IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant(s): Michael J. Rojas
`
`Examiner:
`
`Unassigned
`
`Serial No;
`
`Unassigned
`
`Art Unit:
`
`Unassigned
`
`Filed:
`
`Herewith
`
`Docket:
`
`171882
`
`For:
`
`SYSTEM AND METHOD FOR
`INSTANT VoIP MESSAGING
`
`Dated:
`
`March 4, 2009
`
`Commissioner for Patents
`P, O. Box 1450
`Alexandria, VA 22313-1450
`
`INFORMATION DISCLOSURE STATEMENT
`
`Sir:
`
`In accordance with 37 C.F.R. §§ 1.97 and 1.98,it is requested thatthe following
`
`references, whichare also listed on the attached Form PTO-1449, be made ofrecord in the
`
`above-identified case.
`
`]. U.S. 6,763,226 dated July 13, 2004 to McZeal, Jr.;
`
`2. U.S. Patent Application Publication 2004/0252679 dated December 16, 2004
`to Williamset al:
`
`CERTIFICATE OF ELECTRONIC TRANSMISSION
`
`[ hereby certify that this document is being electronically filed in the United
`
`States Patent and Trademark Office on the date shown below. Dated: March 4, 2009
`
`1
`
`GOOGLE 1002
`
`1
`
`GOOGLE 1002
`
`

`

`U.S. Patent Application Publication 2004/0122906 dated June 24, 2004 to
`Goodman et al.;
`
`U.S. Patent Application Publication 2005/0053230 dated March 10, 2005
`to Gierachf, K.:
`
`U.S, Patent Application Publication 2005/0105697 dated May 19, 2005to
`Hollowelletal.;
`
`U.S. Patent Application Publication 2003/0087632 dated May 8, 2003 to
`Sagi et al;
`
`U.S. Patent Application Publication 2006/0268750 dated November 30,
`2006 to Weiner, M.;
`
`U.S, Patent Application Publication 2004/0030046 dated February 12,
`2004 to Schulteset al.;
`
`U.S. Patent Application Publication 2007/0112925 dated May 17, 2007 to
`Makik, D.;
`
`U.S. Patent Application Publication 2007/0174403 dated July 26, 2007 to
`Barry, M.;
`
`U.S. Patent Application Publication 2006/0167883 dated July 27, 2006 to
`Boukobza, E.;
`
`U.S. Patent Application Publication 2004/0128356 dated July 1, 2004 to
`Bernstein et al.;
`
`U.S. Patent Application Publication 2003/0126207 dated July 3, 2003 to
`Creamer et al.:
`
`http://www.cisco.com/warp/public/ce/pd/nemnsw/callmn/prodlit/
`em33_ds.htm; “Data Sheet Cisco CallManager Version 3.3”, November
`22, 2002;
`
`http://www.cisco.com/en/US/products/hw/switches/ps1925/products data
`sheet 09186 a00800a3c3d.himl: “Data Sheet Cisco MGX 8000 Series”
`(Date unknown);
`
`http://www.hsteliann.com/english/?zone=3100-V21P; “Teliphone 3100-
`V21P”, 2003;
`
`http://www.linuxdevices.com/articles/AT5199947519.html; “Device
`Profile: snom 100 VoIP phone”, May 15, 2002;
`J:\Work\1732\17188Z\AMEND\I7188ZIDS.doc
`
`2
`
`10.
`
`1).
`
`12,
`
`14,
`
`15,
`
`17.
`
`2
`
`

