Interview Summary
`
`Application No.
`
`12/798,995
`Examiner
`
`KIET DOAN
`
`Applicant(s)
`
`CHEUNG ET AL.
`Art Unit
`
`2617
`
`All participants (applicant, applicant’s representative, PTO personnel):
`
`KIET DOAN.
`
`(2) Peter Tong.
`
`Date of Interview: 15 July 2011.
`
`(3).
`
`(4).
`
`Type: a)^ Telephonic b)Q Video Conference
`c)Q Personal [copy given to: !)□ applicant
`
`2)LZI applicant’s representative]
`
`Exhibit shown or demonstration conducted: d)Q Yes
`If Yes, brief description:.
`
`e)|ZI No.
`
`Claim(s) discussed: 1_.
`
`Identification of prior art discussed:
`
`Agreement with respect to the claims f)D was reached. g)l3 was not reached. h)Q N/A.
`
`Substance of Interview including description of the general nature of what was agreed to if an agreement was
`reached, or any other comments: Discussed with Applicant’s Representative Peter Tong regarding claim 1 and the
`examiner making suggestion in order to advance application toward to expedite. However, the applicant need to
`review the suggestion and must formally filed a response to an office action for further consideration. .
`
`(A fuller description, if necessary, and a copy of the amendments which the examiner agreed would render the claims
`allowable, if available, must be attached. Also, where no copy of the amendments that would render the claims
`allowable is available, a summary thereof must be attached.)
`
`THE FORMAL WRITTEN REPLY TO THE LAST OFFICE ACTION MUST INCLUDE THE SUBSTANCE OF THE
`INTERVIEW. (See MPEP Section 713.04). If a reply to the last Office action has already been filed, APPLICANT IS
`GIVEN A NON-EXTENDABLE PERIOD OF THE LONGER OF ONE MONTH OR THIRTY DAYS FROM THIS
`INTERVIEW DATE, OR THE MAILING DATE OF THIS INTERVIEW SUMMARY FORM, WHICHEVER IS LATER, TO
`FILE A STATEMENT OF THE SUBSTANCE OF THE INTERVIEW. See Summary of Record of Interview
`requirements on reverse side or on attached sheet.
`
`/Kiel Doan/
`Primary Examiner, Art Unit 2617
`U.S. Patent and Trademark Office
`PTOL-413 (Rev. 04-03)
`
`Interview Summary
`
`Paper No. 20110715
`
`Epic Games Ex. 1030
`Page 130
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`

