UNITED STA IBS p A IBNT AND TRADEMARK OFFICE
`
`UNITED STA TES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria., Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`12/771,915
`
`04/30/2010
`
`Joel E. Short
`
`NOMDX.039C2
`
`2726
`
`11/02/2010
`7590
`20995
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET
`FOURIBENTH FLOOR
`IRVINE, CA 92614
`
`EXAMINER
`
`WANG, LIANG CHE A
`
`ART UNIT
`
`PAPER NUMBER
`
`2447
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/02/2010
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`jcartee@kmob.com
`efiling@kmob.com
`eOAPilot@kmob.com
`
`PTOL-90A (Rev. 04/07)
`
`GUEST TEK EXHIBIT 1003
`Guest Tek v. Nomadix, IPR2019-00211
`
`

`

`Office Action Summary
`
`Application No.
`
`12/771,915
`
`Examiner
`
`Applicant(s)
`
`SHORT ET AL.
`
`Art Unit
`
`2447
`Liangche A. Wang
`-- 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 ;l_ 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 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office 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
`1 )IZI Responsive to communication(s) filed on 30 April 2010.
`2a)0 This action is FINAL.
`2b)[8J This action is non-final.
`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)[8J Claim(s) 1-20 is/are pending in the application.
`4a) Of the above claim(s) __ is/are withdrawn from consideration.
`5)0 Claim(s) __ is/are allowed.
`6)[8J Claim(s) 1-20 is/are rejected.
`7)0 Claim(s) __ is/are objected to.
`8)0 Claim(s) __ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)0 The specification is objected to by the Examiner.
`10)0 The drawing(s) filed on __ is/are: a)O accepted or b)O 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).
`11 )0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PT0-152.
`
`Priority under 35 U.S.C. § 119
`
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All b)O Some* c)O None of:
`1.0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No. __ .
`3.0 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)).
`*Seethe attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`1) [8J Notice of References Cited (PTO-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) 0 Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date __ .
`
`4) 0 Interview Summary (PTO-413)
`Paper No(s)/Mail Date. __ .
`5) 0 Notice of Informal Patent Application
`6) 0 Other: __ .
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20101025
`
`

`

`Application/Control Number: 12/771,915
`Art Unit: 244 7
`
`DETAILED ACTION
`
`1. Claims 1-20 are presented for examination.
`
`Page2
`
`Claim Rejections- 35 USC§ 112
`
`2. 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.
`
`3. Claims 3 and 13 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. The claims recite the limitation "the delay period is further
`
`based on a size of the packet and a time associated with a precious packet" renders the
`
`claims vague and indefinite. The delay period should be "calculated", "corrected", "or
`
`"changed" based on certain information. It seems some information are lacking in the
`
`sentence that renders the claims vague and indefinite.
`
`Claim Interpretations
`
`4. Applicant is informed that a "whereby clause in a method claim is not given weight when
`
`it simply expresses the intended result for a process step positively recited." (MPEP
`
`2111.04).
`
`Claim Rejections - 35 USC§ 103
`
`5. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`

`

`Application/Control Number: 12/771,915
`Art Unit: 244 7
`
`Page 3
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`6. Claims 1-15, 17-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Sherman, US Patent Number 5,978,387, hereinafter Sherman, in views of Fowler, US
`
`Patent Number 5,793,978, hereinafter Fowler.
`
`7. Referring to claim 1, Sherman discloses a system for allowing a user to dynamically
`
`control an amount of bandwidth available to the user in a network (Col 3 lines 30-37), the
`
`system comprising:
`
`a. a first network interface (gateway 330) for communicating over a communication
`
`link with a user device during a network session (Col 5 lines 31-34);
`
`b. a second network interface (channel interface 340) for communicating with one or
`
`more computer networks (Col 5 lines 34-36);
`
`c. a data storage system including an indication of a network communication
`
`bandwidth associated with the user device (Col 5 lines 18-21, 24-29); and
`
`d. a processor (processor 504).
`
`Sherman does not explicitly disclose the limitation of delay period.
`
`However, Fowler has taught the limitation of delay period (Fowler, Col 1 lines
`
`49-52, delay period corresponds to the period of time that message is held until the
`
`selected amount of bandwidth become available.)
`
`It would have been obvious to a person with ordinary skill in the art at the time
`
`the invention was made to incorporate the delay period of Fowler in Sherman such that to
`
`have the processor of Sherman to calculate the delay period associated with a received
`
`

