UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Addn:ss: 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.
`
`10/447,607
`
`05/29/2003
`
`Eric G. Suder
`
`21618-013001
`
`6094
`
`7590
`2620!
`FISH & RICHARDSON P.C.
`P.OBOX 1022
`Minneapolis, MN 55440-1022
`
`0412012007
`
`EXAMINER
`
`CHANG, RICHARD
`
`ART UNIT
`
`2616
`
`PAPER NUMBER
`
`SHORTENED STATUTORY PERIOD OF RESPONSE
`
`3MONTHS
`
`MAIL DATE
`
`04/20/2007
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`If NO period for reply is specified above, the maximum statutory period will apply and will expire 6 MONTHS
`from the mailing date of this communication.
`
`PTOL-90A (Rev. 10/06)
`
`RingCentral Ex-1002, p. 1
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`Office.Action Summary
`
`Application No.
`
`10/447,607
`
`Examiner
`
`Applicant( s)
`
`SUDER ET AL.
`
`Art Unit
`
`Richard Chang
`2616
`-- The MAILING DATE 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 ;J 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 )12] Responsive to communication(s) filed on 29 Mav 2003.
`2a)0 This action is FINAL.
`2b)i2] 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)12] Claim(s) 1-40 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)12] Claim(s) 1-40 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.
`1 0)12] The drawing(s) filed on 27 October 2003 is/are: a)i2] 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)).
`• See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`1) 12] Notice of References Cited (PT0-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`3) 0 Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date
`
`4) 0 Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ .
`5) 0 Notice of Informal Patent Application
`6) 0 Other:
`
`U.S. Patent and Trademark Off1ce
`PTOL-326 (Rev. 08-06) .
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20070313
`
`RingCentral Ex-1002, p. 2
`RingCentral v. Estech
`IPR2021-00574
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`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page2
`
`DETAILED ACTION
`
`Claim Rejections- 35 USC§ 102
`
`1.
`
`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.
`
`Claims 11-12, 17-22, 24 and 30 are rejected under 35 U.S.C. 102(e) as being
`2.
`unpatentable by Wilson et al. (U.S. Patent No. 6,829,231 81 ), hereinafter "Wilson".
`
`As to claim 11, Wilson discloses an IP telephone adaptable for coupling to a first
`
`· LAN, the IP telephone comprising [Fig. 5, Abstract, Col. 8, Lines 17-28, the Local
`
`Exchange switch 205 and local ISP 215 and network switch 302 form a LAN
`
`system that allowed the internet phones to connect]:
`
`a first state of operation entered in response to a selection of an input by a
`
`user, wherein the first state of operation of the IP telephone results in a
`
`display of a list of telecommunications extensions coupled to a second
`
`LAN coupled to the first LAN via a WAN [Fig. 5, Fig.6, Co1.7, Lines 4-67
`
`and Col. 8, Lines 1-39, A caller can access the directory database
`
`and directory search engine through the internet (WAN) for the
`
`callee's address and address conversion unit will convert the
`
`RingCentral Ex-1002, p. 3
`RingCentral v. Estech
`IPR2021-00574
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`

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`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 3
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`address to a callee's name and display it on the display of the
`
`caller's internet phone];
`
`a second state of operation entered in response to a selection of the input
`
`by the user, wherein the second state of operation of the IP telephone
`
`results
`
`in an automatic calling of one of the
`
`telecommunications
`
`extensions selected by the user [Fig. 3, Col.8, Lines 7-15, The caller can
`
`select the proper callee's name display and make a call. Note, the
`
`dialer pad of the internet phone has DTMF tone transceiver 140 and it
`
`is inherent that a phone has the DTMF tone capability to have AUTO-
`
`DIALING function, such as "Re-dial"].
`
`As to claim 12, Wilson discloses the IP telephone as recited in claim 11, wherein
`
`the erie of the telecommun'ications extensions automatically called has an identifier
`
`displayed to the user on the IP telephone when the input is selected by the user [Col. 8,
`
`Lines 7-15, Caller name displayed on the display, the user can select name from
`
`the scrolling list.].
