`
`Applicant(s): Michael J. Rojas
`
`Examiner:
`
`Unassigned
`
`Serial No:
`
`Unassigned
`
`Art Unit:
`
`Unassigned
`
`Filed:
`
`Herewith
`
`Docket:
`
`I 71882
`
`For:
`
`SYSTEM AND METHOD FOR
`INSTANT VoIP MESSAGING
`
`Dated:
`
`March 4, 2009
`
`Commissioner for Patents
`P. 0.Box1450
`
`Alexandria, VA 22313-1450
`
`INFORMATION DISCLOSURE STATEMENT
`
`Sir:
`
`In accordance with 3? C.F.R. §§ 1.97 and 1.93, it is requested that the following
`
`references, which are also listed on the attached Form PTO-1449, be made of record in the
`
`above—identified case.
`
`1. US. 6,763,226 dated July 13, 2004 to McZeal, 111;
`
`2. U.S. Patent Application Publication 2004JO25 2679 dated December 16, 2004
`to Williams ct a1;
`
`CERTIFICATE OF ELECTRONIC TRANSMISSION
`
`I 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
`
`
`
`1.1.3. Patent Application Publication 200410122906 dated June 24, 2004 to
`Goodman et a1.;
`
`0.8. Patent Application Publication 200510053 230 dated March 10, 2005
`to Gierachf, K.;
`
`US. Patent Application Publication 200510105697 dated May 19, 2005 to
`Hollowell et a1.;
`
`U.S. Patent Application Publication 200310087632 dated May 8, 2003 to
`Sagi et al;
`
`US. Patent Application Publication 200610268750 dated November 30,
`2006 to Weiner, M.;
`
`US. Patent Application Publication 200410030046 dated February 12,
`2004 to Schultes at :31;
`
`11.3. Patent Application Publication 200710112925 dated May 17, 2007 to
`Makik, D.;
`
`U.S. Patent Application Publication 200710174403 dated .1uly 26, 200'? to
`Entry, M.;
`
`U.S. Patent Application Publication 200610167883 dated July 27, 2006 to
`Boukobza, 13.;
`
`US. Patent Application Publication 200410128356 dated July 1, 2004 to
`Bernstein at 311.;
`
`0.8. Patent Application Publication 200310126207 dated July 3, 2003 to
`Creamer et ah;
`
`http :ffwww.cisco.com/warp/public1cc1pd1nemnsw1callmn1prodlit/
`cm33_ds.htm; “Data Sheet Cisco CallManager Version 3.3", November
`22, 2002;
`
`hit}; :1/www.cisco.com1en1U S/productsmwfswitches/Qs 1 9251products gm
`sheet 09186 a00800a3c3d.html; “Data Sheet Cisco MGX 8000 Series”
`(Date miknoum);
`
`http:11www.hsteliann.com1english1?2nne=3 100~V2 1P; ‘Teliphone 3 l 00—
`V21 P”, 2003;
`
`hit]; :11www.lin uxdevices.corn1a;tic] es1AT5 1999475 19 .html; “Device
`Profile: snom 100 VolP phone”, May 15, 2002;
`J:\Work\1132\171382\AMEND\171SSZIDSdoc
`
`2
`
`10.
`
`ll.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`2
`
`
`
`18.
`
`19.
`
`htty:/lwww.pingtel.comz‘pr xpressaq'sg; “No limits with the advanced
`industry standard SIP phone, December 8, 2003; and
`
`AudioCoded Enabling Technology Products, "PPM-1 100 V0? Media
`Gateway Modules; 2003.
`
`Pursuant to 37 C.F.R. §l .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 Applicant in an Information Disclosure
`
`Statement dated August 19, 2004.
`
`Inasmuch as this Information Di sclosure Statement is being submitted in
`
`accordance with the schedule set out in 37 OF.R §1 97(1)), no statement or fee is required.
`
`ResPectfully sub '
`
`
`
`
`
`Scully, Scott, Murphy & Presser
`400 Garden City Plaza
`Garden City, New York 11530
`(S 16) 742—4343
`
`SW:reg
`
`J:\Wofl€\1732\17lESMENDH‘JIBBZIDSJOC
`
`3
`
`
`
`Form PTO-1449
`(REV. 7-80)
`
`U.S. DEPARTMENT OF COMMERCE.