`

`Manual of Patent Examining Procedure (MPEP), Section 713.04, Substance of Interview Must be Made of Record
`A complete written statement as to the substance of any face-to-face, video conference, or telephone interview with regard to an application must be made of record in the
`application whether or not an agreement with the examiner was reached at the interview.
`
`Summary of Record of Interview Requirements
`
`Title 37 Code of Federal Regulations (CFR) § 1.133 Interviews
`Paragraph (b)
`
`In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as
`warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office action as specified in §§ 1.111, 1.135. (35 U.S.C. 132)
`
`37 CFR §1.2 Business to be transacted in writing.
`All business with the Patent or Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and
`Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to
`any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.
`
`The action of the Patent and Trademark Office cannot be based exclusively on the written record in the Office if that record is itself
`incomplete through the failure to record the substance of interviews.
`it is the responsibility of the applicant or the attorney or agent to make the substance of an interview of record in the application file, unless
`the examiner indicates he or she will do so. It is the examiner’s responsibility to see that such a record is made and to correct material inaccuracies
`which bear directly on the question of patentability.
`
`Examiners must complete an Interview Summary Form for each interview held where a matter of substance has been discussed during the
`interview by checking the appropriate boxes and filling in the blanks. Discussions regarding only procedural matters, directed solely to restriction
`requirements for which interview recordation is otherwise provided for in Section 812.01 of the Manual of Patent Examining Procedure, or pointing
`out typographical errors or unreadable script in Office actions or the like, are excluded from the interview recordation procedures below. Where the
`substance of an interview is completely recorded in an Examiners Amendment, no separate Interview Summary Record is required.
`
`The Interview Summary Form shall be given an appropriate Paper No., placed in the right hand portion of the file, and listed on the
`“Contents” section of the file wrapper. In a personal interview, a duplicate of the Form is given to the applicant (or attorney or agent) at the
`conclusion of the interview. In the case of a telephone or video-conference interview, the copy is mailed to the applicant’s correspondence address
`either with or prior to the next official communication. If additional correspondence from the examiner is not likely before an allowance or if other
`circumstances dictate, the Form should be mailed promptly after the interview rather than with the next official communication.
`
`The Form provides for recordation of the following information:
`-Application Number (Series Code and Serial Number)
`- Name of applicant
`- Name of examiner
`- Date of interview
`-Type of interview (telephonic, video-conference, or personal)
`-Name of participant(s) (applicant, attorney or agent, examiner, other PTO personnel, etc.)
`-An indication whether or not an exhibit was shown or a demonstration conducted
`-An identification of the specific prior art discussed
`An indication whether an agreement was reached and if so, a description of the general nature of the agreement (may be by
`attachment of a copy of amendments or claims agreed as being allowable). Note: Agreement as to allowability is tentative and does
`not restrict further action by the examiner to the contrary.
`-The signature of the examiner who conducted the interview (if Form is not an attachment to a signed Office action)
`
`It is desirable that the examiner orally remind the applicant of his or her obligation to record the substance of the interview of each case. It
`should be noted, however, that the Interview Summary Form will not normally be considered a complete and proper recordation of the interview
`unless it includes, or is supplemented by the applicant or the examiner to include, all of the applicable items required below concerning the
`substance of the interview.
`A complete and proper recordation of the substance of any interview should include at least the following applicable items:
`1) A brief description of the nature of any exhibit shown or any demonstration conducted,
`2) an identification of the claims discussed,
`3) an identification of the specific prior art discussed,
`4) an identification of the principal proposed amendments of a substantive nature discussed, unless these are already described on the
`Interview Summary Form completed by the Examiner,
`5) a brief identification of the general thrust of the principal arguments presented to the examine:
`(The identification of arguments need not be lengthy or elaborate. A verbatim or highly detailed description of the arguments is not
`required. The identification of the arguments is sufficient if the general nature or thrust of the principal arguments made to the
`examiner can be understood in the context of the application file. Of course, the applicant may desire to emphasize and fully
`describe those arguments which he or she feels were or might be persuasive to the examiner.)
`6) a general indication of any other pertinent matters discussed, and
`7) if appropriate, the general results or outcome of the interview unless already described in the Interview Summary Form completed by
`the examiner.
`Examiners are expected to carefully review the applicant’s record of the substance of an interview. If the record is not complete and
`accurate, the examiner will give the applicant an extendable one month time period to correct the record.
`
`Examiner to Check for Accuracy
`
`if the claims are allowable for other reasons of record, the examiner should send a letter setting forth the examiner’s version of the
`statement attributed to him or her. If the record is complete and accurate, the examiner should place the indication, “Interview Record OK” on the
`paper recording the substance of the interview along with the date and the examiner’s initials.
`
`Epic Games Ex. 1030
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re application of: CHEUNG et al.
`
`Attorney Docket No.: IPVMCP02C1
`
`Application No.: 12/798,995
`
`Examiner: DOAN, KIET M.
`
`Filed: April 14, 2010
`
`Group: 2617
`
`Title: SYSTEMS AND PROCESSES TO
`MANAGE MULTIPLE MODES OF
`COMMUNICATION
`
`AMENDMENT A
`
`Mail Stop
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`In response to the Office Action dated April 11, 2011, please amend the above­
`identified patent application as follows:
`
`Amendments to the Specification are reflected on page 2 of this paper.
`Amendments to the Claims are reflected in the listing of claims which begins on page
`3 of this paper.
`Remarks/Arguments begin on page 9 of this paper»
`
`Appln. No. 12/798,995
`
`1
`
`Docket No. IPVMCP02C1
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`Epic Games Ex. 1030
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`