`

`18.—http://www.pingtel.com/pr xpressa.jsp; “No limits with the advanced
`industry standard SIP phone, December8, 2003; and
`
`19,
`
`AudioCoded Enabling Technology Products, TPM-1100 VoP Media
`Gateway Modules; 2003.
`
`Pursuant to 37 C.F.R. §1.98(d), copies of the above listed references are not
`
`provided, as references # 1 through 13 were previously cited by the Examiner in connection with
`
`the parent case, U.S. Serial No. 10/740,030 filed on December 18, 2003; and references 14
`
`through 19 were submitted to the Examiner by the Applicantin an Information Disclosure
`
`Statement dated August 19, 2004.
`
`Inasmuchas this Information Disclosure Statementis being submitted in
`
`accordance with the schedule set out in 37 C.F.R §1.97(b), no statementor fee is required.
`
`Respectfully submi
`
`
`Gch
`
`
`
`Scully, Scott, Murphy & Presser
`400 Garden City Plaza
`Garden City, New York 11530
`(516) 742-4343
`
`SW:reg
`
`J\Work\1732\17 1 88Z\AMENDAI7 1 88ZIDS doc
`
`3
`
`

`

`Michael J. Rojas
`
`Form PTO-1449
`(REV. 7-80)
`
`-U.8. DEPARTMENT OF COMMERCE
`PATENT AND TRADEMARK OFFICE
`
`INFORMATION DISCLOSURE CITATION
`
`(Use several sheets ifnecessary)
`
`Atty. Docket No.
`17188Z
`Applicant
`
`Filing Date
`Rerewith
`
`Sheet
`
`_1
`
`of 2.
`
`Application No.
`
`Group Art Unit
`
`U.S, PATENT DOCUMENTS
`
`
`
`
`
`
`
`
`
`
`
`EXAMINER
`DOCUMENT CLASS|SUBCLASS|FILING DATEDATE NAME
`
`INITIAL*
`NUMBER
`(if appropriate)
`
`6,763,226 07-13-2004|MeZeal,Jr. =
`
`U.S. PATENT PUBLICATION DOCUMENTS
`Et
`omy 2004/0252679
`12-16-2004
`Ve 2004/0122906
`06-24-2004
`2005/0053230
`03-10-2005
`
`i=S
`
`2005/0105697
`
`=
`
`Gierachf, K,
`
`a=—a
`
`
`
`t———
`Holloweil et al,
`05-19-2005
`qe
`7
`:
`2003/0087632
`05-08-2003
`Sagi et al
`[aovsronse7s0[11302006[Wee|__|____|
`|[aoowronx0ne—[ea-ia-2004|Sctesea|
`ST
`[[aooreria92s—[as-172007[Maid|
`[Paoororraa0s—[o7263007[Bary|
`[—Paovarora7s8s[e7273%06|Boakobra.Ee—_|
`ial
`i
`ia
`2004/0128356|07-01-2004
`ra
`.
`2003/0126207|07-03-2003‘|Creamer etal.
`FOREIGN PATENT DOCUMENTS
`
`=
`
`
`
`
`
`
`
`DOCUMENT CLASS|SUBCLASS|TRANSLATIONDATE COUNTRY
`
`
`
`
`
`
`
`
`
`NUMBER
`
`Yes
`
`NO
`
`
`
`OTHER PRIOR ART(including Author, Title, Date, Pertinent Pages, Etc.)
`
`
`http://www.cisco.com/warp/public/cc/pd/nemnsw/callmn/prodlit/
`
`cm33_ds.htm; “Data Sheet Cisco Cal[Manager Version 3.3”, November 22, 2002;
`
`
`
`
` http://www.cisco.com/en/US/products/hw/switches/ps1925/products data
`
`
`
`sheet 09186 a00800a3c3d.html; “Data Sheet Cisco MGX 8000 Series” (Date unknown);
`
`
`EXAMINER
`
`DATE CONSIDERED
`
`4
`
`