`

`Application/Control Number: 12/771,915
`Art Unit: 244 7
`
`Page4
`
`packet based on the bandwidth associated with user and have the processor delay
`
`transmission of the packet based on the delay period.
`
`A person with ordinary skill in the art would have been motivated to make the
`
`modification to Ayres because having the delay period for data packet transfer would
`
`give a relief to when a significant amount of packets are attempting to be broadcast or
`
`transmitted at the same time as taught by Fowler (Col I lines 28-40).
`
`8. Referring to claim 2, Sherman as modified discloses the system of claim 1, wherein the
`
`processor is further configured to adjust a billing rate charged to the user based on the
`
`network communication bandwidth (Col 7 lines 27-32).
`
`9. Referring to claim 3, Sherman as modified discloses the system of claim 1, wherein the
`
`delay period is further based on a size of the packet and a time associated with a previous
`
`packet (Fowler, Col I lines 53-56, selected bandwidth is based on the packet
`
`bytes to be send in any one second period.)
`
`10. Referring to claim 4, Sherman as modified discloses the system of claim 1, wherein the
`
`system comprises a gateway device (figure 3 gateway 320).
`
`11. Referring to claim 5, Sherman as modified discloses the system of claim 1, wherein the
`
`delaying is performed by placing the packet in a queue for the delay period (Fowler Col 1
`
`lines 42-52).
`
`12. Referring to claim 6, Sherman as modified discloses the system of claim 1, wherein the
`
`packet is received from the first network interface (figure 3).
`
`13. Referring to claim 7, Sherman as modified discloses the system of claim 6, wherein the
`
`packet is received from the second network interface (figure 3).
`
`

`

`Application/Control Number: 12/771,915
`Art Unit: 244 7
`
`Page 5
`
`14. Referring to claim 8, Sherman as modified discloses the system of claim 1, wherein the
`
`delay period is further calculated such that the packet will not produce a bandwidth that
`
`exceeds the network communication bandwidth (It's obvious for a cost-conscious system
`
`not to produce a bandwidth that exceed the network communication bandwidth for the
`
`profit. Col 3 lines 20-37).
`
`15. Referring to claims 9-15, 17-20 claims 9-15, 17-20 encompass the same scope of the
`
`invention as that of the claims 1-8. Therefore, claims 9-15, 17-20 are rejected for the
`
`same reason as the claims 1-8.
`
`16. Claim 16 is rejected under 35 U.S.C. 103(a) as being unpatentable over Sherman in view
`
`of Fowler, and in further view of Jones et al., US Patent Number 6,307,836, hereinafter
`
`Jones ..
`
`17. Referring to claim 16, Sherman as modified disclosed the invention as described in claim
`
`15. Sherman as modified does not discloses an upstream and a downstream data
`
`transmission parameter and wherein the upstream and downstream data transmission
`
`parameters are individually specifiable by the user.
`
`Jones teaches a subscriber service profile, which includes list of what services can
`
`be granted, and the desired upstream and downstream bandwidth selected by the
`
`subscriber (Col 9 lines 47-56, Col 4 lines 46-53).
`
`It would have been obvious to a person with ordinary skill in the art at the time
`
`the invention was made to have the upstream and downstream rate to be selected by the
`
`user, because Sherman provides communication between network and user and Jones is
`
`

