`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.0 Box 1450
`Alexandria, Virginia 22313-1450
`Www.uspto gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAM < ) INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`1 1/538,989
`
`10/05/2006
`
`111440
`
`7590
`
`02/13/2013
`
`Perkins Coie - Telesign Corporation
`P. O. Box 1247
`Seattle, WA 98111-1247
`
`Shlomo Gnnen
`
`82797—800l.US02
`
`2931
`
`EXAMINER
`
`SING. SIMON P
`
`ART UNIT
`
`2653
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/ 1 3/201 3
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on aboVe—indicated "Notification Date" to the
`following e—mail address(es):
`c
`'
`C '
`.c
`aten r0‘ure1nent@ erk111s me 0111
`
`PTOL—90A (Rev. 04/07)
`
`TWILIO, INC. EX. 1023
`Page 1
`
`
`
`Office Action Summary
`
`Application No.
`
`11/538,989
`
`Examiner
`SIMON SING
`
`App|icant(s)
`
`GONEN ET AL.
`
`Ar, Uni,
`2653
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1.136(a).
`In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`—
`— Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office laterthan three months after the mailing date ofthis communication, even iftimely filed, may reduce any
`earned patent term adjustment. See 37 CFR1.704(b).
`
`Status
`
`1)IZ Responsive to communication(s) filed on 02 August 2012.
`
`2b)IZ This action is non-final.
`This action is FINAL.
`An election was made by the applicant in response to a restriction requirement set forth during the interview on
`j; the restriction requirement and election have been incorporated into this action.
`
`Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)|Z Claim(s) 28 30-36 38 39 41 46-55 83-89 91 92 94 104-116is/are pending in the application.
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`
`6)IZ Claim(s) 83-89 9192 94 104-114 and 116 is/are allowed.
`7)
`
`m s(
`) 54 and 55 is/are rejected.
`
`)
`8 IX Claim(s) 28 30-36 38 39 41 46-53 and 115is/are objected to.
`9)I:I Claim(s)
`are subject to restriction and/or election requirement.
`
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway
`program at a participating intellectual property office for the corresponding application. For more information, please see
`:/'/wwwus toqovi atents/init events/ms-h1’ii1dex.‘s orsend an inquiry to P:-Pllfeedback
`usr\1_o.t cv.
`
`Application Papers
`
`10)|:I The specification is objected to by the Examiner.
`11)|:| The drawing(s) filed on j is/are: a)|:| accepted or b)|:| objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`
`12)|:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119( )—(d) or (f).
`
`b)I:l Some * c)|:| None of:
`Certified copies of the priority documents have been received.
`
`Certified copies of the priority documents have been received in Application No. j
`
`Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attach ment(s)
`
`1) E Notice of References Cited (PTO-892)
`
`2) IX Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date 10/10/2012 11/20/2012.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 09-12)
`
`3) D Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`4) D Other:
`.
`
`.
`
`Office Action Summary
`
`Part of Paper No./Mail Date 130207
`
`TWILIO, INC. EX. 1023
`Page 2
`
`
`
`Application/Control Number: 11/538,989
`Art Unit: 2653
`
`DETAILED ACTION
`
`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 of this title, if the 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.
`
`1.
`
`Claims 28, 32, 33, 35, 36, 38, 39, 41, 51-53 and 115 are rejected under 35
`
`U.S.C. 103(a) as being unpatentable over Woodhill US 6,934,858 in view of Han US
`
`8,024,567 and further in view of Starrs US 7,389,913.