`
`As to claim 17, Wilson discloses information handling system comprising:
`
`a first local area network ("LAN") operating under an IP protocol [Fig. 5,
`
`Abstract, Col. 8, Lines 17-28, the Local Exchange switch 205 and local ISP
`
`215
`
`and
`
`network
`
`switch
`
`302
`
`form
`
`a
`
`LAN
`
`system];
`
`a first IP telephone coupled to the first LAN, the first IP telephone having a
`
`RingCentral Ex-1002, p. 4
`RingCentral v. Estech
`IPR2021-00574
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`

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`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 4
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`display and a set of keys for enabling a user to enter inputs [Fig. 2, Col. 4, Lines
`
`39-67, Col. 5, Lines 1-38];
`
`a second LAN operating under the IP protocol [Fig. 5, Col. 8, Lines 17-28, the
`
`Local Exchange switch 240 and local ISP 215 and network switch 304 form
`
`a LAN system];
`
`second and third telephone extensions coupled to the second LAN [Fig.5, IP
`
`phones 245-247];
`
`a wide area network ('WAN") operating under the IP protocol coupling the first
`
`LAN to the second LAN [Network 210 coupled to local ISP, implied the
`
`network 210 is a internet (WAN)];
`
`the first LAN including first circuitry for enabling a user of t~e first IP telephone to
`
`view a list including the second and third telephone extensions [Col. 8, Lines 7-
`
`15, The display screen displays the list of the caller's request and the caller
`
`can select the intended caller for phone call];
`
`As to claim 18, Wilson disclose the system as recited in claim 17, further
`
`comprising:
`
`the first LAN including second circuitry for automatically calling the second
`
`telephone extension in response to the user selecting the second telephone
`
`extension from the viewed list [Fig. 3, Col.8, Lines 7-15, The caller can select
`
`the proper callee's name display and make a call. Note, the dialer pad of the
`
`RingCentral Ex-1002, p. 5
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 5
`
`Internet phone has DTMF tone transceiver 140 and it is inherent that a
`
`phone has the DTMF tone capability to have AUTO-DIALING function]..
`
`As to claims 19 and 20, Wilson discloses the system as recited in claim 18,
`
`wherein selection of the second telephone extension from the viewed list by the user is
`
`accomplished by selection of one of the set of keys and the selection of one of the set of
`
`keys results in an initiation of a call from the first IP telephone to the second telephone
`
`extension across the WAN [Fig. 5, Fig. 6, Col. 8, Lines 50-67, Col. 9, Lines 1-5, Once
`
`the user select th,e key and dial the calling number, the call setup will establish a
`
`connection across network 210 from calling to called side. ].
`
`As to claim 21, Wilson discloses the system as recited in claim 17, wherein the
`
`list is stored in a server in the second LAN, and is accessed by the first circuitry across
`
`the WAN [Fig. 5, the Internet user database directory, can be access by the first
`
`and the 2"d LANs].
`
`As to claim 22, Wilson discloses the system as recited in claim 17, wherein the
`
`first IP telephone includes circuitry for enabling the user to scroll through the displayed
`
`list [Col. 8, Lines 7-15].
`
`As
`
`to claims 24 and 30, Wilson discloses a telecommunications system
`
`comprising:
`
`RingCentral Ex-1002, p. 6
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 6
`
`a first IP telephone coupled to a first IP server within a first LAN [Fig. 5,
`
`Col. 8, Lines 17-45, The IP phones 201-203 coupled to Local
`
`exchange switch and network switch and the internet domain server
`
`308 forms a LAN];
`
`second and third telephone extensions coupled to a second IP server
`
`within a second LAN [IP phones 245-247 coupled to Local exchange
`
`switch 240 and network switch 304 and .the internet domain server
`
`308 forms a second LAN, It is well known in the art the local
`
`exchange switch can connect to many extensions, such as PBX];
`
`a WAN coupling the first LAN to the second LAN, the first LAN, the second
`
`LAN, and the WAN communicating using an IP protocol [Fig. 5, Col. 8,
`
`Lines 7-28, The network 210, it is IP network since it needs to
`
`establish connection via Internet ISP];
`
`means for displaying on the first IP telephone a list of telephone
`
`destinations stored in the second IP server in response to selection of a
`
`first input on the first IP telephone, wherein the list of telephone
`
`destinations is communicated from the second IP server over the WAN to
`
`the first IP telephone [Col. 8, Lines 7-15, The display screen displays
`
`the list of the caller's request and the caller can select the intended
`
`caller for phone call];
`
`means for automatically dialing the selected one of the telephone
`
`destinations for a communications link between the first IP telephone and
`
`RingCentral Ex-1002, p. 7
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 7
`
`the selected one of the telephone destinations in response to selection of·
`
`one of the telephone destinations from the displayed list [Fig. 3, Coi.B,
`
`Lines 7-15, The caller can select the proper callee's name display
`
`and make a call. Note, the dialer pad of the Internet phone has DTMF
`
`tone transceiver 140. and it is inherent that a phone has the DTMF
`
`tone capability to have AUTO-DIALING function].