`

`Application/Control Number: 12/771,915
`Art Unit: 244 7
`
`Page 6
`
`providing an option for the subscriber to selectthe desired rate for the upstream and
`
`downstream data flow (Col 4 lines 46-53).
`
`A person with ordinary skill in the art would have been motivated to provide
`
`user's desired service rate as taught by Jones (Col 4 lines 46-53).
`
`Conclusion
`
`18. The prior art made ofrecord and not relied upon is considered pertinent to applicant's
`
`disclosure. Applicant is reminded that in amending in response to a rejection of claims,
`
`the patentable novelty must be clearly shown in view of the state of the art disclosed by
`
`the references cited and the objection made. Applicant must show how the amendments
`
`avoid such references and objections. See 37 CFR 1.11 l(c).
`
`19. Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Liangche A. Wang whose telephone number is (571)272-
`
`3992. The examiner can normally be reached on Monday thru Friday, 8:30 am to 5:00
`
`pm.
`
`20. If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Joon H Hwang can be reached on (571)272-4036. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`21. 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
`
`

`

`Application/Control Number: 12/771,915
`Art Unit: 244 7
`
`Page 7
`
`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 USPTO
`
`Customer Service Representative or access to the automated information system, call
`
`800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`Liang-che Alex Wang
`October 25, 2010
`
`/Liangche A. Wang/
`Primary Examiner, Art Unit 2447
`
`

`

`Notice of References Cited
`
`Application/Control No.
`
`12/771,915
`
`Examiner
`
`Liangche A. Wang
`
`U.S. PATENT DOCUMENTS
`
`Applicant(s)/Patent Under
`Reexamination
`SHORT ET AL.
`
`Art Unit
`
`2447
`
`Page 1 of 1
`
`*
`*
`*
`*
`*
`*
`*
`*
`*
`
`Document Number
`Country Code-Number-Kind Code
`
`Date
`MM-YYYY
`
`A US-6,307,836
`
`10-2001
`
`Jones et al.
`
`05-2004
`
`Ayres, Lawrence
`
`09-2003
`
`Gulliford et al.
`
`05-1992
`
`Ankney et al.
`
`07-2001
`
`Manning et al.
`
`11-2003
`
`Chuah, Mooi Choo
`
`08-1998
`
`Fowler, Gregory Alan
`
`11-1999
`
`Sherman, Frederick A.
`
`US-6, 738,371
`
`B
`C US-6,618,355
`D US-5, 113,499
`E US-6,256,674
`US-6,654,808
`
`F
`
`G
`
`H
`
`I
`
`J
`
`K
`
`US-5, 793,978
`
`US-5,978,387
`
`US-
`
`US-
`
`US-
`
`US-
`
`L
`M US-
`
`Name
`
`Classification
`
`370/230
`
`370/352
`
`370/230
`
`340/5.74
`
`709/232
`
`709/227
`
`709/226
`
`370/468
`
`*
`
`Document Number
`Country Code-Number-Kind Code
`
`Date
`MM-YYYY
`
`Country
`
`Name
`
`Classification
`
`FOREIGN PATENT DOCUMENTS
`
`NON-PATENT DOCUMENTS
`
`Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
`
`*
`
`N
`
`0
`
`p
`
`Q
`
`R
`s
`
`T
`
`u
`
`V
`
`w
`
`X
`
`*A copy of this reference 1s not being furnished with this Office action. (See MPEP § 707.05(a).)
`Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
`
`U.S. Patent and Trademark Office
`PT0-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 20101025
`
`

`

`NOMDX.039C2
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant
`
`Joel E. Short et al.
`
`App.No
`
`12/771,915
`
`Filed
`
`For
`
`April 30, 2010
`
`SYSTEMS AND METHOD FOR
`DYNAMIC
`DATA
`TRANSFER
`MANAGEMENT ON
`A
`PER
`IN
`SUBSCRIBER
`BASIS
`A
`COMMUNICATIONS NETWORK
`
`Examiner
`
`Liang Che A Wang
`
`Art Unit
`
`Cont No.
`
`2447
`
`2726
`
`AMENDMENT
`
`Mail Stop AMENDMENT
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`In response to the Office Action mailed November 2, 2010, Applicants
`
`respectfully submit the following claim amendments and remarks in connection with the
`
`above-captioned application.
`
`Amendments to the Claims are reflected in the listing of claims which begins
`
`on page 2 of this paper.
`
`Summary of Interview begins on page 5 of this paper.
`
`Remarks begin on page 6 of this paper.
`
`-1-
`
`