`
`1.1
`
`Regarding claim 28, Woodhill teaches:
`
`providing a registration form to a registrant (visitor) on-line through a web-site
`
`(column 8, lines 5-36; column 9, lines 6-20);
`
`prompting the registrant to complete, at least partially, the registration form on
`
`the web-site, including to provide at least one registrant electronic contact, and a name
`
`or an address (figure 5; column 8, lines 13-36; column 9, lines 6-20);
`
`verifying the registrant by:
`
`establishing a connection with the registrant via the at least one registrant
`
`contact (column 8, lines 17-22, 31-45; column 9, lines 21-32);
`
`TWILIO, INC. EX. 1023
`Page 3
`
`
`
`Application/Control Number: 11/538,989
`Art Unit: 2653
`
`Page 3
`
`communicating a verification code to the registrant through the registration
`
`form via the web-site (column 8, lines 17-22, 31-45; column 9, lines 21-27); and
`
`prompting the registrant to input the verification code into a telephone
`
`(column 8, lines 45-54; column 9, lines 21-27).
`
`Woodhill teaches that the registrant receives the verification code from the web-
`
`site and inputs the verification code into the established telephone connection for
`
`verification. Woodhill does not specifically teach verifying the verification code in
`
`reverse order, i.e. receiving the verification code from the telephone, and inputting the
`
`verification code into the registration form.
`
`However, Han discloses a user verification system, in that a user provide his
`
`telephone number to a website via a web page, and receive a confirmation code on his
`
`telephone, the confirmation code is then inputted in the web page to the website for
`
`confirmation (figure 1C; column 2, lines 48-63).
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time the invention was made to modify the Woodhill reference with the teaching of Han,
`
`so that instead of receiving the verification code from a web page and inputting the
`
`verification code into a telephone for verification, the verification code would have been
`
`received via the established telephone connection and inputted into the registration form
`
`(web page) for verification as taught by Han by substitute prior art elements to achieve
`
`predictable results.
`
`The modified Woodhill reference teaches registering a registrant (visitor) with a
`
`name and an address (figure 5), but does not teach comparing the registration
`
`TWILIO, INC. EX. 1023
`Page 4
`
`
`
`Application/Control Number: 11/538,989
`Art Unit: 2653
`
`Page 4
`
`information provided by the registrant with personal identification information, including
`
`the name or address, from a database.
`
`However, Starrs teaches a new customer registering on a merchant’s web site,
`
`including entering a name, an address and a telephone number (figure 8), and the new
`
`customer's information is verified with a private or public database (column 9, lines 3-
`
`14).
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time the invention was made to further modify the Woodhill reference with the teaching
`
`of Starrs, so that the registrant’s information, including a name or an address, would
`
`have been compared with information retrieved from an institutional database for
`
`verification, by combining known prior art element by known methods to yield
`
`predictable results.
`
`1.2
`
`Regarding claims 32-33, Woodhill teaches placing a call to a registrant telephone
`
`number as stated in claim 28.
`
`1.3
`
`Regarding claims 35, 36, 38 and 115, the modified Woodhill reference teaches
`
`sending a SMS which is a text message (see Han reference).
`
`1.4
`
`Regarding claim 39, Woodhill teaches sending a voice message to a user
`
`telephone (column 8, lines 45-48).
`
`TWILIO, INC. EX. 1023
`Page 5
`
`
`
`Application/Control Number: 11/538,989
`Art Unit: 2653
`
`Page 5
`
`1.5
`
`Regarding claim 41, the modified Woodhill reference teaches prompting the
`
`registrant to input a telephone number for receiving the verification code (Woodhill:
`
`figure 2A, step 106; Han: column 5, lines 17-28).
`
`1.6
`
`Regarding claim 51, examiner takes an official notice that it was well known in
`
`the art to detect whether a call is answered by a live person or by an answering
`
`machine, and if answered by an answering machine, delaying the output of a message
`
`until the answering machine is ready for recording (see Ladd, US 6,097,791, column 5,
`
`lines 12-17).
`
`1.7
`
`Regarding claim 52, Woodhill teaches sending a confirmation code (information)
`
`via telephone connection as stated in claim 28.
`
`1.8
`
`Regarding claim 53, examiner takes an official notice that it was well known in
`
`the art that if a telephone number was an extension of a PBX, a live operator would
`
`answer the call intended to the extension number (see Verdonk US 6,256,512, column
`
`1, lines 21-28).