`
`As to claims 31-33 and 25-27, Wilson discloses the system as recited in claim
`
`30, wherein the selection of one of the telephone destinations from the displayed list is
`
`performed in response to selection of a second input on the first IP telephone by a user.
`
`[Fig.5 and Fig.6, Col. 8, Lines 7-17, Caller can use key pad to make request of
`
`directory, then from the screen to select the proper callee for phone call.] And the
`
`first and second inputs are the same key button on the first IP telephone [It is well
`
`known in the art that using one key pad to change menu and make a selection
`
`afterward]. And the telephone destinations include the second and third telephone
`
`extensions coupled to the second IP server [Fig. 5, Both LANs can connection many
`
`IP phone (extensions) since both sides has Local exchange Switch. It is inherent
`
`that a local switch can connect many extensions, such as PBX. ].
`
`As to .claims 28 and 34, Wilson discloses the system as recited in claim 32,
`
`wherein the telephone destinations include telephones external to the system [Fig. 5,
`
`The local exchange switch inherently is able to connect local telephones and the
`
`RingCentral Ex-1002, p. 8
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 8
`
`outside line phone, such as a dedicate a T1 trunk from the local exchange switch
`
`for PSTN line so that the external line can call to the local telephone].
`
`Claim Rejections- 35 USC§ 103
`
`3.
`
`The following is a quotation of 35 U.S. C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived
`by the manner in which the invention was made.
`
`4.
`
`Claims 1-4,7 and 10 are rejected under 35 U.S. C. 103(a) as being unpatentable
`
`over Guy et al. (U.S. Patent No. 6,298,057 81 ), hereinafter "Guy, in view of Stuntebeck
`
`et al. (U.S. Patent 6,065,016}, hereinafter "Stuntebeck".
`
`As to claim 1, Guy discloses information handling system comprising:
`
`A first local area network ("LAN")[Fig. 1, LAN 116];
`
`a second LAN [Fig.1, LAN 134];
`
`a wide area network ('WAN") coupling the first LAN to the second LAN
`
`[Fig.1, WAN 104 connected to LANs 116 and 134 through routers 114
`
`and 132];
`
`RingCentral Ex-1002, p. 9
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 9
`
`a first telecommunications device coupled to the first LAN[Fig. Phone
`
`106/108 connects to LAN 116 through server 112];
`
`a plurality of telecommunications extensions coupled to the second
`
`LAN[Fig. 1 ,Phones 124,126 through the PBX and server to the LAN
`
`134, PBX is well known to be able to have many phone extensions);
`
`But Guy fails to teach the system has a circuitry in the first LAN for enabling user
`
`device to observe a list of the plurality of telecommunication extensions. And another
`
`circuit for automatically calling one of the plurality of telecommunications extensions in
`
`. response to the user selecting one of the plurality of telecommunications extensions
`
`from the observed list
`
`Stuntebeck teaches a universal directory server can be connected a user LAN for
`
`end user to access and select the phone number stored in the server for automatically
`
`dialing the phone number to make a phone call [Fig. 1, Abstract, Col. 6, Lines 39-45,
`
`user can select phone numbers (extension) from the user computer through the
`
`LAN to access the directory server and the computer can display numbers as
`
`icon then based on the number that user selected to make phone call.].
`
`It would have been obvious to a person of the ordinary skill in the art at the time
`
`the invention was made to implement the directory server that Stuntebeck taught into
`
`the file server 112 that Guy taught so the user in the LAN can access the directory
`
`RingCentral Ex-1002, p. 10
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 10
`
`server and select the proper number to make a phone call automatically as specified in
`
`claim 1.
`
`The motivation for doing so would have been to have a directory server that
`
`provide a convenient way to be accessed through a communication channel so the end
`
`user can easily to search, observe and auto·dialing the destination number without
`
`looking up another phone book.
`
`As to claim 2, Guy modified by Stuntebeck, discloses the system as recited in
`
`claim 1, wherein communication among the first LAN, second LAN, and WAN uses IP
`
`protocol (Guy, Col. 14, Lines 13-22].
`
`As to claim 3, Guy modified by Stuntebeck, discloses the system as recited in
`
`claim 2, wherein the list of the plurality of telecommunications extensions is displayed to
`
`the user of the first telecommunications device [Stuntebeck, Col. 6, Lines 39-45].
