Attorney Docket # 6072-2CON2 -
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`_AF
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`PATENT
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Tod C. Turner
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`Serial N0.:
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`12/907,550
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`Filed: October 19, 2010
`For:
`SYSTEM AND METHOD FOR INITIATING
`CONFERENCE CALL
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`:
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`Group Art? 2614
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`Mail Stop AF
`Commissioner for Patents
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`PO. Box 1450
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`Alexandria, VA 223 13— 1450
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`AMENDMENT AFTER FINAL REJECTION
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`SIR:
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`PETITION
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`Applicants hereby petition for a one—month extension of the original shortened statutory
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`response period set in the Final Office Action of March 9, 2012. Please charge our Patent and
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`Trademark Office Deposit Account No. 503111 in the amount of $75.00 (small entity) in payment
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`of the government fee for a one—month extension of time so that the period for response is extended
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`to July 9, 2012. Any additional fees or charges required at this time in connection with the present
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`application may be charged to our Patent and Trademark Office Deposit Account No. 503111.
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`RESPONSE
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`In response to the Final Office Action dated March 9, 2012 and the Advisory Action dated
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`May 31, 2012, please amend the above—identified application as follows:
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`Amendments to the Claims are reflected in the listing of claims which begins on page 3
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`of this paper.
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`Remarks/Arguments begin on page 8 of this paper.
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`Listing of Claims:
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`1.— 102. (Cancelled).
`
`103.
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`(Currently Amended) A non—transitory computer readable medium containing
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`computer instructions configured to operate with electronic computer hardware to perform the
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`following steps:
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`display, in an instant messaging (IM) chat window of a first party, an exchange of IM
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`messages between the first party and at least one other party, the first party and the at least one
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`other party being current participants to an IM session;
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`display for the first party an option to automatically initiate voice communication
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`between the current participants of the IM session without requiring individual selection of @
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`prior registration with a conference call server for establishing the voice communication by
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`potential members including the first party and the at least one other party of—thavoiee
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`communication; and
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`request, in response to selection of the option, voice communication between the first
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`party and the at least one other party;
`
`wherein in response to the request, the voice communication is established between the
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`first party and those of the at least one other party wdwagreed—to—enter—into—thamiee
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`104.
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`(Previously Presented) The instructions of claim 103, wherein the at least one
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`other party comprises at least two parties.
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`105.
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`(Previously Presented) The instructions of claim 103, said display an option
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`comprising display of a click—on icon that allows for a single step selection of the option.
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`106.
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`(Previously Presented) The instructions of claim 103, wherein said display an
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`exchange of IM and said display for the first party comprise display within a common browser or
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`application window.
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`107.
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`(Previously Presented) The instructions of claim 103, wherein the voice
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`communication includes audio and video.
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`108.
`
`(Currently Amended) A non—transitory computer readable medium containing
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`computer instructions configured to operate with electronic computer hardware to establish voice
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`communication between a first party and at least one other party who are current participants of
`
`an IM session, comprising the following steps:
`
`display for the first party an option to automatically initiate voice communication
`
`between the current participants of the IM session without requiring individual selection of @
`
`prior registration with a conference call server for establishing the voice communication by
`
`potential members including the first party and the at least one other party of—theveiee
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`communication; and
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`request, in response to selection of the option, voice communication between the first
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`party and the at least one other party;
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`wherein in response to the request, the voice communication is established between the
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`first party and those of the at least one other party “dire—agreed—to—enter—into—thasLeiee
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`109.
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`(Previously Presented) The instructions of claim 108, wherein the at least one
`
`other party comprises at least two parties.
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`110.
`
`(Previously Presented) The instructions of claim 108, said display an option
`
`comprising display of a click—on icon that allows for a single step selection of the option.
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`111.
`
`(Previously Presented) The instructions of claim 108, wherein said display an
`
`exchange of IM and said display for the first party comprise display within a common browser or
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`application window.
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`112.
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`(Previously Presented) The instructions of claim 108, wherein the voice
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`communication includes audio and video.
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`113.
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`(Currently Amended) A non—transitory computer readable medium containing
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`computer instructions configured to operate with electronic computer hardware to establish voice
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`communication between a first party and at least one other party who have an IM presence and
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`are exchanging text communications, comprising the following steps:
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`display for the first party an option to automatically initiate voice communication
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`between current participant of the text communication exchange without requiring individual
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`selection of and prior registration with a conference call server for establishing the voice
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`communication by potential members including the first party and the at least one other party of
`
`theyoieeeommunieation; and
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`request, in response to selection of the option, voice communication between the first
`
`party and the at least one other party;
`
`wherein in response to the request, the voice communication is established between the
`
`first party and those of the at least one other party “dire—agreed—to—enter—into—thevoiee
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`ll4.