`

`Amendments to the Specification:
`
`Please AMEND paragraphs [0001] on page 1, as follows:
`
`[0001] This application is a continuation of U.S. Patent Application 11/452,115,
`filed June 12, 2006, now U.S. Patent No. 7,729,688, and entitled “SYSTEMS AND
`PROCESSES TO MANAGE MULTIPLE MODES OF COMMUNICATION”, which is
`hereby incorporated herein by reference, which application is a continuation-in-part
`application of U.S. Patent Application 11/006,343, filed December 7, 2004, now U.S-
`Patent No. 7,116,976, and entitled “ADAPTABLE COMMUNICATION TECHNIQUES
`FOR ELECTRONIC DEVICES,” which is hereby incorporated herein by reference, which
`claims priority to U.S. Provisional Patent Application No. 60/527,565, filed December 8,
`2003, entitled “ADAPTABLE COMMUNICATION TECHNIQUES FOR ELECTRONIC
`DEVICES,” and which is hereby incorporated herein by reference.
`
`Appln. No. 12/798,995
`
`2
`
`Docket No. IPVMCP02C1
`
`Epic Games Ex. 1030
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`

`

`Amendments to the Claims:
`The listing of claims will replace all prior versions, and listings, of claims in the
`application:
`
`Listing of Claims:
`
`(Currently amended) A non-transitory computer-implemented method to manage
`1.
`the communication of a user via a server based on a communication protocol, in view of
`a person, using a first device, trying to electronically convey a message from the first
`device to a second device of the user, the method comprising:
`receiving, by the server, the message from the first device;
`identifying the status of the user;
`dentifying, by the server, the identity of the person;
`identifying the urgency of-th-e-message-;
`deiewi+R-iflg-the-aeeess-pröwty^4he-pefsei4-based-^4he-peiwR^-4defl#tyi-and
`setting, by the server, a process for te-manage the message using one or more
`rules, and in view of the based on at least a status of the user stored at the second
`device, and an access priority the access priority of the person also stored at the
`second device, the access priority depending on the identity of the person and the
`urgency of the message^
`wherein the server is aware of contact information of the person,
`wherein even if the process includes transmitting the message to the second
`device via contact information of the user, the server does not provide the contact
`information of the person to the second device to inhibit the user from sending
`messages to the person without via the server, and the server also does not provide the
`contact information of the user to the first device to inhibit the person from sending
`messages to the user without via the server, and
`wherein the server can be restricted from accessing the status of the user from the
`second device.
`
`Appln. No. 12/798,995
`
`3
`
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`

`(Currently amended) [[A]1 The non-transitory computer-implemented method as
`2.
`recited in claim 1, wherein the status of the user depends on the current activity or
`location of the user, or the current time, or the status of the user is defined by-the user.
`
`(Currently amended) [[A]] The non-transitory computer-implemented method as
`3.
`recited in claim 1, wherein the access priority of the person is defined set by the usery-ar
`is^et^epef^4g-^i4hie-user-&-rea6ti9!A-tewardSr-a-pHe-RR4essage4FGm4he-per-söR.
`
`(Currently amended) [[A]] The non-transitory computer-implemented method as
`4.
`recited in claim 1, wherein the process for the message also depends on an the urgency
`level of the message, which is set by the person.
`
`(Currently amended) [[A]] The non-transitory computer-implemented method as
`5.
`recited in claim 1,
`wherein the method depends on the mode of communication of the message,
`
`and
`
`wherein the mode of communication is selected from the list of a mobile phone,
`an office phone, a home phone, a mobile SMS from a mobile phone or PDA, a pager
`from a mobile phone or PDA, a home/office SMS, mobile online chat, home online chat,
`a voice mail with/without instant notification, an office fax, a home fax, a mobile email,
`and an email.
`
`(Currently amended) [[A]] The non-transitory computer-implemented method as
`6.
`recited in claim 1,
`wherein the second device is user receives the message through a handheld
`device, which is used to set the status of the user and
`wherein the status of the user is defined by the user using the handheld device.
`
`(Currently amended) [[A]] The non-transitory computer-implemented method as
`7.
`recited in claim 1,
`
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`
`Docket No. IPVMCP02C1
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`

