.S. Patent 5,943,399 (Bannister). The Applicants
`
`respectfully traverse this rejection. Claim 3 depends upon claim 1, and is therefore considered
`
`allowable for the reasons set forth above in Part l with respect to claim l. The addition of
`
`Bannister fails to cure the stated deficiencies of Lamb, Jones and Hess.
`
`3. Rejection of Claim 7 Under §103jaj
`
`Claim 7 stands rejected under 35 U.S.C. l03(a) as being unpatentable over Lamb in view
`
`of Jones and Hess, and in further view of U.S. Patent 5,958,016 (Chang). The Applicants
`
`respectfully traverse this rejection. Claim 7 depends upon claim 1, and is therefore considered
`
`allowable for the reasons set forth above in Part l with respect to claim l. The addition of Chang
`
`fails to cure the stated deficiencies of Lamb, Jones and Hess.
`
`4. Rejection of Claim 11 Under §103jaj
`
`Claim ll stands rejected under 35 U.S.C. l03(a) as being unpatentable over Lamb in
`
`view of Jones and Hess, and in further view of U.S. Patent 6,185,285 (Relyea). The Applicants
`
`respectfully traverse this rejection. Claim ll depends upon claim 1, and is therefore considered
`
`allowable for the reasons set forth above in Part l with respect to claim l. The addition of
`
`Relyea fails to cure the stated deficiencies of Lamb, Jones and Hess.
`
`5. Rejection of Claims 13 and 15 Under §103jaj
`
`Claims 13 and 15 stand rejected under 35 U.S.C. l03(a) as being unpatentable over Lamb
`
`in view of Jones and Hess, and in further view of U.S. Patent 7,272,115 (Maher). The
`
`Applicants respectfully traverse this rejection. Claims l3 and l5 depend upon claim l, and are
`
`therefore considered allowable for the reasons set forth above in Part 1 with respect to claim 1.
`
`The addition of Maher fails to cure the stated deficiencies of Lamb, Jones and Hess.
`
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`Appl. No.: 13/358,353
`Docket No.: 357323-990127
`
`Response to Office Action of July 3, 2013
`
`6. Rejection of Claim 14 Under §103gaj
`
`Claim 14 stands rejected under 35 U.S.C. l03(a) as being unpatentable over Lamb in
`
`view of Jones and Hess, and in further view of U.S. Patent 5,596,579 (Yasrebi). The Applicants
`
`respectfully traverse this rejection. Claim 14 depends upon claim 1, and is therefore considered
`
`allowable for the reasons set forth above in Part 1 with respect to claim 1. The addition of
`
`Yasrebi fails to cure the stated deficiencies of Lamb, Jones and Hess.
`
`7. Rejection of Claims 16 and 17 Under §103gaj
`
`Claims 16 and 17 stand rejected under 35 U.S.C. l03(a) as being unpatentable over Lamb
`
`in view of Jones and Hess, and in further view of U.S. Patent 6,785,229 (McNiff). The
`
`Applicants respectfully traverse this rejection. Claims 16 and 17 depend upon claim 1, and are
`
`therefore considered allowable for the reasons set forth above in Part 1 with respect to claim 1.
`
`The addition of McNiff fails to cure the stated deficiencies of Lamb, Jones and Hess.
`
`8. Rejection of Claim 21 Under §103jaj
`
`Claim 21 stands rejected under 35 U.S.C. l03(a) as being unpatentable over Lamb in
`
`view of Jones and Hess, and in further view of Examiner’s Official Notice that it was well
`
`known and obvious in the computer arts that computer subsystems disclosed in Lamb, Jones and
`
`Hess comprise processers that perform digital signal processing. It is assumed that the Examiner
`
`intended to reject claim 22 on official notice, not claim 21, as claim 22 recites that one of the
`
`multiple subsystems is a digital signal processing (DSP) subsystem. The Applicants respectfully
`
`traverse this rejection with respect to claim 22. Claim 22 depends upon claim 1, and is therefore
`
`considered allowable for the reasons set forth above in Part 1 with respect to claim 1. The
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`addition of Examiner’s Official Notice fails to cure the stated deficiencies of Lamb, Jones and
`
`Hess.