`

`Application No.: 12/771,915
`Filing Date:
`April 30, 2010
`
`AMENDMENTS TO THE CLAIMS
`
`1.
`
`(Currently Amended)
`
`A system
`
`for allowing a user
`
`to
`
`dynamically control an amount of bandwidth available to the user in a network, the
`
`system comprising:
`
`a first network interface for communicating over a communication link with
`
`a user device during a network session;
`
`a second network interface for communicating with one or more computer
`
`networks;
`
`a data storage system including an indication of a network communication
`
`bandwidth associated with the user device and selected by the user; and
`
`a processor configured to calculate a delay period associated with a
`
`received packet based on the network communication bandwidth associated with
`
`the user, and the processor further configured to delay transmission of the
`
`packet based on the delay period to prevent the user device from achieving a
`
`bandwidth greater than the network communication bandwidth associated with
`
`the user device and selected by the user.
`
`2.
`
`(Original)
`
`The system of Claim 1, wherein the processor is further
`
`configured to adjust a billing rate charged to the user based on the network
`
`communication bandwidth.
`
`3.
`
`(Currently Amended)
`
`The system of Claim 1, wherein the delay
`
`period is further calculated based on a size of the packet and a time associated with a
`
`previous packet.
`
`4.
`
`(Original)
`
`The system of Claim 1, wherein the system comprises a
`
`gateway device.
`
`5.
`
`(Original)
`
`The system of Claim 1, wherein the delaying is performed by
`
`placing the packet in a queue for the delay period.
`
`6.
`
`(Original)
`
`The system of Claim 1, wherein the packet is received from
`
`the first network interface.
`
`7.
`the second network interface.
`
`(Original)
`
`The system of Claim 6, wherein the packet is received from
`
`-2-
`
`

`

`Application No.: 12/771,915
`Filing Date:
`April 30, 201 0
`
`8.
`
`The system of claim 1, wherein the delay period is further
`calculated such that the packet will not produce a bandwidth that exceeds the network
`
`(Original)
`
`communication bandwidth.
`
`9.
`transmission of packets, the method comprising:
`
`(Currently Amended)
`
`A method
`
`of
`
`dynamically managing
`
`establishing a network session over a communication link between a
`
`network and a user device of a user;
`
`associating a data transmission parameter selected by the user with the
`
`user device;
`
`receiving a packet and calculating a delay period associated with the
`
`packet based on the data transmission parameter; and
`
`delaying transmission of the packet based on the delay period to prevent
`
`the user device from achieving a data transmission greater than the data
`
`transmission parameter associated with the user device and selected by the
`
`user.
`
`10.
`
`(Original)
`
`The method of Claim 9, wherein the data transmission
`
`parameter comprises an upstream and a downstream data transmission parameter and
`
`wherein the upstream and downstream data transmission parameters are individually
`
`specifiable by the user.
`
`11.
`
`(Original)
`
`The method of Claim 9, wherein the delay period
`
`is
`
`calculated independent of maximum bandwidth available.
`
`12.
`
`(Original)
`
`The method of Claim 9, wherein the method of dynamically
`
`managing transmission of packets is performed by a gateway device.
`
`13.
`
`(Currently Amended)
`
`The method of Claim 9, wherein the delay
`
`period is further calculated based on a size of the packet and a time associated with a
`
`previous packet.
`
`14.
`
`(Original)
`
`The method of Claim 9, wherein the data transmission
`
`parameter is a bandwidth indication.
`
`15.
`
`(Currently Amended)
`
`A system for allowing a user to dynamically
`
`control a data transmission parameter associated with the user in a network, the system
`
`comprising:
`
`-3-
`
`