`

`wherein the server can be restricted from accessing the access priority of the
`person from the second device.
`whepeifl-t+le^^1essage^e--e4eetrwieal4y^Gweyed--based-O1MfrteFAe■bpr-Gtee■Gk4hre■ugh•
`a website, and
`wherein though the method allows the user to receive the message, the person is
`neb-aware of the contact information of the user to prevent the person from directly
`aecessing-tbe-u-ser-without going through the website, or the user is not awape-ef-tbe
`contact information of the person to prevent-tbe-user-f-reffi-di-r-eeUy-ac-Gessi-Rg-th-e-per-seR
`without going through the website.
`
`(Currently amended) [[A]] The non-transitory computer-implemented method as
`8.
`recited in claim [[1]] 4, wherein the server can be restricted from accessing the access
`priority of the person from the second device.
`wherein the message is electronically conveyed based-en-l-nteffleTprotee-el
`through-a-website^-aRd
`wbefefR-y^e-defffied-aeeess-pReRly-ef-the-peFseR-is^tefed-at-tbe-websiteT-GRS
`st&r-ed in a private database under the user-s-eeRtr-ek
`
`(Currently amended) [[A]] The non-transitory computer-implemented method as
`9.
`recited in claim 1,
`wherein the message is electronically conveyed based on Internet protocol
`through a website,
`wherein the website server keeps an electronic calendar of the user, and
`wherein an appointment is automatically set by the server for the user with the
`person in view of information in the calendar.
`
`(Currently amended) [[A]] The non-transitory computer-implemented method as
`10.
`recited in claim 1, wber-ein-the message is electrenieally-eonveyed based on Internet
`protocol through a website-wherein the access priority of the person depends on a
`user’s reaction towards a prior message from the person.
`
`Appln. No. 12/798,995
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`5
`
`Docket No. IPVMCP02C1
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`Epic Games Ex. 1030
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`

`

`11-20. (Cancelled)
`
`(New) A server based on a communication protocol for managing the
`21.
`communication of a user, in view of a person, using a first device, trying to electronically
`convey a message from the first device to a second device of the user, the server
`comprising:
`at least one computing device; and
`at least one storage device,
`wherein the at least one computing device is configured to
`receive the message from the first device;
`dentify the identity of the person; and
`set a process for the message using one or more rules based on at least
`a status of the user stored at the second device, and an access priority of the
`person also stored at the second device, the access priority depending on the
`identity of the person,
`wherein the server is aware of contact information of the person,
`wherein even if the process includes transmitting the message to the second
`device via contact information of the user, the server does not provide the contact
`information of the person to the second device to inhibit the user from sending
`messages to the person without via the server, and the server also does not provide the
`contact information of the user to the first device to inhibit the person from sending
`messages to the user without via the server, and
`wherein the server can be restricted from accessing the status of the user from the
`second device.
`
`(New) A server as recited in claim 21, wherein the process for the message also
`22.
`depends on an urgency level of the message, which is set by the person.
`
`(New) A server as recited in claim 21, wherein the server can be restricted from
`23.
`accessing the access priority from the second device.
`
`Appln. No. 12/798,995
`
`6
`
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`

`

`24.
`
`(New) A server as recited in claim 21,
`wherein the process for the message also depends the mode of communication
`of the message, and
`wherein the mode of communication is selected from the list of a mobile phone,
`an office phone, a home phone, a mobile SMS from a mobile phone or PDA, a pager
`from a mobile phone or PDA, a home/office SMS, mobile online chat, home online chat,
`a voice mail with/without instant notification, an office fax, a home fax, a mobile email,
`and an email.
`
`(New) A server as recited in claim 21, wherein the server is configured to keep
`25.
`an electronic calendar of the user, and to automatically set an appointment for the user
`with the person in view of information in the calendar.
`
`(New) A non-transitory computer readable medium including at least executable
`26.
`computer program code tangibly stored therein for manage the communication of a user
`via a server based on a communication protocol, in view of a person, using a first
`device, trying to electronically convey a message from the first device to a second
`device of the user, said computer readable medium comprising:
`computer program code for receiving, by the server, the message from the first
`device;
`computer program code for identifying the identity of the person; and
`computer program code for setting a process for the message using one or more
`rules based on at least a status of the user stored at the second device, and an access
`priority of the person also stored at the second device, the access priority depending on
`the identity of the person,
`wherein the server is aware of contact information of the person,
`wherein even if the process includes transmitting the message to the second
`device via contact information of the user, the computer program code does not provide
`the contact information of the person to the second device to inhibit the user from
`sending messages to the person without via the server, and the computer program code
`
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`7
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`