`PATENT AND TRADEMARK OFFICE
`
`INFORNIATION DISCLOSURE CITATION
`
`Atty. Docket No.
`1 71332.
`Applicant
`Mal-lag] J_ Rojas
`
`
`
`
`
`
`
`Sheet
`
`1
`
`of_2_
`
`Application No.
`
`
`
`EXAMINER
`IN [TIA L*
`
`DOCUMENT
`NUMBER
`
`US. PATENT DOCUMENTS
`
`DATE
`
`NAME
`
`CLASS
`
`SUBCLASS
`
`FILING DATE
`
`(if appropriate)
`
`6,763,226
`
`07-13-2004
`
`McZeal, Jr.
`
`U.S. PATENT PUBLICATION DOCUMENTS
`
`12-16-2004
`Wllliams et a1.
`2004/0252679
`
`
`
`
`
`
`
`2004/0122906
`
`06-24—2004
`
`2005/005 3230
`
`EGGS/0105697
`
`200 3/008 7632
`
`200 6/0268750
`
`2004/003 0046
`
`2007/0112925
`
`2007/0174403
`
`2006/0167883
`
`2004/01 2835 6
`
`03-10-2005
`05-19-2005
`
`05-08-2003
`
`11-30-2006
`02-12-2004
`
`05—17—2007
`07-26—2007
`
`07-27-2006
`07-01-2004
`
`2003/0126207
`
`07-03 4003
`
`Goodman et 31.
`
`Giemohf, K.
`Holloweil at al.
`
`lllillllllll
`
`Sagi at 31.
`
`Weiner, M.
`Schultcs at al.
`
`Maljk, D.
`M
`
`Boukobza, E.
`Bernstein et a}.
`
`Creamer et al.
`
`
`
`FOREIGN PATENT DOCUMENTS
`
`TRANSLATION
`DATE
`COUNTRY
`DOCUMENT
`CLASS
`SUB-CLASS
`NUMBER
`ES
`2I
` i
`
`
`
`
`OTHER PRIOR ART (Including Author, Title, Date, Pertinent Pages, Etc.)
`
`http://www.cisco.com/warp/public/cc/pd/nemnsw/calhnnfproflit/
`crn3 Ldshtm; “Data Sheet Cisco CallManager Version 3.3”, November 22, 2002;
`
`
`
`
`
`
`
`
`
`
`
`
`
` htt ://www.cisoo.com/en/US/ roducts/hw/switches/ 51925.“ roducts data
`
`
`
`
`sheet 09186 a00800a3¢3d.html; “Data Sheet Cisoo MGX 8000 Series" (Date unknown);
`
`EXAMINER
`
`DATE CONSIDERED
`
`
`
`
`
`4
`
`
`
`us DEPARTMBN'I' or COMMERCE
`‘Furm [#01449
`(Rm 7-30) PATENT men TRADEMARK OFFICE
`
`Atty. Docket No. (Optional)
`
`INFORMATION DISCLOSURE CITATION
`
`171882
`
`Sheet 2 of 2
`
`-
`Application Number
`
`(Live swam! sheets Mnecessary)
`
`Applicanqs]
`Michael Ro'as
`Filing Data
`
`U.S- PATENT DOCUMENTS
`
`Group Art Unit
`
`EXAMINER
`INITIAL‘“
`
`DOCUMENT NUMBER
`
`DATE
`
`NAME
`
`CLASS
`
`SUBCLASS
`
`FILING DATE
`(if appropriate)
`
`
`
`DOCUMENTNUMBER
`
`um
`
`CLASS
`
`Suncmss
`
`TRANSLATION
`
`FOREIGN PATENT DOCUMENTS
`
`OTHER DOCUMENTS (InchzdingAmhor, Title. Date. Pertinent Pages; Etc.)
`
`:ffwwwhstelianncomie
`
`1ish/?zone=3100-V2]P; ‘Teliphone 3100—V2‘1P”, 2003;
`
`
`11g};:ffwwainuxdevices.cmm’articles/ATS} 99947519.html; “Device Pmfile: snom 100 VGIP
`phone”, (May 15, 2002);
`
`hit};:f/www.gi11gtel.comfgrjmgssajsg; “No limits with the advanced industry standard SIP phone,
`December 8, 2003; and
`
`-- AutfioCoded Enabling Technology Products, TPM—l 100 VoP Media Gateway Modules; 2003.