`
`TWILIO, INC. EX. 1023
`Page 6
`
`
`
`Application/Control Number: 11/538,989
`Art Unit: 2653
`
`Page 6
`
`2.
`
`Claims 30, 31, 34 and 46-50 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Woodhill US 6,934,858 in view of Han US 8,024,567 and further in
`
`view of Starrs US 7,389,913 and further in view of Putta et al. US 2001/0032192.
`
`2.1
`
`Regarding claim 30, the modified Woodhill reference does not teach establishing
`
`notification events for which the registrant is to be notified.
`
`However, Putta teaches establishing notification events for which a customer is
`
`to be notified [0123].
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time the invention was made to further modify the Woodhill reference with the teaching
`
`of Putta, so that the registrant would have established notification events, by combining
`
`known prior art element by known methods to yield predictable results.
`
`2.2
`
`Regarding claim 31, the modified Woodhill reference teaches notifying the
`
`registrant of an event (see Putta).
`
`2.3
`
`Regarding claim 34, the modified Woodhill reference teaches notifying the
`
`registrant by phone (see Putta).
`
`2.4
`
`Regarding claim 46, examiner takes an official notice that it was well known in
`
`the art to notify a user of news associated with his account (see Kjelberg et al. US
`
`7,233,790, column 7, lines 23-30).
`
`TWILIO, INC. EX. 1023
`Page 7
`
`
`
`Application/Control Number: 11/538,989
`Art Unit: 2653
`
`2.5
`
`Regarding claims 47 and 48, the modified Woodhill reference teaches notifying
`
`the registrant of unauthorized access to his financial account (Putta).
`
`2.6
`
`Regarding claim 49, Woodhill teaches verifying the registrant before permitting
`
`the registrant to access his account as stated in claim 1 (Woodhill: column 8, lines 47-
`
`65).
`
`2.7
`
`Regarding claim 50, the modified Woodhill reference teaches notifying the
`
`registrant of a notification event as stated in claim 30, and examiner takes an official
`
`notice that the notification is a service provided by a service provider, and the service
`
`provider obviously would have charged the registrant for its (additional notificaiotn)
`
`service.
`
`Allowable Subject Matter
`
`Claims 83-89, 91, 92,94, 104-114 and 116 are allowed.
`
`4.
`
`Claims 54 and 55 are objected to as being dependent upon a rejected base
`
`claim, but would be allowable if rewritten in independent form including all of the
`
`limitations of the base claim and any intervening claims.
`
`TWILIO, INC. EX. 1023
`Page 8
`
`
`
`Application/Control Number: 11/538,989
`Art Unit: 2653
`
`Response to Arguments
`
`5.
`
`Applicant's arguments have been considered but are moot in view of the new
`
`ground(s) of rejection.
`
`Conclusion
`
`6.
`
`Any inquiry concerning this communication or earlier communication from the
`
`examiner should be directed to Simon Sing whose telephone number is 571-272-7545.
`
`The examiner can normally be reached on Monday - Friday from 9:00 AM to 5:30 PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Fan Tsang, can be reached at 571-272-7547. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300. Any
`
`inquiry of a general nature or relating to the status of this application or proceeding
`
`should be directed to the receptionist whose telephone number is 571-272-2600.
`
`/Simon Sing/
`
`Primary Examiner, Art Unit 2653
`
`TWILIO, INC. EX. 1023
`Page 9
`
`
`
`Notice of References Cited
`
`Document Number
`Country Code-Number-Kind Code
`S-7,389,913
`
`Date
`MM-YYYY
`O6-2008
`
`Application/Control No.
`
`1‘/533=939
`Examiner
`
`SIMON SING
`
`U.S. PATENT DOCUMENTS
`
`App|icant(s)/Patent Under
`Reexamination
`GONEN ET AL.
`Art Unit
`
`2653
`
`Page 1 of 1
`
`.
`_
`.