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`(Previously Presented) The instructions of claim 113, wherein the at least one
`
`other party comprises at least two parties.
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`llS.
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`(Previously Presented) The instructions of claim 113, said display an option
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`comprising display of a click—on icon that allows for a single step selection of the option.
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`116.
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`(Previously Presented) The instructions of claim 113, wherein said display an
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`exchange of IM and said display for the first party comprise display within a common browser or
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`application window.
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`117.
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`(Previously Presented) The instructions of claim 113, wherein the voice
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`communication includes audio and video.
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`118.
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`(Currently amended) A non—transitory computer readable medium containing
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`computer instructions configured to operate with an electronic hardware computer server to
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`perform the following steps:
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`exchange IM messages between a first party and at least one other party, the first party
`
`and the at least one other party being current participants to an IM session;
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`receive a request from the first party to establish voice communication amongst current
`
`participants of the IM session without requiring prior registration with a conference call server
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`for establishing the voice communication by potential members including the first party and the
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`at least one other party, the request lacking a specific identification of the at least one other party;
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`determine, after reception of the request, the at least one other party from information
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`associated with the IM session;
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`wherein after determining the at least one party, the voice communication is established
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`between the first party and those of the at least one other party “dire—agreed—to—enter—into—thaaiee
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`REMARKS/ARGUMENTS
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`Claims 103—118 are pending in the present application, of which claims 103, 108, 113 and
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`118 are independent claims. Claims 103, 108, 113 and 118 have been amended by this
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`Amendment.
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`Telephone Interview
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`Applicant respectfully requests a telephone interview between Applicant’s representatives
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`and Examiner Harry S. Hong shortly after the filing of the present Amendment and the
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`corresponding Request for Continued Examination (RCE). Applicant’s representative will contact
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`the Examiner to establish a date for the telephone interview. Applicant would like to discuss the 35
`
`USC § 112, first paragraph, issues raised by the Examiner in the Advisory Action, as well as the
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`cited art.
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`Claim Re'ections under 35 USC
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`102 and 103
`
`Claim 118 stands rejected under 35 USC § 102(e) as anticipated by U.S. Pub. No.
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`2004/0013254 (“Hamberg”).
`
`Claims
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`103—117
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`stand rejected under 35 USC § 103(a)
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`as
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`unpatentable over Hamberg in view of U.S. Pub. No. 2005/0094579 (“Acharya”).
`
`Independent claim 103 has been amended to recite, inter alia: “display for the first party an
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`option to automatically initiate voice communication between the current participants of the IM
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`session without requiring individual selection of and prior registration with a conference call
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`server for establishing the voice communication by potential members including the first party
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`and the at least one other party”, which the prior art cited by the Examiner fails to teach or
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`suggest. Independent claims 108, 113 and 118 have been amended similarly.
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`Support for the amendments to the independent claims is found at least in paragraphs 22,
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`23 and 50—53 of the published version of Applicant’s specification (US 2011/0033035). More
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`specifically, Applicant’s specification discloses that
`
`the instant messaging service may be
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`adapted to communicate conference call request information with the conference call server.
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`In
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`particular, the present invention may further use the presence component of an instant messaging
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`system to determine Whether prospective attendees are available for a conference call through
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`this presence with the instant messaging service, then using information that includes an address
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`for a party stored with the IM service, either through an IM channel or at a specific phone
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`number or VOW address, create the ability for instant messaging users to immediately create any
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`combination of PSTN, Cellular, and VOIP conference calls between users some of Whom may be
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`in instant messaging sessions, and Without the necessity of each user to dial a telephone number
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`or having the host look up the phone number of each participant in order to place an outbound
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`telephone call. The invention may collect, through a variety of means, the information needed to
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`join those users into a telephone conference call, pass the dialing information and other
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`parameters to a central server, and send an invitation to each participant in advance of placing
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`the call. The central server may directly or indirectly establish a conference bridge, initiate a
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`series of outbound calls to each of the selected users from the instant messaging session, and
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`seamlessly join those users in a conference call using a conference bridge.
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`That is, the instant messaging service may be adapted to communicate a request that a
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`conference call be initiated, including parameters associated with the desired call. The instant
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`messaging service may be adapted to receive information in a tagged field format, such as
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`HTML or XML, such that information contained in the message may be correctly parsed to
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`allow the conference call server to properly initiate, or request initiation of a conference call
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`bridge. The conference request message may then be received 110 by the conference server.