`

`Application No.: 12/771,915
`Filing Date:
`April 30, 2010
`
`means for establishing a network session over a communication link
`
`between a network and a user device of a user;
`
`means for associating a data transmission parameter selected by the user
`
`with the user device;
`
`means for receiving a packet and calculating a delay period associated
`
`with the packet based on the data transmission parameter; and
`
`means for delaying transmission of the packet based on the delay period
`
`without requiring hardware reconfiguration of any component in the network to
`
`prevent the user device from achieving a data transmission greater than the data
`
`transmission parameter associated with the user device and selected by the
`
`user.
`
`16.
`
`(Original)
`
`The system of Claim 15, wherein the data transmission
`
`parameter comprises an upstream and a downstream data transmission parameter and
`
`wherein the upstream and downstream data transmission parameters are individually
`
`specifiable by the user.
`
`17.
`
`(Original)
`
`The system of Claim15,
`
`further comprising means for
`
`adjusting a billing rate charged to the user based on the data transmission parameter
`
`specified by the user.
`
`18.
`
`(Original)
`
`The system of Claim 15, wherein the system comprises a
`
`gateway device.
`
`19.
`
`(Original)
`
`The system of Claim 15, wherein the user device is a
`
`portable device.
`
`20.
`
`(Original)
`
`The system of Claim 15, wherein the data transmission
`
`parameter relates to bandwidth.
`
`-4-
`
`

`

`Application No.: 12/771,915
`Filing Date:
`April 30, 2010
`
`SUMMARY OF INTERVIEW
`
`On January 19, 2011, Applicant's representatives, Milan Kapadia and Jarom
`Kesler conducted a telephone interview with Examiner Liang Che A Wang. During the
`
`interview, Applicant's representatives discussed proposed claim amendments to
`independent Claim 1. No agreement was reached and the Examiner agreed to
`reconsider the pending claims in view of a formal response.
`
`-5-
`
`

`

`Application No.: 12/771,915
`Filing Date:
`April 30, 2010
`
`REMARKS
`
`By way of summary, Claims 1-20 were pending in this application. In the present
`
`amendment, the Applicants have amended Claims 1, 3, 9, 13, and 15. Accordingly,
`
`Claims 1-20 remain pending for consideration.
`
`Claim Rejections under 35 U.S.C. § 112
`
`Claims 3 and 13 have been amended. Applicant respectfully requests the
`
`Examiner to withdraw the § 112 rejections.
`
`Claim Rejections under 35 U.S.C. § 103
`
`Applicant's representative would like to thank Examiner Wang for the courtesy
`
`he extended during the interview conducted on January 19, 2011.
`
`Proposed
`
`amendments were discussed to distinguish from Sherman (U.S. Patent No. 5,978,387),
`
`Fowler (U.S. Patent No. 5,793,978), and Jones (U.S. Patent No. 6,307,836). The
`
`Examiner agreed to consider the proposed amendments in view of a formal response.
`Applicant has amended independent Claims 1, 9, and 15 to incorporate the proposed
`claim amendments that were discussed during the interview. Applicant submits that
`
`these claims are distinguishable from Sherman, Fowler, and Jones at least for the
`
`same reasons discussed during the interview. Further, the Office Action at page 2
`
`makes some assertions regarding claim interpretations. Since the pending claims do
`
`not include a "whereby" clause, Applicant does not take any position regarding these
`
`assertions. Accordingly, each of independent Claims 1, 9, and 15, as well as their
`
`respective dependent claims, are believed to be in condition for allowance. Prompt
`
`notice of allowance of all pending claims is respectfully requested.
`
`No Disclaimers or Disavowals
`
`Although the present communication may include alterations to the application or
`
`claims, or characterizations of claim scope or referenced art, Applicants are not
`
`conceding in this application that previously pending claims are not patentable over the
`
`cited references. Rather, any alterations or characterizations are being made to
`
`-6-
`
`