`
`* EXAMINER: Initial if Memes wnfiducd, 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 mmmunicalian to applicant.
`
`.I.'\Work\I732\171382‘u'~dISC\1449.duc-.
`
`5
`
`
`
`Electronic Patent Application Fee Transmittal
`
`Application Number:
`
`
`Filing Date:
`
`
`
`Title Of Invention:
`
`SYSTEM AND METHOD FOR INSTANT VolP MESSAGING
`
`
`First Named lnventorprplica nt Name:
`Michael J. Rojas
`
`Attorney Docket Number:
`
`171882
`
`
`Filed as Large Entity
`
`
`Utility under 35 USC 1 1 1(a) Filing Fees
`
`Sub-Total in
`USDlS}
`
`Fee Code
`
`Quantlty
`
`Amount
`
`Descrlptlon
`
`Basic Filing:
`
`'|
`
`Utility Search Fee
`tility Examination Fee
`
`
`
`1111
`1311
`
`I
`l
`
`1
`1
`
`l
`l
`
`540
`
`220
`
`540
`
`‘ U
`l
`
`
`
`Miscellaneous-Filing:
`
`
`Petition:
`
`Patent-AppeaIs-a nd-lnterference:
`
`
`
`6
`
`
`
`.
`
`.
`
`Su b—Total in
`
`Extension-of—Time:
`
`PD st-Allowa rice—and—Po st—Issuance:
`
`
`Miscellaneous:
`
`
`
`
`Total in USD (5) 1090
`
`7
`
`
`
`Electronic Acknowledgement Receipt
`
`
`
`Application Number: 123980?6
`
`International Application Number:
`
`Confirmation Number:
`
`Title of Invention:
`
`SYSTEM AND METHOD FOR INSTANT VoIP MESSAGING
`
`
`
`First Named InventorlApplicant Name:
`
`Michael J: Rojas
`
`23389
`Customer N um ber:
`
`
`Paul). Esatto/Anneiiese Eberle
`Filer:
`
`
`Filer Authorized By:
`
`Paul J. Esatto
`
`
`
`Receipt Date: 04—MAR—2009
`
`Filing Date:
`
`Time Stamp:
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`18:55:04
`
`Application Type:
`
`Utility under 35 USC 111(3)
`
`Payment information:
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`
`Submitted with Payment
`
`yes
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`Payment Type Deposit Account
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`$1090
`Payment was successfully received in RAM
`
`RAM conflrmatlon Number 5144
`
`
`
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`Authorized User
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`191013
`
`The Director ofthe USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
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`Charge any Additional Fees required under 37 CPR. Section 1.16 (National application filing, search, and examination fees]
`Charge any Additional Fees required under 37 CPR. Section 1.17 (Patent application and reexamination processing fees)
`
`8
`
`
`
`Charge any Additional Fees required under 37 CPR, Section 1.21 (Miscellaneous fees and charges]
`
`File Listing:
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`.
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`Application Data Sheet
`
`WISBZADSpdf
`
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`Message Digest
`1265561
`
`ac-IuntJIinlJEkLI-ln-IUM Dillil'fl'l)b'| I Ni ii.)
`EH36
`
`Part l.zip (if appl.)
`
`Warnings:
`Information:
`
`2239350
`
`1718325PEc.pdf
`
`=0;st I‘iaefifllflifim“; IR-I mthEMQ'leSJ
`.‘.ll.45
`
`Muitipart DescriptioanDF files in .zip description
`
`Document Description
`
`Specification
`
`
`
`
`
`Warnings:
`Info rmation:
`
`Drawings-only black and white line
`filfibfibldfllrlhlilufllk131-1aliHS‘M-Tl?
`1H SBZformaldraWIngspdf
`drawings
`D3 in
`
`
`529578
`
`Warnings:
`
`Information:
`
`17"1 SBZDEC.de
`Oath or Declaration filed
`lr'lf i wit» Ji-rl SCH IIDIEJWJL'LW inJ'u’l F ft-
`I‘Jau‘r
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`Info rmation:
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`205146
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`'ITIBBZIDS'I .pdf
`Information Disclosure Statement Letter
`Efilfltvsfltbulii‘llmll(I‘JIHISh Mi iJJH'I'
`Hrelib
`
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`Information:
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`fee—Info.pdf
`Fee Worksheet (PTO—06)
`)I lull! lLiIQ‘Uk'E inirfl'alm‘n I'llhli iFlu
`ifldm
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`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Ca rd, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`lfa new application is being filed and the application includes the necessary components for a filing date [see 37 CFR
`1.53lbi-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
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`national stage submission under 35 U.S.C. 311 will be issued in addition to the Filing Receipt, in due course.