`

`also does not provide the contact information of the user to the first device to inhibit the
`person from sending messages to the user without via the server, and
`wherein the server can be restricted from accessing the status of the user from the
`second device.
`
`(New) A non-transitory computer readable medium as recited in claim 26,
`27.
`wherein the process for the message also depends on an urgency level of the message,
`which is set by the person.
`
`(New) A non-transitory computer readable medium as recited in claim 26,
`28.
`wherein the server can be restricted from accessing the access priority from the second
`device.
`
`29.
`
`(New) A non-transitory computer readable medium as recited in claim 26,
`wherein the process for the message also depends the mode of communication
`of the message, and
`wherein the mode of communication is selected from the list of a mobile phone,
`an office phone, a home phone, a mobile SMS from a mobile phone or PDA, a pager
`from a mobile phone or PDA, a home/office SMS, mobile online chat, home online chat,
`a voice mail with/without instant notification, an office fax, a home fax, a mobile email,
`and an email.
`
`(New) A non-transitory computer readable medium as recited in claim 26,
`30.
`wherein said computer readable medium further comprises computer program code to
`keep an electronic calendar of the user, and to automatically set an appointment for the
`user with the person in view of information in the calendar.
`
`Appln. No. 12/798,995
`
`8
`
`Docket No. IPVMCP02C1
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`

`

`REMARKS
`
`Applicants previously presented claims 1-17, 19 and 20 for examination. In the
`above-identified Office Action, the Examiner has rejected all the claims. By this
`amendment, Applicants have amended claims 1-10 to further clarify the subject matter
`regarded as the invention; canceled claims 11-17, 19 and 20 without prejudice or
`disclaimer of the embodiments defined therein; and added claims 21-30. Accordingly,
`claims 1-10, and 21-30 remain pending. Applicants respectfully request that the
`Examiner reconsider the application in light of the amendments and the remarks
`expressed herein.
`
`Interview Summary
`Applicants appreciate the Examiner for the courtesies extended to Applicants’
`representative at the July 15, 2011 interview. At the interview, the undersigned
`explained various patentbly distinct characteristics of the claimed invention. No specific
`agreements have been reached.
`
`Claim Objection
`Claims 2-10 were objected to due to informalities. Applicants have corrected the
`informalities, following the suggestions provided by the Examiner. Accordingly,
`Applicants respectfully request that the objections be reconsidered and withdrawn.
`
`112 Rejection
`Claim 1 was rejected under 35 U.S.C. 112, 2nd paragraph, as being indefinite
`because “the use and the person” allegedly lacked antecedent basis. Applicants could
`not find the term “the use” in the claim, and presume the term should have been “the
`user.” Applicants submit that antecedent bases for both terms, “the user” and “the
`person,” can be found in the preamble of the claim. Accordingly, Applicants respectfully
`request that the 112 rejection of claim 1 be reconsidered and withdrawn.
`
`Appln. No. 12/798,995
`
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`101 Rejection
`Claims 1-10 were rejected under 35 U.S.C. 101 because the claimed invention is
`directed to non-statutory subject matter because “A computer-implement...” allegedly
`covered both transitory and non-transitory limitations. Applicants respectfully disagree.
`However, to expedite prosecution, Applicants have followed the Examiner’s
`suggestions, and have amended the claims by adding “non-transitory” between “A” and
`“computer-implemented.” Accordingly, Applicants respectfully request that the 101
`rejection of claims 1-10 be reconsidered and withdrawn.
`
`102 Rejection
`Claims 1-6 were rejected under 35 U.S.C. 102(e) as being anticipated by Pepper
`et al. (US 5,930,700, hereinafter “Pepper”). Applicants respectfully disagree.
`As acknowledged on page 9 of the Office Action, Pepper is silent on the following
`limitations:
`
`though the method allows the user to receive the message, the person is not
`aware of the contact information of the user to prevent the person from directly
`accessing the user without going through the website, or the user is not aware of
`the contact information of the person to prevent the user from directly accessing
`the person without going through the website.
`
`Limitations similar to the above are included in independent claim 1, as shown in the
`following:
`
`even if the process includes transmitting the message to the second device via
`contact irtformatfen of the user, the server does not provide the contact
`information of the person to the second device to inhibit the user from sending
`messages to the person without via the server, and the server also does not
`provide the contact information of the user to the first device to inhibit the person
`from sending messages to the user without via the server.
`
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`10
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`