`

`Application No.: 12/771,915
`Filing Date:
`April 30, 2010
`
`facilitate expeditious prosecution of this application. Applicants reserve the right to
`
`pursue at a later date any previously pending or other broader or narrower claims that
`
`capture any subject matter supported by the present disclosure, including subject
`matter found
`to be specifically disclaimed herein or by any prior prosecution.
`
`Accordingly, reviewers of this or any parent, child or related prosecution history shall not
`
`reasonably infer that Applicants have made any disclaimers or disavowals of any
`
`subject matter supported by the present application.
`If there are any remaining
`issues that can be resolved by a telephone
`
`conference, the Examiner is invited to call the undersigned attorney at (949) 721-2923
`
`or at the number listed below.
`
`Please charge any.additional fees, including any fees for additional extension of
`time, or credit overpayment to Deposit Account No. 11-1410.
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`By: __ ~_,,, ____.__b=-_:::::-:--.,,_""",.----(cid:173)
`
`Milan S. Kapadia
`Registration No. 55,982
`Attorney of Record
`Customer No. 20995
`(949) 760-0404
`
`Dated: January 26, 2011
`
`10344940
`
`-7-
`
`

`

`Docket No.: NOMDX.039C2
`
`Customer No. 20995
`
`INFORMATION DISCLOSURE STATEMENT
`
`Applicant
`
`Joel E. Short, et al.
`
`App. No
`
`12/771,915
`
`Filed
`
`For
`
`April 30, 2010
`
`SYSTEMS AND METHODS FOR DYNAMIC DATA
`TRANSFER MANAGEMENT ON A PER SUBSCRIBER
`BASIS IN A COMMUNICATIONS NETWORK
`
`Examiner
`
`Wang, Liang Che A.
`
`Art Unit
`
`Conf No.
`
`2447
`
`2726
`
`Mail Stop Amendment
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`Enclosed is a PTO/SB/08 Equivalent listing 66 references. Reference Nos. 1-65 are of
`
`record in U.S. patent application No. 09/693,481, now Patent No. 7,739,383, filed October 20,
`
`2000, which is the parent of this Continuation application, and is relied upon for an earlier filing
`
`date under 35 U.S.C. § 120. Copies of the references are not submitted pursuant to 37 C.F.R.
`
`§ 1.98(d). A copy of Reference No. 66 is enclosed.
`
`This Information Disclosure Statement is being filed before the mailing date of a final
`
`action and before the mailing of a Notice of Allowance. This Statement is accompanied by the
`
`fees set forth in 37 C.F.R. § 1.17(p). The Commissioner is hereby authorized to charge any
`
`additional fees which may be required or to credit any overpayment to Account No. 11-1410.
`
`Respectfully submitted,
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`Dated: _t_/_--2,_G:"_(_/_{ __ ~l~-
`
`By: __ ~ ____ ......... ____ ::::-:----.-. _ __,,,_ __ _
`
`
`Milan S. Kapadia
`Registration No. 55,982
`Attorney of Record
`Customer No. 20995
`(949) 760-0404
`
`9419594/072710
`
`