`C|a55'f'ca1'°n
`235/379
`
`*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
`Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
`U 8 Patent and Trademark Office
`PTO-892 (Rev. O1-2001)
`
`Notice of References Cited
`
`Part of Paper No. 130207
`
`TWILIO, INC. EX. 1023
`Page 10
`
`
`
`11538989 ~ C§AU: 2853
`
`PTOISB/08a (07-09)
`Approved for use through 07/31/2012. OMB 0651-0031
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paerwork Reduction Act of 1995. no ersons are reuired to resend to a collection of information unless it contains a valid OMB control number.
`Complete if Known
`Substitute for form 1449/PTO
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`(Use as many sheets as necessary)
`
`Application Number
`
`1 1/538,989-Conf. #2931
`
`Filing Date
`Frsmamed
`Art Unit
`Examiner Name
`
`October 5, 2006
`shiomo eonen
`2653
`
`Attorney Docket Number 827978001 US2
`
`Examiner
`lnitia|s*
`
`‘
`
`,
`
`U.S. PATENT DOCUMENTS
`
`Name of Patentee or
`Applicant of Cited Document
`
`Pages, Columns, l.ines, Where
`Relevant Passages or Relevant
`Figures Appear
`
`US-5,881,226
`US-7,383,572
`US-7,574,733
`US-7,870,599
`
`03-09-1999 Veneklase
`06-03-2008 Rolfe
`08-11-2009 Woodhill
`01-11-2011 Pemmara'u
`
`Exammer
`Initials‘
`
`Cite
`No.‘
`
`FOREIGN PATENT DOCUMENTS
`Fore: n parent Document
`Publication
`Name of P.a‘°“‘e° °r
`Date
`APPIICEW °f Clted D09‘-‘mam
`count;-y Code3.Number‘.Kind Cgdes {ifknow/7) MM.DD.\/yyy
`W0-95/19593-A1
`07-20-1995 Kew, Michael Jerem etal.
`
`Pages. Columns. Lines.
`Where Relevant Passages
`Or Relevant Figures Appear
`
`Examiner
`
`,. .
`,,
`r
`_
`-
`,
`oar/0!/2013
`/ monsmgi
`‘EXAMINER: Initial if reference considered, whether or not citation is in contormance with MPEP 609. Draw line through citation if not in conformance and not
`considered.
`Include copy of this form with next communication to applicant.
`" CITE NO.: Those application(s) which are marked with an single asterisk (') next
`to the Cite No. are not supplied (under 37 CFR 1.98(a)(2)(iii)) because that application was filed after June 30, 2003 or is available in the IFW.
`‘Applicant's
`unique citation designation number (optional).
`2 See Kinds Codes of USPTO Patent Documents at www.uspto.gov or MPEP 901.04.
`3 Enter Ofiice that issued
`the document, by the two—letter code (WIPO Standard ST.3).
`" For Japanese patent documents, the indication of the year of the reign of the Emperor must
`precede the serial number of the patent document‘ 5 Kind of document by the appropriate symbols as indicated on the document under WlPO Standard ST.16 if
`possible. 9 Applicant is to place a check mar1< here if English language Translation is attached.
`
`Date
`
`82797-8001 .US02/LEGAL24861 111.1
`
`ALL REFERENCES CONSIDERED EXCEPT WHERE UNED THROUGH.
`
`/'SS/
`
`TWILIO, INC. EX. 1023
`Page 11
`
`
`
`31538989 '~ CEAU: 2853
`
`PTO/SB/08b (07-09)
`Approved for use through 07/31/2012. OMB 0651-0031
`US. Patent and Trademark Ottice; U.S. DEPARTMENT OF COMMERCE
`Under the Papewvork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number.