`

`US, DEPARTMENTOF COMMERCE
`Form PTO-1449
`(REV, 7.80), PATENT AND-TRADEMARK OFFICE
`
`Atty. Docket No, (Optional)
`
`INFORMATION DISCLOSURE CITATION
`
`17188Z
`
`(Use several sheeis ifnecessary)
`
`Applicant(s)
`Michael Rojas
`Filing Date
`
`U.S. PATENT DOCUMENTS
`
`Sheet 2 of 2
`
`i
`Application Number
`
`Group Art Unit
`
`SUBCLASS
`
`FILING DATE
`(if appropriate)
`
`FOREIGN PATENT DOCUMENTS
`
`DATE CLASS=|SUBCLASS TRANSLATION
`
`considered. Include copy of this form with next communication to applicant.
`
`rein ttp://Awww.hsteliann.com/english/?zone=3100-V21P;“Teliphone3100-V21P”,2003;
`
`
`
`
`
`OTHER DOCUMENTS(including Author, Title, Date, Pertinent Pages, Etc.)
`
`
`http:/Avww.linuxdevices.com/articles/AT5199947519.html; “Device Profile: snom 100 VoIP
`phone”, (May 15, 2002);
`
`hitp://www.pingtel.com/prxpressa.jsp; “No limits with the advanced industry standard SIP phone,
`December 8, 2003: and
`
`hed AudioCoded Enabling TechnologyProducts, TPM-1100VoP MediaGatewayModules; 2003.
`
`* EXAMINER:
`
`Initialif reference considered, whether or not citation is in conformance with MPEP 609; draw line through citation if not in conformance and not
`
`J:\Work\1732\17L882Z\MISC\1449.dos
`
`5
`
`

`

`Electronic Patent Application Fee Transmittal
`
`Application Number:
`
`Filing Date:
`
`Title of Invention:
`
`SYSTEM AND METHODFORINSTANTVoIP MESSAGING
`
`
`
`First Named Inventor/Applicant Name:
`
`Michael J. Rojas
`
`
`
`Attorney Docket Number: 17188Z
`
`Filed as Large Entity
`
`Utility under 35 USC 111(a) Filing Fees
`
`
`
`
`
`
`
`
`
`Petition:
`
`Sub-Total in
`Fee Code Quantity AmountDescription USD(S)
`
`Basic Filing:
`
`|
`
`|
`
`Utility Search Fee
`
`540
`
`|
`
`540
`
`Utility Examination Fee
`
`Pages:
`
`
`Claims:
`
`Miscellaneous-Filing:
`
`
`Patent-Appeals-and-Interference:
`
`
`6
`
`

`

`.
`
`Sub-Total in
`
`Extension-of-Time:
`
`Post-Allowance-and-Post-Issuance:
`
`
`Miscellaneous:
`
`
`
`
`Total in USD (5S) 1090
`
`7
`
`

`

`Electronic Acknowledgement Receipt
`
`
`
`Application Number: 12398076
`
`International Application Number:
`
`Confirmation Number:
`
`Title of Invention:
`
`SYSTEM AND METHOD FOR INSTANTVoIP MESSAGING
`
`
`
`First Named Inventor/Applicant Name:
`
`Michael J. Rojas
`
`
`
`Customer Number: 23389
`
`
`
`Filer: Paul J. Esatto/Anneliese Eberle
`
`Filer Authorized By:
`
`Paul J. Esatto
`
`
`
`Receipt Date: 04-MAR-2009
`
`Filing Date:
`
`Time Stamp:
`
`18:55:04
`
`Application Type:
`
`Utility under 35 USC 111(a)
`
`Payment information:
`
`
`yes
`Submitted with Payment
`Payment Type Deposit Account
`
`
`
`$1090
`Payment was successfully received in RAM
`
`RAM confirmation Number 5144
`
`
`
`191013
`Deposit Account
`
`Authorized User
`
`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 1.16 (National applicationfiling, search, and examination fees)
`Charge any Additional Fees required under 37 C.F.R. Section 1.17 (Patent application and reexamination processing fees)
`
`8
`
`