`

`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`(Multiple sheets used when necessary)
`SHEET 1 OF 4
`
`Application No.
`Filing Date
`First Named Inventor
`Art Unit
`Examiner
`Attorney Docket No.
`
`12/771,915
`April 30, 2010
`JoelE.Short
`2447
`Wang, Liang Che A.
`NOMDX.039C2
`
`t
`I
`.
`PTO/SB/08 E
`:Qu1va en
`
`Examiner Cite
`Initials
`No.
`
`Document Number
`Number - Kind Code (if known)
`Example: 1,234,567 B1
`
`Publication Date
`MM-DD-YYYY
`
`Name of Patentee or Applicant
`
`Pages, Columns, Lines Where
`Relevant Passages or Relevant
`Figures Appear
`
`U.S. PATENT DOCUMENTS
`
`5,113,499
`
`5,446,735
`
`5,708,654
`
`5,708,780
`
`5,787,483
`
`5,793,978
`
`5,978,387
`
`6,035,405
`
`6,078,953
`
`6,130,892
`
`6,194,992
`
`6,232,764
`
`6,256,674
`
`05/1992
`
`08/1995
`
`Ankney et al.
`
`Tobagi et al.
`
`01/13/1998
`
`Arndt, et al.
`
`01/13/1998
`
`Levergood et al.
`
`07/1998
`
`Jam et al.
`
`08-11-1998
`
`Fowler
`
`11-02-1999
`
`Sherman
`
`03/2000
`
`06/2000
`
`10/10/00
`
`02/27/01
`
`05/2001
`
`07/2001
`
`Gage et al.
`
`Vaid et al.
`
`Short, et al.
`
`Short, et al.
`
`Rettig et al.
`
`Manning et al.
`
`Jones, et al.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`29
`
`6,307,836
`
`6,310,886
`
`6,609,153
`
`6,618,355
`
`6,636,894
`
`6,654,808
`
`6,735,633
`
`6,738,371
`
`6,789,110
`
`6,795,852
`
`6,810,426
`
`6,826,694
`
`6,857,009
`
`6,868,399
`
`7,020,082
`
`7,088,727
`
`10-23-2001
`
`10-30-2001
`
`Barton
`
`08-19-2003
`
`Salkewicz
`
`09-09-2003
`
`Gulliford, et al.
`
`10/21/03
`
`11/2003
`
`Short, et al.
`
`Chuah, Mooi Choo
`
`05-11-2004
`
`Welch, et al.
`
`05-18-2004
`
`Ayres
`
`09/07/04
`
`09/21/04
`
`10/26/04
`
`Short, et al.
`
`Kleinrock, et al.
`
`Mysore, et al.
`
`11/30/2004
`
`Dutta et al.
`
`02/15/05
`
`03/15/05
`
`03/28/06
`
`08/08/06
`
`Ferrieria, et al.
`
`Short, et al.
`
`Bhagavath, et al.
`
`Short, et al.
`
`Examiner Signature
`
`I Date Considered
`
`*Examiner: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not
`in conformance and not considered. Include copy of this form with next communication to applicant.
`T1 - Place a check .mark in this area when an English language Translation is attached.
`
`