`
`As to claim 4, Guy modified by Stuntebeck, discloses the system as ·recited in
`
`claim 2, wherein the list of the plurality of telecommunications extensions is played as
`
`audio to the user of the first telecommunications device [Stuntebeck, Col. 4, Lines 28-
`
`26, since the user can use voice to access the directory server, it is inherent that
`
`the server will play back the pre-recorded selection menu to let user to select
`
`proper extension].
`
`RingCentral Ex-1002, p. 11
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 11
`
`As to claim 7, Guy modified by Stuntebeck, discloses the system as recited in
`
`claim 1, wherein the list of the plurality of telecommunications extensions is stored in a
`
`server in the second LAN, and is accessed by the first circuitry· across the WAN
`
`[Stuntebeck, Fig. 1, the universal server coupled to user LAN and be access from
`
`internet (WAN) or any other access channel].
`
`As to claim 1 0, Guy modified by Stuntebeck, discloses the system as recited in
`
`claim 1, further comprising:
`
`a third LAN coupled to the first and second LANs via the WAN; and
`
`a plurality of telecommunications extensions coupled to the third LAN, the
`
`first LAN including circuitry for enabling the user to select between observing the list of
`
`the plurality of telecommunications extensions coupled to the second LAN or observing
`
`a list of the plurality of telecommunications extensions coupled to the third LAN [Guy,
`
`Fig. 1, The WAN network is inherently for connecting a plurality of LANs in order
`
`to allow the users in those LANs can communicate to each other through WAN. ].
`
`5.
`
`Claims 5-6, 8-9 and 23 are rejected under 35 U.S.C. 103(a) as being
`
`u~patentable over Guy et al. (U.S. Patent No. 6,298,057 81 ), hereinafter "Guy, in view
`
`of Stuntebeck et al. (U.S. Patent 6,065,016), hereinafter "Stuntebeck", further in view of
`
`Wilson (U.S. Patent No. 6,829,231 81 ), h.ereinafter "Wilson".
`
`RingCentral Ex-1002, p. 12
`RingCentral v. Estech
`IPR2021-00574
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`

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`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 12
`
`As to claim 5, Guy modified by Stuntebeck, discloses all the limitations of claim 3
`
`(see above), whiCh claim 5 depends.
`
`But Guy modified by Stuntebeck fails to disclose the telecommunication device is
`
`an IP phone.
`
`Wilson teaches a IP telephone which has display, input key pad for user to select
`
`the phone number from a scrolling list to make call through internet [Fig. 2, Col. 5,
`
`Lines 11-30 and Col8, Lines 7-15].
`
`It would have been obvious to a person of the ordinary skill in the art at the time
`
`the invention was made to have the IP phone taught by Wilson as a communication
`
`device to connect to the Internet system that taught by Guy and Stuntebeck so that can
`
`make a internet voice call.
`
`The motivation for doing so is to provide a stand alone internet phone that user
`
`can access internet voice service without hooking up the computer and it is more
`
`convenient for the end user.
`
`As to claim 6, Guy modified by Stuntebeck and Wilson, discloses the system as
`
`recited
`
`in claim 5, wherein
`
`the
`
`tactile selection of one of
`
`the plurality of
`
`telecommunications extensions from the displayed list by the user results in an initiation
`
`RingCentral Ex-1002, p. 13
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`IPR2021-00574
`
`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 13
`
`of a call from the first telecommunications device to the selected one of the plurality of
`
`telecommunications extensions across the WAN [Wilson, Fig. 5, Fig. 6, Col. 7, Lines
`
`45-67 and Col. 8, Lines 1-38, Lines 50-67].
`
`As to claim 8, Guy modified by Stuntebeck and Wilson, discloses the system as
`
`recited in claim 6, wherein the list of the plurality of telecommunications extensions is
`
`stored in a server in the second LAN, and is accessed by the first circuitry across the
`
`WAN [Wilson, Fig. 5, the Internet user database directory, can be access by the
`
`first and the 2"d LANs].
`
`As to claim 9, Guy modified by Stuntebeck and Wilson, discloses The system as
`
`recited in claim 8, wherein the first telecommunications device includes circuitry for
`
`enabling
`
`the user
`
`to scroll
`
`through
`
`the displayed
`
`list of
`
`the plurality of
`
`telecommunications devices [Wilson, Col. 8, Lines 7 -15].
`
`As to claim 23, Guy modified by Stuntebeck and Wilson, teaches all the
`
`limitations of claim 1 (see above), which claim 23 depends.