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`

`
`Appl. No.: 13/358,353
`Docket No.: 357323-990127
`
`Response to Office Action of July 3, 2013
`
`For the foregoing reasons, it is respectfully submitted that the claims are in an allowable
`
`form, and action to that end is respectfully requested.
`
`Respectfully submitted,
`
`DLA PIPER US LLP
`
`By:
`
`/Alan A. Limbach/
`Alan A. Limbach
`
`Reg. No. 39,749
`
`Attorneys for Applicant(s)
`
`Dated:
`
`September 13, 2013
`
`Alan A. Limbach
`
`DLA Piper LLP (US)
`2000 University Avenue
`East Palo Alto, CA 94303-2248
`650-833-2433 (Direct)
`650-833-2000 (Main)
`650-687-l l82 (Facsimile)
`alan.limbach@dlapiper.com
`
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`Ex. 1019
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`

`
`PTO/SB/06 (09-11)
`Approved for use through 1/31/2014. OMB 0651-0032
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`PATENT APPLICATION FEE DETERMINATION RECORD
`Substitute for Form PTO—875
`
`APP”°a“°“ 0’ Dockel Number
`
`FI”“9 Dale
`
`2 E To be Mailed
`
`ENTITY:
`
`|:| LARGE IZI SMALL |:| MICRO
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`
`(Column 2)
`
`FOR
`
`NUMBER FILED
`
`NUMBER EXTRA
`
`I:I BASIC FEE
`37CFR1.16a, b,or c
`
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`37CFR1.16k,
`
`i,or m
`
`El EXAMINATION FEE
`(37 CFR1.16( ), (p), or (q))
`TOTAL CLAIMS
`37 CFR1.16i
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`37 CFR 1.16 h
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`fraction thereof. See 35 U.S.C. 41 (a)(1 )(G) and 37
`CFR 1.16( ).
`
`I:I MULTIPLE DEPENDENT CLAIM PRESENT (37 CFR1.16(j))
`* If the difference in column 1 is less than zero, enter “0" in column 2.
`
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`*
`
`APPLICATION AS AMENDED — PART II
`
`(Column 3)
`
`PRESENT EXTRA
`
`ADDITIONAL FEE (sis)
`
`(Column 2)
`
`HIGHEST
`NUMBER
`PREWOUSLY
`PAID FOR
`H
`
`22
`
`09/13/2013
`
`Total (37 CFR
`
`-
`Mm
`Minus
`I:I Application Size Fee (37 CFR1.16(s))
`
`D FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM (37 CFR1.16(j))
`
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`
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`~k~k
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`~k
`2 Mm 2
`Minus
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`HIGHEST
`NUMBER
`PREWOUSLY
`PAID FOR
`
`T t
`
`I
`
`(37CFR1.16(h))
`
`PRESENT EXTRA
`
`ADDITIONAL FEE (sis)
`
`I:I Application Size Fee (37 CFR1.16(s))
`
`D FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM (37 CFR1.16(j))
`
`TOTAL ADD‘L FEE
`
`AMENDMENT
`
`AMENDMENT
`
`* If the entry in column 1 is less than the entry in column 2, write “0" in column 3.
`** If the “Highest Number Previously Paid For” IN THIS SPACE is less than 20, enter “20".
`*** If the “Highest Number Previously Paid For" IN THIS SPACE is less than 3, enter
`The “Highest Number Previously Paid For" (Total or Independent) is the highest number found in the appropriate box in column 1.
`This collection of information is required by 37 CFR 1.16. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to
`process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 12 minutes to complete, including gathering,
`preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you
`require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S.
`Department of Commerce, P.O. BOX 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
`ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`LI E
`/N|CHELE PE-|-ERsON/
`
`EX 10 19
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`YMax Corporation
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`Page 17 of 17
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`Ex. 1019
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