`

`Charge any Additional Fees required under 37 CF.R. Section 1.21 (Miscellaneous fees and charges)
`
`File Listing:
`
`Number Message Digest|Part/.zip|Document Deacon File Name (if appl.)
`
`Document
`od
`ce
`h
`File Size(Bytes)/
`
`
`
`
`1265561
`
`Application Data Sheet
`
`17188ZADS.pdf
`
`aMtbeltibtedeadia74 Db) Tht ie]
`Sfie
`
`Warnings:
`Information:
`
`2789350
`
`17188Z5PEC.pdf
`
`Sbs8et5aed01 055975 1A bafdeacD562
`Sa5
`
`Multipart Description/PDFfiles in.zip description
`
`Document Description
`
`Specification
`
`Claims
`
`Abstract
`
`
`Warnings:
`
`Information:
`
`Drawings-only black and white line
`deanna’
`
`17188Zformaldrawings.pdf
`
`G1 06talamhaddersre AShaTD
`oi
`
`529578
`
`205146
`
`17188ZDEC.pdf
`Oath or Declaration filed
`LA?) Sbihc fod Joab53fied eT
`Wah
`
`Warnings:
`Information:
`
`17188ZIDS1 .pdf
`Information Disclosure Statement Letter
`SeSTABOd21 29dTTT S6 ISB VETS
`Belly
`
`Warnings:
`Information:
`
`277419
`
`5100142
`
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`
`2obbb? Lies?1095 Jathdabhololaire
`MMidia
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`
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`PTO/SB/14 (07-07)
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`Application Data Sheet 37 CFR 1.76
`
`Application Number
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`
`
`
`Title of Invention|SYSTEM AND METHOD FOR INSTANT VoIP MESSAGING
`
`
`
`
`
`The application data sheetis part of the provisional or nonprovisional application for whichit is being submitted. The following form contains the
`bibliographic data arrangedin a format specified by the United States Patent and Trademark Office as outlined in 37 CFR 1.76.
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`Secrecy Order 37 CFR 5.2
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`
`Applicant Information:
`Applicant 1
`
`Applicant Authority @/nventor|()Legal Representative under 35 U.S.C. 117 Party ofInterest under 35 U.S.C. 118
`
`
`Prefix} Given Name
`Middle Name
`Family Name
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`
`Michael
`J.
`Rojas
`
`Residence Information (Select One)
`(@) US Residency
`©) NonUS Residency
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`
`City|North Canton, Stark County State/Province|OH Country of Residencei|US
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`Postal Code Countryi|US44720
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`2828 Barclay Circle
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`Customer Number
`
`23389
`
`
`
`Email Address
`
`Application Information:
`
`Title of the Invention
`SYSTEM AND METHOD FOR INSTANTVoIP MESSAGING
`
`
`Attorney Docket Number}
`
`171882
`
`Small Entity Status Claimed
`
`[_]|
`
`Application Type
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`Nonprovisional
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`Subject Matter
`
`Utility
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`PTO/SB/14 (07-07)
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`Paul
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`
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`DiGiglio
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`Ayalogic,Inc.
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`Address 1
`530 South Main Street
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`44311-1010
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`2009-03-04 First Name|Paul J. Esatto, Jr.
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`EFS Web 2.2.2
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`SYSTEM AND METHOD
`FOR INSTANT VoIP MESSAGING
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`CROSS REFERENCE TO RELATED APPLICATION
`
`This application is a continuation of U.S. Application serial number
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`10/740,030 filed on December 18, 2003, the entire contents of which are incorporated herein
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`by this reference.
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`BACKGROUND OF THE INVENTION
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`Technical Field of the Invention
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`The present invention generally relates to Internet telephony (IP telephony).
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`Moreparticularly, the present invention is directed to a system and method for enabling
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`local and global mstant VoIP messaging over an IP network, such as the Internet, with
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`PSTN support.
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`20
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`Description of the Prior Art
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`Traditional telephony is based on a public switched telephone network (i.e.,
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`“PSTN”), In the PSTN,a telephoneterminal is electrically connected to a conventional or
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`legacy switch. The telephone terminal and the legacy switch communicate via a proprietary
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`25
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`protocol, which maybedifferent depending on the vendor ofthe legacy switch. Circuit
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`switching provides a communication path (i.e., dedicated circuit) for a telephone cal] from
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`the telephone terminal to another device over the PSTN,including another telephone
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`terminal. During the telephonecall, voice communication takes place over that
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`communication path.
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`Analternative to the PSTN is Voice over Internet Protocol(i,¢e., “VoIP”),
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`also known as IP telephony or Internet telephony. In the IP telephony, a VoIP terminal
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`device is connected to a packet-switched network(e.g., Internet) and voice communication
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`from the VoIP terminal device is digitized, packetized and transmitted over the packet-
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`switched network to a destination VoIP terminal device, which reconstructs the packets and