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`The conference server may parse 112 the received message to determine the address of the
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`selected conference call targets. Parsing may involve stripping explicitly provided target phone
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`numbers or VOIP addresses from the message. The conference call server may then initiate 114
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`or request initiation of a conference bridge between the conference call requester and the
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`conference call targets.
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`The Examiner (in the Advisory Action) asserts that Applicant’s specification plainly
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`points out that “prior registration” takes places.
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`In particular, the Examiner cites paragraphs 56
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`and 57 of Applicant’s published application as describing prior registration. However, these
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`paragraphs
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`(and other portions of Applicant’s
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`specification) are directed to alternative
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`embodiments. The embodiments described above with respect to paragraphs 22, 23 and 50—53
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`clearly do not require prior registration with a conference call server by potential members of a
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`voice communication.
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`Indeed, the conference server may simply strip telephone numbers from
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`the conference request message sent from the instant messaging service and establish the voice
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`communication directly therefrom.
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`Hamberg discloses a conference call established between a pre—defined group.
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`(See
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`paragraph 6 of Hamberg). A server sets up a conference call between the subscribers registered
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`with the server as active in a subscriber group. (See the Abstract of Hamberg). More specifically,
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`the conference call is set up between persons registered to the group at the conference call server
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`which establishes the conference call. (See paragraph 25 of Hamberg).
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`At least access rights of users, e.g., user names and passwords, are required by Hamberg’s
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`registration. Moreover, Hamberg discloses that all group members have the right to register as
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`active or inactive by sending a special Login message.
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`(See paragraph 16 of Hamberg). Hamburg
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`thus reguires an active registration of each subscriber with the group at the server establishing a
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`conference call so that the conference call can be set up between the registered subscribers.
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`In contrast, Applicant’s amended independent claim 103 displays an option for the first
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`party to automatically initiate voice communication between the current participants of the M
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`session without reguiring prior registration with a conference call server for establishing the voice
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`comuncation by potential members. That is, current participants of the M session (or other
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`potential members) need not have registered, e. g., with the conference call server that establishes the
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`conference call, in order to be potential members for the voice communication.
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`Hamberg thus fails to teach or suggest “display for the first party an option to
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`automatically initiate voice communication between the current participants of the M session
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`without requiring individual selection of and prior registration with a conference call server for
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`establishing the voice communication by potential members including the first party and the at
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`least one other party”, as now expressly recited by Applicant’s amended independent claim 103.
`
`Accordingly, Applicant’s amended independent claim 103 is deemed to be patentable
`
`over Hamberg.
`
`The other cited reference, Acharya, was cited by the Examiner as purportedly disclosing
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`various other features in the claims. However, nothing has been found in Acharya that would
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`remedy the deficiencies of Hamberg with respect to the features of claim 103 discussed above.
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`Independent claims 108, 113 and 118, as amended, recite features similar to claim 103
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`and are therefore also deemed to be patentable over the applied prior art for reasons discussed
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`above with respect to claim 103.
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`Claims 104—107, 109—112 and 114—117, each of which depend from one of independent
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`claims 103, 108 and 113, distinguish the invention over the applied prior art for the reasons
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`discussed above in regard to the independent claims, as well as on their own merits.
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`Withdrawal of the rejections under 35 USC §§ 102 and 103 is requested.
`
`Double Patentin
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`Claims 103—118 stand rejected on the ground of nonstatutory obviousness—type double
`
`patenting as unpatentable over claims 1—66 of U.S. Pat. No. 7,804,948. Claims 103—118 stand
`
`rejected on the ground of nonstatutory obviousness—type double patenting as unpatentable over
`
`claims 1—23 of US. Pat. No. 7,853,000.
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`Applicants submitted a terminal disclaimer with their prior response which the Examiner
`
`indicates the in the Advisory Action has overcome the nonstatutory obviousness—type double
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`patenting rejections.
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`m
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`Based on all of the above, it is respectfully submitted that the present application is now in
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`proper condition for allowance. Prompt and favorable action to this effect and early passing of this
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`application to issue are respectfully solicited.
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`It is believed that no fees or charges are required at this time in connection with the present
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`application. However, if any fees or charges are required at this time, they may be charged to our
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`Patent and Trademark Office Deposit Account No. 503111.