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`
`Application Data Sheet 37 CFR 1.76
`
`Application Number
`
`
`
`Title of Invention
`
`SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
`
`
`
`The application data sheet is part of the provisional or nonprovisional application for which it is being submitted. The following form contains the
`bibliographic data arranged in a format specified by the United States Patent and Trademark Office as outlined in 37 CFR 1.76.
`This document may be completed electronically and submitted to the Office in electronic format using the Electronic Filing System (EFS) or the
`document may be printed and included in a paper filed application.
`
`
`
`Secrecy Order 37 CFR 5.2
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`D Portions or all of the application associated with this Application Data Sheet may fall under a Secrecy Order pursuant to
`
`37 CFR 5.2 (Paper filers only. Applications that fall under Secrecy Order may not be filed electronically.)
`
`Applicant Information:
`A Iicant1
`
`
`OParty of Interest under 35 U.S.C. 118
`Applicant Authority @Inventor OLegal Representative under 35 U.S.C. 117
`
`Prefix Given Name
`Middle Name
`Family Name
`Suffix
`
`
`Michael
`J.
`Rojas
`
`Residence Information (Select One) @ US Residency 0 Non US Residency 0 Active US Military Service
`
`City
`
`North Canton, Stark County
`
`Citizenship under 37 CFR 1.41(b) i
`
`StatelProvince
`US
`
`
`
`OH
`
`Country of Residencei
`
`US
`
`Mailing Address of Applicant:
`
`2828 Barclay Circle
`Address 1
`
`Address 2
`
`North Canton, Stark County
`StatelProvince
`
`
`
`Postal Code
`
`44720
`
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`
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`23389
`
`
`
`Email Address
`
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`
`
`Title of the Invention
`SYSTEM AND METHOD FOR INSTANT VolP MESSAGING
`
`Suggested Technology Center (if any)
`
`
`
`
`
`Attorney Docket Number
`
`17188Z
`
`Small Entity Status Claimed
`
`|:|
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`Application Type
`
`Nonprovisional
`
`Subject Matter
`Utility
`fl—
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`PTO/58714 (07-07)
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`_
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`Application Data Sheet 37 CFR 1.76
`
`Title of Invention
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`SYSTEM AND METHOD FOR INSTANT VolP MESSAGING
`
`
`
`
`
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`Request Early Publication (Fee required at time of Request 37 CFR 1 .219)
`
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`
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`
`
`
`Paul Esatto, Jr. J.
`
`
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`_
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`Application Data Sheet 37 CFR 1.76
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`
`Title of Invention
`
`SYSTEM AND METHOD FOR INSTANT VolP MESSAGING
`
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`Wim—
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`Mailing Address Information:
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`SYSTEM AND METHOD
`FOR INSTANT VoIP MESSAGING
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`CROSS REFERENCE TO RELATED APPLICATION
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`This application is a continuation ofU.S. Application serial number
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`10f740,030 filed on December 18, 2003, the entire contents of which are incorporated herein
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`by this reference.
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`fiACKGROUND 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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`More particularly, the present invention is directed to a system and method for enabling
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`local and global instant VoIP messaging over an IP network, such as the lntemet, with
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`PSTN support.
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`Description of the Prior Art
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`Traditional telephony is based on a public switched telephone network (in,
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`“PSTN“}.
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`in the PSTN, a telephone terminal is electrically connected to a conventiorial or
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`legacy switch. The telephone terminal and the legacy switch communicate via a proprietary
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`protocol, which may be different depending on the vendor of the legacy switch. Circuit
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`switching provides a communication path (i.e., dedicated circuit) for a telephone call from
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`the telephone terminal to another device over the PSTN, including another telephone
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`terminal. During the telephone call. voice communication takes place over that
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`communication path.