`

`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`(Multiple sheets used when necessary)
`SHEET2 OF 4
`
`Application No.
`
`12/771,915
`
`Filing Date
`
`First Named Inventor
`Art Unit
`
`Examiner
`
`April 30, 2010
`JoelE.Short
`
`2447
`Wang, Liang Che A.
`
`Attorney Docket No.
`
`NOMDX.039C2
`
`OS
`PT / B/08 Eauivalent
`
`Examiner Cite
`Initials
`No.
`
`Document Number
`Number - Kind Code (if known)
`Example: 1,234,567 B1
`
`Publication Date
`MM-DD-YYYY
`
`Name of Patentee or Applicant
`
`Pages, Columns, Lines Where
`Relevant Passages or Relevant
`Figures Appear
`
`U.S. PATENT DOCUMENTS
`
`30
`31
`32
`33
`34
`35
`36
`37
`38
`
`7,117,526
`
`7,194,554
`
`7,197,556
`
`7,216,152
`
`7,554,995
`
`2004-0073704 A 1
`
`2006-0239254 A 1
`
`2008-0148383 A1
`
`2009-0024 7 45 A 1
`
`10/03/06
`
`03/20/07
`
`03/27/07
`
`05/08/07
`
`06/30/09
`
`04/15/04
`
`10/26/06
`
`06/19/08
`
`01/22/09
`
`Short, et al.
`
`Short, et al.
`
`Short, et al.
`
`Short, et al.
`
`Short, et al.
`
`Paunikar, et al.
`
`Short, et al.
`
`Pitchaikani, et al.
`
`Short, et al.
`
`Foreign Patent Document
`Examiner Cite
`No. Country Code-Number-Kind Code
`Initials
`Example: JP 1234567 A1
`
`FOREIGN PATENT DOCUMENTS
`Publication
`Date
`MM-DD-YYYY
`
`Name of Patentee or
`Applicant
`
`Pages, Columns, Lines
`Where Relevant Passages or
`Relevant Figures Appear
`
`T1
`
`39
`40
`41
`42
`43
`
`WO/9702687
`
`01/23/1997
`
`Martinsson, Olle
`
`WO 98/16036 A 1
`
`04/16/1998
`
`Olkkonen, et al.
`
`WO 98/54868 A 1
`
`12/03/1998
`
`Holt, et al.
`
`EP O 873 037 A1
`
`10/21/1998
`
`Elwalid, et al.
`
`EP O 742 657
`
`05-01-1996
`
`AT&T 1PM Corp.
`
`NON PATENT LITERATURE DOCUMENTS
`
`Examiner Cite
`Initials
`No.
`
`Include name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of the
`item (book, magazine, journal, serial, symposium, catalog, etc.), date, page(s), volume-issue
`number(s), publisher, citv and/or countrv where published.
`44 COMPLAINT FOR PATENT INFRINGEMENT OF U.S. PATENT NOS. 6, 130,892; 7,088,727;
`6,636,894; 6,868,399; 6,789,110 and 7,554,995
`45 Plaintiff Nomadix, Inc. 's Proposed Claim Construction Statement; Nomadix, Inc. vs. Second Rule LLC;
`Civil Action CV-07-1946, USDC, CD CA.; May 23, 2008; 183 pages.
`46 Second Rule LL C's Response to Nomadix, Inc. 's Proposed Claim Construction Statement; Nomad ix,
`Inc. vs. Second Rule LLC.; Civil Action CV-07-1946, USDC, CD CA.; June 6, 2008; 74 pages.
`47 [Proposed] Joint Claim Construction Statement, Nomadix, Inc. vs. Second Rule LLC; Civil Action CV-
`07-1946, USDC, CD CA.; July 2, 2008; 105 pages.
`48 COMPLAINT FOR PATENT INFRINGEMENT OF U.S. PATENT NOS. 6, 130,892; 7,088,727;
`6,636,894; 6,857,009 and 6,868,399.
`
`T1
`
`Examiner Signature
`
`I Date Considered
`
`*Examiner: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not
`in conformance and not considered. Include copy of this form with next communication to applicant.
`
`T1
`
`- Place a check mark in this area when an English language Translation is attached.
`
`

`

`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`(Multiple sheets used when necessary)
`SHEET3 OF 4
`
`Application No.
`Filing Date
`First Named Inventor
`Art Unit
`Examiner
`Attorney Docket No.
`
`12/771,915
`April 30, 2010
`JoelE.Short
`2447
`Wang, Liang Che A.
`NOMDX.039C2
`
`t
`I
`.
`PTO/SB/08 E
`:au1vaen
`
`Examiner Cite
`Initials
`No.
`
`NON PATENT LITERATURE DOCUMENTS
`Include name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of the
`item (book, magazine, journal, serial, symposium, catalog, etc.), date, page(s), volume-issue
`number(s), publisher, city and/or countrv where published.
`
`T1
`
`49 PCT International Search Report dated March 14, 2001 relating to PCT/US 009/29172
`
`50 Copy of partial European Search Report; European Patent Application No. EP 07 10 0293; dated
`December 2, 2009; 4 pgs.
`51 Copy of Decision on Appeal mailed November 3, 2009 for U.S. Patent Application No. 09/693,481, filed
`1
`December 20, 2000.
`52 W. RICHARD STEVENS, "TCP/IP Illustrated Vol. 1: The Protocols," 1994, 53-62, Addison
`Weslev.
`
`53 ANDREWS. TANENBAUM, "Computer Nextworks," 1996, 420-42, 3rd ed.
`
`Past, present, and future office actions, amendments, arguments, and other relevant
`