`
`But Guy modified by Stuntebeck and Wilson, dose not disclose that there is 3rd
`
`LAN connected to the WAN and the caller's phone in the 1st LAN can display the
`
`callee's list (extensions) of the 2"d LAN and 3rd LAN.
`
`RingCentral Ex-1002, p. 14
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`IPR2021-00574
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`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 14
`
`It would have been obvious to a person of the ordinary skill in the art at the time
`
`the invention was made to have more than 2 LANs connect to WAN (internet) and every
`
`LAN has same structure as taught by Wilson [Wilson, Fig. 5, LAN comprises Local
`
`exchange switch and network switch] so that a caller in one of the LANs can access
`
`the directory database of the other two LANs through WAN as specified in· claim 35.
`
`Notice that, the WAN is inherently to be able to connect to a plurality of LANs together
`
`for sharing the ·information.
`
`The motivation for doing so is to provide more capacity and convince for the e·nd
`
`user of every l:.ANs. For example, a big organization has multiple work locations and the
`
`employee in this organization can access the whole phone directory of this organization
`
`no matter where the user located
`
`6.
`
`Claims 13-16, 29, 35-40 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Wilson (U.S. Patent No. 6,829,231 81 ), hereinafter "Wilson".
`
`As to claim 13, Wilson teaches the Internet phone sy.stem performs the
`
`functionalities as described in claim 11 [See rejection above].
`
`But Wilson dose not disclose that there is 3rd LAN connected to the WAN and the
`
`caller's phone in the 151 LAN can display the callee's list on.the 2nd LAN and 3rd LAN.
`
`RingCentral Ex-1002, p. 15
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 15
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`It would have been obvious to a person of the ordinary skill in the art at the time
`
`the invention was made to have more than 2 LANs connect to WAN (internet) and every
`
`LAN has same structure as .taught by Wilson [Wilson, Fig. 5, LAN comprises Local
`
`exchange switch and network switch] so that a caller in one of the LANs can access
`
`the directory database of the other two LANs through WAN as specified in claim 13.
`
`Notice that, the WAN is inherently to be able to connect to a ·plurality of LANs together
`
`for sharing the information.
`
`The motivation for doing so is to provide more capacity and convince for the end
`
`user of every LANs. For example, a big organization has multiple work locations and the
`
`employee in this organization can access the whole phone directory of this organization
`
`no matter where the user located.
`
`As to claim 14, Wilson discloses the IP telephone as recited in claim 13, further
`
`comprising:
`
`a third state of operation of the IP telephone entered in response to a third
`
`selection of the input by the user, wherein the third state of operation of the IP
`
`telephone results in a calling of one of the telephone destinations displayed to
`
`the user, wherein the calling of the one of the telephone destinations is
`
`accomplished from the first LAN via the WAN, through the second LAN [Col. 8,
`
`Lines 7-15, Caller name displayed on the display, the user can select name
`
`RingCentral Ex-1002, p. 16
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 16
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`from the scrolling list and, Fig. 3, Col.8, Lines 7-15, the caller can select the
`
`proper callee's name display and make a call. Note, the dialer pad of the
`
`Internet phone has DTMF tone transceiver 140 and it is inherent that a
`
`phone has the DTMF tone capability to have AUTO-DIALING function, such
`
`as "Re-dial". It is well known that in the directory selection menu, the user
`
`can choose locations, departments or units within the company (different
`
`LANs) and further choose the proper destination phone number].
`
`As to claims 15 and 16, Wilson discloses the IP telephone as recited in claim 14,
`
`wherein the user can scroll through the list of second and third LANs to select the third
`
`LAN, wherein the second state of operation of the IP telephone will then display
`
`telephone destinations the user can potentially call through the third LAN.
`
`And the user can scroll through the telephone destinations the user can potentially call,
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`wherein when the third state of operation is entered, the user has selected one of the
`
`telephone destinations with the third selection of the input [Fig. 5, Fig.6 ,Col.7, Lines 4-
`
`67 and Col. 8, Lines 1-39, A caller can access the directory database and directory
`
`search engine through the internet (WAN) for the callee's address and address
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`conversion unit will convert the address to a callee's name and display it on the
`
`display of the caller's internet phone. Col. 8, Lines 7-15, Caller name displayed on
`
`the display, the user can select name from the scrolling list.].
`
`RingCentral Ex-1002, p. 17
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 17
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`As to claims 29 and 35, Wilson teaches all the limitations of claims 24 and 30
`
`(see above), which claims 29 and 35 depends.