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`audibly plays, stores or otherwise processes the transmission. The VoJP terminal device
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`may be a VoIP telephone or a general-purpose personal computer (PC) enabled for IP
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`telephony. Morespecifically, the PC is programmed with the software and equipped with
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`audio input/output devices (e.g., a combination of microphone and speaker or a headset) to
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`serve as a VoIP terminal device. The PC so enabled and equipped will herein be referred to
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`as a VoIP terminaldevice or a VoIP softphone.
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`15
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`Figure | is an illustrative example ofa prior art IP telephony system 100.
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`The IP telephony system 100 comprises a packet-switched IP network 102, such as the
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`Internet, which transmits VoIP traffic from andto a plurality of terminal devices 104, 106
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`and 110, Terminal device 104 is a VoIP softphone that is enabled for [P telephony over the
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`20
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`network 102. Terminal device 106 is a VoIP telephone, which is connected to the network
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`102 via. a softswitch 108. The VoIP softswitch 108 is disposed on the packet-switched
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`network (e.g., Internet) 102 between an origination terminal device (such as VoIP softphone
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`104) and a destination terminal device (such as VoIP telephone 106), and routes packets
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`Fs
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`over the packet-switched IP network 102. The softswitch 108 may also manage and perform
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`administrative functions for the terminal device or devices (¢.g., VoIP telephone 106)to
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`which it is connected. Whether the terminal device is a VoIP softphone 104 or a VoIP
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`telephone 106, the terminal device is connected to the IP network 102 via a networking
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`standard such as Ethemet, Bluetooth, IEEE 1394 (also known as “Firewire”), [EEE 802.11
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`(also known as “WiFi"), or networking over serial communication channels such as the
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`Universal Serial Bus(i.e., “USB”). Data communication over the network then takes place
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`using a connection protocol, e.g., transfer control protocol/Internet protocol (i.e., “TCP/IP”).
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`Further regarding Fig. 1, terminal device 110 is a legacy telephone that is
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`connected to a legacy switch 112 for (circuii-switched) voice communications over the
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`PSTN 116 with other terminal devices. A media gateway 114 may be provided between the
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`legacy switch 112 and the packet-switched network 102 to enable IP telephony between the
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`legacy telephone 110 and a VoIP terminal device, such as a VoIP sofiphone 104 or VoIP
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`telephone 106. More specifically, the media gateway 114 converts the audio signal carried
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`over PSTN to packets carried over the packet-switched IP network 102. In addition, a media
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`gateway 118 may be disposed over the PSTN 116 and connected to a softswitch 120 to
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`convert the audio signal fromthe legacy telephone 110 to packets routed over the IP
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`network 102 via the softswitch 120.
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`Voice messaging in both the VoIP and PSTN is known. Morespecifically,
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`the foregoing systems may be provided withafacility to allow users to leave voice messages
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`for recipients, which is a feature that is familiar to anyone who usesa telephone.
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`23".
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`Conventionally. leaving a voice message involves dialing the recipient's telephone number
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`(often without knowing whetherthe recipient will answer), waiting for the connectionto be
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`established, speaking to an operator or navigating through a menuofoptions, listening to a
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`greeting message, and recording the messagefor later pickup by the recipient.
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`In that
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`message, the user musttypically identify himself or herself in order for the recipient to
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`return the call.
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`Instant text messagingis likewise known. More specifically, a user is
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`provided with a client terminal, which is typically a general-purpose PC programmed with
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`mstant text messaging sofiware and in data communication over an IP network with an
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`instant text-messaging server. The instant text-messaging server presents the user, via the
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`client terminal, with a list of persons who are currently “online” and ready to receive text