`
`Respectfully submitted,
`COZEN O’CONNOR
`
`By
`
`/Louis Heidelberger/
`Louis Heidelberger
`Reg. No. 27,899
`277 Park Avenue
`
`New York, New York 10172
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`(212) 883—4900
`
`Dated: July 9, 2012
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`
`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`
` 12/907,550 TURNER, TOD 0.
`Examiner
`Art Unit
`HARRY HONG
`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 g 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.
`|f 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 later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
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`1)|Zl Responsive to communication(s) filed on 09 July 2012.
`
`2a)|:l This action is FINAL.
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`2b)IXI This action is non-final.
`
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`
`; the restriction requirement and election have been incorporated into this action.
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`4)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5% Claim(s) 103-118is/are pending in the application.
`
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
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`6 |:| Claim s) _ is/are allowed.
`
`103-118 is/are rejected.
`
`is/are objected to.
`
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`
` Attachment(s)
`
`11)IZI The drawing(s) filed on 19 October 2010 is/are: a)EI 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).
`
`12)I:I 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)|:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`a)|:| All
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`b)|:l Some * c)I:I None of:
`
`1.I:I Certified copies of the priority documents have been received.
`
`all Certified copies of the priority documents have been received in Application No. _
`
`3.I:I 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.
`
`1) IZI Notice of References Cited (PTO-892)
`2) I] Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) I] Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date
`.
`US. Patent and Trademark Office
`PTOL-326 (Rev. 03-11)
`
`4) I] Interview Summary (PTO-413)
`Paper N0(S)/Ma” Date- _
`NOTICQ 0f Imormal Patent Application
`5)
`6) D Other:
`.
`_
`Office Action Sumifiafiebook v. UnllomaNaniEERMCllfi-ifih‘iefififiows
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`Application/Control Number: 12/907,550
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`Page 2
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`Art Unit: 2614
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 1 12
`
`1.
`
`The following is a quotation of the second paragraph of 35 U.S.C. 112:
`
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`2.
`
`Claims 103-118 are rejected under 35 U.S.C. 112, second paragraph, as being
`
`indefinite for failing to particularly point out and distinctly claim the subject matter which
`
`applicant regards as the invention.
`
`3.
`
`The term "prior" in the independent claims is a relative term which renders the
`
`claim indefinite. The term "prior" is not defined by the claim, the specification does not
`
`provide a standard for ascertaining the requisite degree, and one of ordinary skill in the
`
`art would not be reasonably apprised of the scope of the invention. The claims need to
`
`clearly define "prior" to when.
`
`Claim Rejections - 35 USC § 102
`
`4.
`
`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 —
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by
`another filed in the United States before the invention by the applicant for patent or (2) a patent
`granted on an application for patent by another filed in the United States before the invention by the
`applicant for patent, except that an international application filed under the treaty defined in section
`351 (a) shall have the effects for purposes of this subsection of an application filed in the United States
`only if the international application designated the United States and was published under Article 21(2)
`of such treaty in the English language.
`
`5.
`
`Claims 103-118 are rejected under 35 U.S.C. 102(e) as being clearly anticipated
`
`by Creamer et al. (Creamer; US 2003/0126207 A1; cited by the examiner and applied
`
`for the first time).
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`Facebook v. Uniloc, No. lPR2016—O1756
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`Facebook v. Uniloc, No. IPR2016-01756
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`Application/Control Number: 12/907,550
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`Page 3
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`Art Unit: 2614
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`The entire patent to Creamer is directed to the claimed overall environment and
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`plainly and completely teaches the claimed steps. Creamer plainly teaches the claimed
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`“displaying for (receive a request from) the first party an option to automatically initiate
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`voice communication between the current participants of the IM session without
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`requiring individual selection of and prior registration with a conference call server for
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`establishing the voice communication by potential members including the first party and
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`the at least one other party, (the request lacking specific identification of the at least one
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`other party)". Refer to paragraphs [0013], [0014], and [0028] — [0034] of Creamer.
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`Response to Arguments
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`6.
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`Applicant’s arguments with respect to the rejection(s) of claim(s) 103-118 under
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`35 U.S.C. 102(e) and 35 U.S.C. 103(a) have been fully considered and are persuasive.
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`Therefore, those rejections have been withdrawn. However, upon further consideration,
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`a new ground of rejection is made in view of the newly discovered reference to Creamer
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`et al. as applied above.
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`Terminal Disclaimer
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`7.