`
`But Wilson dose not disclose that there is 3rd LAN connected to the WAN
`
`and the caller's phone in the 1st LAN can display the callee's list on the 2"d LAN and 3rd
`
`LAN.
`
`It would have been obvious to a person of the ordinary skill in the art at the time
`
`the invention was made to have more than 2 LANs connect to WAN (internet) and every
`
`LAN has same structure as taught by Wilson [Wilson, Fig. 5, LAN comprises Local
`
`exchange switch and network switch] so that a caller in one of the LANs can access
`
`the directory database of the other two LANs through WAN as specified in claim 35.
`
`Notice that, the WAN is inherently to be able to connect to a plurality of LANs together
`
`for sharing the information.
`
`The motivation for doing so is to provide more capacity and convince for the end
`
`user of every LANs. For example, a big organization has multiple work locations and the
`
`employee in this organization can access the whole phone directory of this organization
`
`no matter where the user located.
`
`As to claim 36, Wilson discloses a method comprising the steps of:
`
`RingCentral Ex-1002, p. 18
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 18
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`receiving a input from a user on an IP telephone that is networked into a
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`first LAN operating under an IP protocol [Fig. 5, Internet phone connect to
`
`internet through the local switc~ and network switch, Col. 7, Lines 45-67,
`
`user can use the alphanumeric keypad to make a request of callee search];
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`in response to receipt of the input, displaying on a display on the IP telephone a
`
`first list including second and third LANs coupled to the first LAN, wherein the
`
`second and third LANs operate under the IP protocol [Col. 7,Lines 46-67 and
`
`Col. 8, Lines 1-17, the sreen on the caller's side can display the numbers of
`
`callee after the search engine reply the search request];
`
`receiving another input from the user on the IP telephone; in response to receipt
`
`of the input, displaying on the display on the IP telephone a second list of
`
`telephone destinations accessible from the second LAN [Basically, this is same
`
`operation of the above];
`
`receiving another input from the user on the IP telephone; and in response to
`
`receipt of the input, automatically dialing one of the telephone destinations
`
`accessible from the second LAN for a communications connection between the
`
`·one of the telephone destinations and the IP telephone (Col. 8, Lines 7-15,
`
`Caller name displayed on the display, the user can select name from the
`
`scrolling list and . Fig. 3, Col.8, Lines 7-15, the caller can select the proper
`
`callee's name display and make a call. Note, the dialer pad of the Internet
`
`phone has DTMF tone transceiver 140 and it is inherent that a phone has
`
`the DTMF tone capability to have AUTO-DIALING function, such as "Re-
`
`RingCentral Ex-1002, p. 19
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 19
`
`dial". It is well known that in the directory selection menu, the user can
`
`choose locations, departments or units within the company (different
`
`LANs) and further choose the proper destination phone number].
`
`-But Wilson does not explicitly disclose those touch inputs are in order, 15
`
`\ 2nd
`
`and 3rd.
`
`However, at the time the invention was made, it would have been obvious to a
`
`person of the ordinary skill in the art to modify the order of the touch input such that can
`
`perform the phone number selection as specified as claim 36. Since application has not
`
`disclosed that the input order solves ant problem or is for any particular purpose and it
`
`appears that the invention would perform equally well with the order of those touch
`
`input.
`
`As to claims 37 and 38, Wilson discloses the method as recited in claim 36,
`
`before the step of receiving the second touch input, further comprising the steps of:
`
`receiving a
`
`fourth
`
`touch
`
`input
`
`from
`
`the user on
`
`the
`
`IP
`
`telephone; and
`
`in response to receipt of the fourth touch input, scrolling through the first list.
`
`and the method as recited in claim 37, before the step of receiving the third touch input,
`
`further comprising the steps of receiving a fifth touch input from the user on the IP
`
`telephone; and in response to receipt of the fifth touch input, scrolling through the
`
`second list [ Col. 8, Lines 7-15, the user can scroll the list and select the phone
`
`number from the list. It is well known that a person in the art to design the keypad
`
`RingCentral Ex-1002, p. 20
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`Application/Control Number: 10/447,607
`Art Unit: 2616
`
`Page 20
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`to make a scrolling list and make a selection from a phone list or to choose
`
`different list by pressing the keypad].
`
`As to claim 39, Wilson discloses the method as recited in claim 36, wherein the
`
`step of displaying on the display on the 1 p telephone the second list further includes the
`
`steps of:
`
`