`
`Substitute for form 1449IPTO
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`Application Number
`Filing Date
`Far=t~amewnven=or
`
`(Use as many sheets as necessary)
`
`Examiner Name
`
`C°"'P’°'° '7 K"°"‘”’
`1 1/538,989-Cont. #2931
`
`Attorney Docket Number 827978001 U82
`
`Examiner
`Initials
`
`Cite
`No.‘
`
`NON PATENT LITERATURE DOCUMENTS
`include name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of
`the item (book, magazine, journal, 'seriaI, symposium, catalog, etc), date, page(s), volume-issue
`number s , ublisher, ci
`and/or count where ublished.
`
`Date
`-
`,
`.-
`»
`Examiner
`Considered
`'
`'/S‘mO'7'Smg’I
`Sinature
`‘EXAMINER: initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not
`considered. Include copy of this form with next communication to applicant.
`
`-1
`
`.
`
`‘Applicant's unique citation designation number (optional). 2Applicant is to place a check mark here if English language Translation is attached.
`
`"27A7ifi_"‘i‘»i§€#&‘%El¥‘3l‘é‘E‘s CONSl{I)ERElI,‘: EXCEPT WHERE i_il\lE{) TH ROUGH. /ss/
`
`TWILIO, INC. EX. 1023
`Page 12
`
`
`
`EAST Search Hlstoly
`
`EAST Search History
`
`EAST Search History (Prior Art)
`
`5
`
`Ref§ Hits §Search Query
`§P|ura|s§Time
`\ .................................................................................................................................................. ..-
`§#
`i
`i
`?9I99.rat9.r...% ................. §t§m.I9.........
`§2o13/02/07;
`§1o;15
`5
`
`§763 §(verit$4 or verification) with
`*
`§((te|ephone or phone) adj
`§number) with (database or
`
`§US-PGPUB; USPAT;
`§USOCR; FPRS; EPO;
`EJPO; DERWENT;
`§|BM_TDB
`
`$81 with (address or name)
`
`§S1 with address with name
`
`same registration
`
`§US-PGPUB; USPAT;
`§USOCR; FPRS; EPO;
`§JPO; DERWENT;
`‘ M DB
`
`E SPGPUB; USPAT,
`§USOCR; FPRS; EPO;
`EJPO; DERWENT;
`I BM_TDB
`
`USPGPUB; USPAT;
`§USOCR; FPRS; EPO;
`§JPO; DERWENT;
`‘
`DB
`
`2/7/2013 5:41:34 PM
`
`C:\ Users\ ssing\ Documents\ EAST\ Workspaces\ default.wsp
`
`$2013/02/07%
`§1o:21
`
`$2013/02/07;
`§1o:23
`
`file:///CI/Users/ssing/D0cuments/e—Red%2OF01der/11538989/EASTSearchHist0ry. 1153 8989_Accessib1eVersi0n.htm[2/7/2013 5:41 :40 PM]
`
`TWILIO, INC. EX. 1023
`Page 13
`
`
`
`31538989 ~ C§AU: 2853
`
`PTOISB/08a (07-09)
`Approved for use through 07/31/2012. OMB 0651-0031
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paen»/ork Reduction Act of 1995. no ersons are reuired to resend to a collection of information unless it contains a valid OMB control number.
`
`Substitute for form 1449/PTO
`
`Complete if Known
`
`Application Number
`Filing Date
`
`1 1/538'989_Conf' #2931
`October 5, 2006
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICAN
`
`S“'°m°G°"e“
`2553
`S. P. sing
`8279780°1US2
`
`F‘“$‘”y**"‘e°'""e"*°'
`’*'*””"
`
`Document Number
`
`U.S. PATENT DOCUMENTS
`-
`-
`Name of Patent“ °r
`Pubucanon Date
`Applicant of Cited Document
`Numbef_Kind codez (”k”°W”} MM-DD-WW
`US-6,259,909
`07-10-2001 Ratayczak et al.