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`messages on their own client terminals, The user then uses the client terminal to select one
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`or morepersons to whom the message will be sent and types in a text message. The text
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`message is sent immediately via the text-messaging serverto the selected one or more
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`persons and is displayed ontheir respective client terminals,
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`However, notwithstanding the foregoing advances in the VoIP/PSTN voice
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`communication and voice/text messaging, there is still a need in the art for providing a
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`20
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`system and method for providing instant VoIP messaging over an IP network. More
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`particularly, there is a need in the art for providing local and global instant voice messaging
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`over VoIP with PSTN support.
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`4.
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`J:\Work\1732\171882Z\SPEC\17188Z.spec.doo
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`SUMMARY OF THE INVENTION
`
`The present invention is directed to a system and method for enabling local
`
`and global instant VoIP messaging over an IP network, such as the Internet.
`
`According to an embodimentof the present invention, there is provided an
`
`instant voice messaging system for delivering instant messages over a packet-switched
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`network, the system comprising: a client connected to the network,the client selecting one
`
`or more recipients, generating an instant voice messagetherefor, and transmitting the
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`10
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`selected recipients and the instant voice message therefor over the network: and a server
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`connected to the network,the server receiving the selected recipients and the instant voice
`
`message therefor, and delivering the instant voice messageto the selected recipients over the
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`network, the selected recipients being enabled to audibly play the instant voice message.
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`According to another embodimentofthe present invention,there is provided
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`an instant voice messaging system for delivering instant messages over a packet-switched
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`network enabling public switched telephone network (PSTN) support, the system
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`comprising: a PSTN telephone connected to the network for providing input audio;a client
`
`connected to the network, the client selecting one or more recipients, generating an instant
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`20
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`voice message therefor using the input audio provided by the PSTN telephone, and
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`transmitting the selected recipients and the instant voice message therefor over the network;
`
`a server connected to the network, the server receiving the selected recipients and the instant
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`voice messagetherefor, and delivering the instant voice message to the selected recipients
`
`sas
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`JAWork\!732\17 188Z\SPECM7 188Z.spse.doc
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`over the network, the selected recipients being enabled to audibly play the instant voice
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`message.
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`According to a further embodiment ofthe present invention, there is provided
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`an instant voice messaging system for delivering instant messages over a packet-switched
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`network, the system comprising: a voice-over-internet-protocol (VoIP) telephone connected
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`to the network for providing input audio; a client connected to the network, the client
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`selecting one or more recipients, generating an instant voice message therefor using the
`
`input audio provided by the VoIP telephone, and transmitting the selected recipients and the
`
`instant voice message therefor over the network; a server connected to the network,the
`
`server receiving the selected recipients and the instant voice message therefor, and
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`delivering the instant voice message to the selected recipients over the network, the selected
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`recipients beng enabled to audibly play the instant voice message,
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`According to still another embodiment of the present invention, there is
`
`provided an instant voice messaging system for delivering instant messages overa plurality
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`of packet-switched networks, the system comprising: a client connected to a local network,
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`the client selecting one or more external recipients connected to an external network outside
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`the local network, generating an instant voice message therefor, and transmitting the
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`20
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`selected recipients and the instant voice message therefor over the local network and the
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`external network; and a server connected to the external network, the server receiving the
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`selected recipients and the instant voice message therefor, and delivering the instant voice
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`message to th