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`An altemative to the PSTN is Voice over Internet Protoool (i.e., “VolP”),
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`also known as IP telephony or Internet telephony. In the IP telephony, a V0]? terminal
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`device is connected to a packet-switched network (cg, Intemet) and voice connnunication
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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 VoIP 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. More Specifically, the PC is programmed with the software and equipped with
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`audio inputfoutput 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 temiinal. device or a VolP sofiphone.
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`Figure 1 is an illustrative example of a 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 Vol? softphone that is enabled for IP telephony over the
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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 sofiswitch 108. The VoIP soflswitch 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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`£04) and a destination terminal device (such as VoIP telephone H16), and routes packets
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`over the packet—switched IP network 102. The sofiswitch 108 may also manage and perform
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`administrative functions for the terminal device or devices (e.g., VoIP telephone 106) to
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`which it is connected. Whether the terminal device is 3 Vol? sofiphone 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 Ethernet, Bluetooth, IEEE 1394 {also known as “Firewire”), [BEE 302.1i
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`(also known as “WiFi’U, or nonworking over serial communicati on channels such as the
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`Unincrsal Serial Bus (i.e., “1138"). 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 (circuit—switched) voice communications over the
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`PSTN 1 16 with other terminal devices. A media gateway 114 may be provided between the
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`legacy switch 112 and the packet—sndtched network 102 to enable IP telephony between the
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`legacy telephone 110 and a VoIP terminal device, such as a VcIP scflphone 104 or "VolP
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`telephone 106. More specifically, the media gateway 114 converts the audio signal carried
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`over PSIN to packets carried over the packet—switched IP network 102. In addition, a media
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`gateway l 18 may be disposed over the PSTN 116 and connected to a softswitch 120 to
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`convert the audio signal from the legacy telephone 110 to packets routed over the IP
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`network 102 via the sofiswitch 120.
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`Voice messaging in both the VoIP and PSTN is known. More specifically=
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`the foregoing systems may be provided with a ficility to allow users to leave voice messages
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`for recipients, which is a feature that is familiar to anyone who uses a telephone.
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`Conventionally, leaving a voice message involves dialing the recipient's telephone number
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`(often without knowing whether the recipient will answer), waiting for the connection to be
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`established, speaking to an operator or navigating through a menu of options, listening to a
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`greeting message, and recording the message for later pickup by the recipient.
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`In that
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`message, the user must typically identify himself or herself in order for the recipient to
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`return the call.
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`instant text messaging is 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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`instant text messaging software and in data communication over an IP network with an
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`instant text-messaging server. The instant text-messagin g 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 more persons 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 server to the selected one or more
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`persons and is displayed on their respective client terminals.
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`However, notwithstanding the foregoing advances in the Vole’PSTN voice
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`communication and voiceltext messaging, there is still a need in the art for providing a
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`system and method for providing instant VolP 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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`JilWOl'ldlT31“?ISBZlSPBC\l71852.Sp¢n.dDB
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`SUMMARY OF THE INVENTION
`
`The present invention is directed to a system and method for enabling local
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`and global instant VoIP messaging over an IP network, such as the Internet.
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`According to an embodiment of the present invention, there is provided an
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`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
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`or more recipients, generating an instant voice message therefor, and transmitting the
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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 sewer receiving the selected recipients and the instant voice
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`message therefor, and delivering the instant voice message to the selected recipients over the
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`network, the selected recipients being enabled to andibly play the instant voice meseage.
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`According to another embodiment of the present invention, there is provided
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`an instant voice messaging system for delivering instant messages over a packet—sndtched
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`network enabling public swilched telephone network (PSTN) support, the system
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`comprising: a PSTN telephone connected to the network for providing input audio; 3 client
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`connected to the netimrk, the client selecting one or more recipients, generating an instant
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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;
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`a server connected to Ihe network. the server receiving the selected recipients and the instant
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`voice message therefor, and delivering the instant voice message to the Selected recipients
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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 of the 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—ovet—intemet-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
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`input audio provided by the VoIP telephone, and transmitting the selected recipients and the
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`instant voice message therefor over the network; a server connected to the network, the
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`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 nehvork, the selected
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`recipients being enabled to audibly play the instant voice message.
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`According to still another embodiment of the present invention, there is
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`provided an instant voice messaging system for delivering instant messages over a plurality
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`of packet-switched networks, the system comprising: a client 00111188th 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 therefon and transmitting the
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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 re