`
`Pages, Columns, Lines, Where
`Relevant Passages or Relevant
`Figures Appear
`
`FOREIGN PATENT DOCUMENTS
`
`Publication
`Date
`MM_DD_YYYY
`
`f
`N
`fame ° ’”.3‘°"‘e° °r
`Applicant of Cited Document
`
`Pages, Columns, Lines,
`Where Relevant Passages
`orgelevam Figures Appear
`
`Examiner
`
`;
`
`=
`
`=,
`
`;
`
`Date
`
`—,,a
`
`.,-
`
`‘EXAMINER: lnitial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not
`considered.
`Include copy of this form with next communication to applicant. * CITE NO.: Those application(s) which are marked with an single asterisk (") next
`to the Cite No. are not supplied (under 37 CFR 1.98(a)(2)(iii)) because that application was filed atter June 30, 2003 or is available in the IFW.
`‘ Applicant's
`unique citation designation number (optional).
`2 See Kinds Codes of USPTO Patent Documents at www.usgto.gov or MPEP 901,04.
`3 Enter Office that Issued
`the document. by the two-letter code (WIPO Standard ST.3).
`4 For Japanese patent documents, the indication of the year of the reign of the Emperor must
`precede the serial number of the patent document. 5 Kind of document by the appropriate symbols as indicated on the document under WlPO Standard ST.16 it
`possible. 6Applicant is to place a check mark here if English language Translation is attached.
`
`82797-8001 .US02/LEGAL251 83195.1
`
`TWILIO, INC. EX. 1023
`Page 14
`
`
`
`“$153898? ~ C§AU: 2853
`
`PTO/SB/08b (07439)
`Approved for use through 07/31/2012. OMB 0651-0031
`U.S. Patent and Trademark Office; US. DEPARTMENT OF COMMERCE
`Under the Papenuork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number.
`
`Substitute forform 1449/PTO
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`Application Number
`'-"ln9°a*e
`“"'“a’"e°‘
`’*"”'T“
`
`Attorney Docket Number 827978001 U82
`
`Examiner
`Initials
`
`No.‘
`
`lnclude name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of
`the item (book. magazine, journal. serial. symposium. catalog. etc.). date, page(s), volume—issue
`ublisher, ci
`and/or count where ublished.
`
`Examiner
`
`r /' r
`4.q
`,
`_
`.
`,
`J2’O7/20"”
`/SEETEOH Sin I
`‘EXAMINER: Initial if reference considered, whether or not citation is in confonnance with MPEP 609. Draw line through citation it not in conformance and not
`considered. Include copy of this fonn with next communication to applicant.
`
`Date
`
`‘Applicant's unique citation designation number (optional). ‘Applicant is to place a check mark here if English language Translation is attached.
`
`82797-8001.US02/LEGAL25183195.1
`
`TWILIO, INC. EX. 1023
`Page 15
`
`
`
`Index Of Claims
`
`11538989
`
`GONEN ET AL.
`
`Application/Control No.
`
`Applicant(s)/Patent Under
`Reexamination
`
`Examiner
`
`SIMON SING
`
`Rejected
`
`Allowed
`
`|:I Claims renumbered in the same order as presented by applicant
`
`CLAIM
`
`2\
`
`\/
`\/
`\/
`J
`
`/
`H J
`\/
`\/
`\/
`
`
`
`4;“EH <\OHHHU1<\HHH<\<\x
`
`
`
`_a.
`
`_. O
`
`
`_a._._;_a.
`O1-§(.\)l\3—*
`—‘-O0(D\lO)
`l'\Jl'\Jl\)l\JO‘!-k(a)l\)
`
`U.S. Patent and Trademark Office
`
`Part of Paper No.
`
`: 130207
`
`TWILIO, INC. EX. 1023
`Page 16
`
`
`
`Index Of Claims
`
`11538989
`
`GONEN ET AL.
`
`Application/Control No.
`
`Applicant(s)/Patent Under
`Reexamination
`
`Examiner
`
`SIMON SING
`
`Rejected
`
`Allowed
`
`|:I Claims renumbered in the same order as presented by applicant
`
`CLAIM
`
`\.