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`The terminal disclaimer filed on May 22, 2012 disclaiming the terminal portion of
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`any patent granted on this application which would extend beyond the expiration dates
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`of US 7,804,948 B2 and US 7,853,000 B2 has been reviewed and is accepted. The
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`terminal disclaimer has been recorded.
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`Application/Control Number: 12/907,550
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`Page 4
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`Art Unit: 2614
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to HARRY HONG whose telephone number is (571 )272-
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`7485. The examiner is normally off on Wednesdays.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Ahmad F. Matar can be reached on (571) 272-7488. The fax phone number
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`for the organization where this application or proceeding is assigned is 571 -273-8300.
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`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`September 28, 2012
`
`/Harry S. Hong/
`Primary Examiner, Art Unit 2614
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`Attorney Docket # 6072-2CON2 - 321852.000
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`PATENT
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Examiner: Hong, Harry S.
`Group Art: 2652
`
`In re Application of
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`Tod C. TURNER et a1.
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`Serial No.:
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`12/907,550
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`Filed: October 19, 2010
`For:
`SYSTEM AND METHOD FOR INITIATING
`CONFERENCE CALL
`
`Mail Stop Amendment
`Commissioner for Patents
`
`PO. Box 1450
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`Alexandria, VA 22313—1450
`
`SIR:
`
`AMENDMENT
`
`PETITION
`
`Applicant hereby petitions for a three-month extension of the original shortened statutory
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`response period set in the Office Action of October 3, 2012. Submitted herewith is the amount of
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`$700 (small entity) in payment of the government fee for a three-month extension of time so that the
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`period for response is extended to April 3, 2013. Any additional fees or charges required at this
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`time in connection with the present application may be charged to our US. Patent and Trademark
`
`Office Deposit Account No. 5031 11.
`
`LEGAL\15574502\2
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`RESPONSE
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`In response to the Office Action dated October 3, 2012, please amend the above-identified
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`application as follows:
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`Amendments to the Claims are reflected in the listing of claims which begins on page 3
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`of this paper.
`
`Remarks/Arguments begin on page 8 of this paper.
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`2
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`Listing of Claims:
`
`1.-102. (Cancelled).
`
`103.
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`(Currently Amended) A non-transitory computer readable medium containing
`
`computer instructions configured to operate with electronic computer hardware to perform the
`
`following steps:
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`display, in an instant messaging (1M) chat window of a first party, an exchange of IM
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`messages between the first party and at least one other party, the first party and the at least one
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`other party being current participants to an IM session;
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`display for the first party an indication of whether the at least one other pm is
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`communicany connected to the IM session;
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`display for the first party an option to automatically initiate voice communication
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`between the current participants of the IM session without requiring individual selection of
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`potential members including the first party and the at least one other party and without requiring
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`prior registration with a conference call server for establishing the voice communication by the
`
`potential members including the first party and the at least one other party; and
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`request, in response to selection of the option, voice communication between the first
`
`party and the at least one other party;
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`wherein in response to the request, the voice communication is established between the
`
`first party and those of the at least one other party.
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`3
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`104.
`
`(Previously Presented) The instructions of claim 103, wherein the at least one
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`other party comprises at least two parties.
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`105.
`
`(Previously Presented) The instructions of claim 103, said display an option
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`comprising display of a click-on icon that allows for a single step selection of the option.
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`106.
`
`(Previously Presented) The instructions of claim 103, wherein said display an
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`exchange of IM and said display for the first party comprise display within a common browser or
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`application window.
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`107.
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`(Previously Presented) The instructions of claim 103, wherein the voice
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`communication includes audio and video.
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`108.
`
`(Currently Amended) A non—transitory computer readable medium containing
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`computer instructions configured to operate with electronic computer hardware to establish voice
`
`communication between a first party and at least one other party who are current participants of
`
`an IM session, comprising the following steps:
`
`display for the first party an indication of whether the at least one other party is
`
`communicany connected to the IM session;
`
`display for the first party an option to automatically initiate voice communication
`
`between the current participants of the IM session without requiring individual selection of and
`
`prior registration with a conference call server for establishing the voice communication by
`
`potential members including the first party and the at least one other party; and
`
`4
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`request, in response to selection of the option, voice communication between the first
`
`party and the at least one other party;
`
`wherein in response to the request, the voice communication is established between the
`
`first party and those of the at least one other party.
`
`109.
`
`(Previously Presented) The instructions of claim 108, wherein the at least one
`
`other party comprises at least two parties.
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`110.
`
`(Previously Presented) The instructions of claim 108, said display an option
`
`comprising display of a click-on icon that allows for a single ste