`
`2° (O00 H
`/
`xxxx
`-l>O
`\/
`3
`\/
`22K
`
`J \
`
`J;H01-k H
`
`HHH<\<\<\H\<\I
`
`\<\\
`
`—‘-OO0\lO>
`
`0101mm
`
`O?O‘! H
`
`—-toco\lHEH0101
`
`U.S. Patent and Trademark Office
`
`Part of Paper No.
`
`: 130207
`
`TWILIO, INC. EX. 1023
`Page 17
`
`
`
`Index of Claims
`
`1 1538989
`
`GONEN ET AL.
`
`Application/Control No.
`
`Applicant(s)/Patent Under
`Reexamination
`
`Examiner
`
`SIMON SING
`
`Rejected
`
`Allowed
`
`|:I Claims renumbered in the same order as presented by applicant
`
`CLAIM
`Final
`
`‘IiO1-k HH
`\lO)
`
`\/
`\/
`
`\/
`J
`
`Part of Paper No.
`
`: 130207
`
`<\x
`
`J
`
`<\<\
`
`\/
`
`OOEHHV—uuoooxn
`
`82
`00(A)
`
`o( \l
`0000
`
`(DO00l\)—|(O
`
`100
`101
`102
`103
`104
`105
`106
`107
`108
`U.S. Patent and Trademark Office
`
`TWILIO, INC. EX. 1023
`Page 18
`
`
`
`Index Of Claims
`
`11538989
`
`GONEN ET AL.
`
`Application/Control No.
`
`Applicant(s)/Patent Under
`Reexamination
`
`Examiner
`
`SIMON SING
`
`110
`111
`112
`113
`
`22
`22
`22
`
`U.S. Patent and Trademark Office
`
`Pan of Paper No.
`
`: 130207
`
`TWILIO, INC. EX. 1023
`Page 19
`
`
`
`Application/Control No.
`
`Applicant(s)/Patent Under
`Reexamination
`
`Search NOTES
`
`11538989
`
`GONEN ET AL.
`
`SIMON SING
`
`CPC- SEARCHED
`
`CPC COMBINATION SETS - SEARCHED
`
`Symbol
`
`l
`
`l
`
`Examiner
`
`SEARCH NOTES
`
`Search Notes
`
`Examiner
`
`06/21/201 1
`01/21/2012
`
`02/06/2013
`
`SS
`SS
`
`INTERFERENCE SEARCH
`
`US Classl
`CPC S mbol
`
`US Subclass / CPC Group
`
`—‘
`
`US. Pateni and Trademark Office
`
`Pad of Paper No.
`
`: 130207
`
`TWILIO, INC. EX. 1023
`Page 20
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.0 Box 1450
`Alexandna, Virgmia 22313-1450
`WWW.1]SPi.0 gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAM < ) INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`1 ]/538,989
`
`26252
`
`10/05/2006
`
`Shlnmo Gnnen
`
`TEI,ES—480(12
`
`293]
`
`7590
`
`02/03/2012
`
`KELLY LOWRY & KELLEY, LLP
`6320 CANOGA AVENUE
`some 1050
`
`WOODLAND HILLS, CA 91367
`
`EMMINER
`SING. SIMON P
`
`ART UN”
`2614
`
`MAIL DATE
`
`02/03/2012
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL—90A (Rev. 04/07)
`
`TWILIO, INC. EX. 1023
`Page 21
`
`
`
`Office Action Summary
`
`Application No.
`
`11/538,989
`
`Examine,
`SIMON SING
`
`App|icant(s)
`
`GONEN ET AL.
`
`Art Uni,
`2614
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE § MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1.136(a).
`in no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for replywill, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received bythe Office later than three months afterthe mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR1.704(b).
`
`Status
`
`1)IZ Responsive to communication(s) filed on 12/20/2011.
`
`2b)I:l This action is non-final.
`This action is FINAL.
`An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`j; the restriction requirement and election have been incorporated into this action.
`
`Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`
`closed in accordance with the practice under Ex parfe Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)IZ Claim(s) 1-13 16-43 46-71 74-96 and 99-1 10 is/are pending in the application.
`5a) Of the above Claim(s)
`is/are withdrawn from consideration.
`
`1-13 16-43 46-53 56 59-71 74-96 99-106 109 and 1 10 is/are rejected.
`
`24 25 54 55 57 58 107and 108 is/are objected to.
`
`Application Papers
`
`10)|:I The specification is objected to by the Examiner.
`
`11)|:| The drawing(s) filed on j is/are: a)I:I accepted or b)|:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`12)|:l The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`13)|:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119( )-(d) or (f).
`
`a)|:| All
`
`b)I:l Some * c)I:l None of:
`Certified copies of the priority documents have been received.
`
`Certified copies of the priority documents have been received in Application No. _.
`
`Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`4) D Interview Summary (PTO-413)
`Papei N0(3)/“Ia” DaTe- j
`5) I:I N0I|C€‘ Of Inf0rm3I Patent APPIICETIOH
`6) D Other:
`.
`
`1) E Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) El Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date
`.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 03-11)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 120120
`
`TWILIO, INC. EX. 1023
`Page 22
`
`
`
`Application/Control Number: 11/538,989
`Art Unit: 2614
`
`DETAILED ACTION
`
`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 of this title, if the 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.
`
`1.
`
`Claims 1-13, 16-23, 26 and 27 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Woodhill US 6,934,858 in view of Han US 8,024,567 and further in
`
`View of Putta et al. US 2001/0032192.
`
`1.1
`
`Regarding claim 1, Woodhill teaches:
`
`providing a registration form to a registrant (visitor) on-line through a web-site
`
`(column 8, lines 5-36; column 9, lines 6-20);
`
`prompting the registrant to complete, at least partially, the registration form on
`
`the web-site, including to provide at least one registrant electronic contact (column 8,
`
`lines 13-36; column 9, lines 6-20);
`
`verifying the registrant, including establishing a connection with the registrant via
`
`the at least one registrant contact (column 8, lines 17-22, 31-45; column 9, lines 21-32);
`
`communicating a verification code to the registrant through the registration form
`
`via the web-site (column 8, lines 17-22, 31-45; column 9, lines 21-27); and
`
`TWILIO, INC. EX. 1023
`Page 23
`
`
`
`Application/Control Number: 11/538,989
`Art Unit: 2614
`
`Page 3
`
`prompting the registrant to input the verification code into a telephone (column 8,
`
`lines 45-54; column 9, lines 21 -27).
`
`Woodhill teaches receiving the verification code from the web-site and inputting
`
`the verification code into the telephone for verification. Woodhill does not specifically
`
`teach receiving the verification code from the telephone, and inputting the verification
`
`code into the registration form.
`
`However, Han discloses a user verification system, in that a user provide his
`
`telephone number to a website via a web page, and receive a confirmation code on his
`
`telephone, the confirmation code is then inputted in the web page to the website for
`
`confirmation (figure 1C; column 2, lines 48-63).
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time the invention was made to modify the Woodhill reference with the teaching of Han,
`
`so that instead of receiving the verification code from a web page and inputting the
`
`verification code into a telephone for verification, the verification code would have been
`
`received via a telephone connection and inputted into a web page for verification as
`
`taught by Han by substitute prior art elements to achieve predictable results.
`
`The modified Woodhill reference teaches registering a registrant (visitor) for e-
`
`commerce (column 4, lines 47-65), but does not teach notifying the registrant of the
`
`occurrence of a previously established notification event by establishing a connection
`
`with the registrant via the at least one registrant contact.
`
`However, Putta teaches notifying a user of e—commerce of a notification event,
`
`such as any violations on the user account by telephone (paragraph [O123]).
`
`TWILIO, INC. EX. 1023
`Page 24
`
`
`
`Application/Control Number: 11/538,989
`Art Unit: 2614
`
`Page 4
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time the invention was made t