`Accordingly, claim 1, and its dependent claims 2-6, are not anticipated by Pepper, and
`Applicants respectfully request that the 102 rejections be reconsidered and withdrawn.
`
`103 Rejection
`Claims 7-10 were rejected under 35 U.S.C. 103(a) as being unpatentable over
`Pepper in view of Tran (US 2003/0191814 A1). Applicants respectfully disagree.
`Pepper pertains to screening and directing calls. According to Pepper, Pepper’s
`system allows a subscriber to have his incoming telephone calls screened to identify
`calls of high importance to the subscribers. By entering schedule information into an
`appointment calendar, and by entering client’s information into the name and telephone
`number database, the subscriber indicates how to be located so that important calls will
`reach him immediately. These databases also tell the system which clients are of high
`priority to the subscriber so that lower priority calls can be directed to a voice mail
`system for access at the subscriber's convenience or routed to an attendant for action.
`As acknowledged in the Office Action and as explained above, Pepper is silent
`on the following limitations:
`
`even if the process includes transmitting the message to the second device via
`contact information of the user, the server does not provide the contact
`information of the person to the second device to inhibit the user from sending
`messages to the person without via the server, and the server also does not
`provide the contact information of the user to the first device to inhibit the person
`from sending messages to the user without via the server.
`
`To remedy at least the above deficiency, the Office Action introduced Tran. Tran
`pertains to personalization of services provided to wireless device users. According to
`Tran, a portal server is coupled to service providers for providing content to wireless­
`device users. An interface is provided that allows for communicating with the service
`providers. Questions are specified that can be used for obtaining information about the
`wireless device users. Upon receiving a request from a service provider that includes at
`least one question and that identifies a wireless device user, the portal server
`
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`determines a response to the question. The response is then sent to the requesting
`service provider.
`The Office Action argued that Tran teaches the above missing limitations of
`Pepper in its paragraphs [0015], [0048-0049], and [0051-0054]. Applicants respectfully
`disagree. To support its position, the Office Action treated “service provider” in Tran to
`be the same as “person” in Applicants’ claims. To simplify the argument, in the following
`discussion, Applicants would temporarily adopt the Office Action’s position and treat
`“service provider” in Tran to be “person.”
`In its paragraph 15, Tran generally teaches carefully controlling the questions
`that can be asked by the service provider to prevent divulging private information about
`the users to the service provider.
`In its paragraphs 48-49, Trans generally teaches each service provider obtains
`from a portal server, the particular needs of the communication device of each user,
`together with the preferred services and desktop preferences of the users. Then based
`on the obtained information, each service provider complies with the users.
`In its paragraphs 51-54, Trans generally teaches the users enter their profile
`information into the portal server. If a user has two or more communication devices, the
`user can indicate preferences between or among them. “For example, the user can
`indicate that all incoming email messages are to go to his desktop computer unless the
`incoming email is from his boss.”
`Tran focuses on personalization of services provided by service providers. To
`personalize services, the service providers obtain information regarding the users. Tran
`provides a portal server, which allows the service providers to get “all available private
`and non-private information relating to the wireless-device user”, and not to get “private
`information” of the wireless-device user (paragraph 15). To illustrate, Tran gives the
`following example in its paragraph 71:
`
`For example, a service provider could ask whether a particular wireless-device
`user would be likely to be interested in a magazine subscription for a technology-
`related magazine. The apparatus and method of the present invention allows for
`the analysis of confidential information available to the wireless portal server
`
`Appln. No. 12/798,995
`
`12
`
`Docket No. IPVMCP02C1
`
`Epic Games Ex. 1030
`Page 143
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`

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`such as information from profile service 306, from session service 308 and
`information from providers 320 for determining a response.
`
`Then Tran continues:
`
`The response does not divulge the confidential information used for determining
`the response. Accordingly, the information needs of the requesting provider are
`met while maintaining confidentiality of any and all private information used to
`determine the response.
`
`It is unclear how Tran differentiates between “private information” and “available private
`information.” Applicants submit that one way to differentiate may be that “private
`information” at the portal server is “available private information,” and “private
`information” not available at the portal server is “private information.”
`Independent of how “private information” is defined, Tran does not seem to teach
`or suggest not disclosing contact information of the user to the service provider. On the
`contrary, contact information of the user seems to be made “available” at the portal
`server as shown in its paragraph 51 as follows, with emphasis added:
`
`communication-device data is entered in the wireless-network user's user profile
`(profile service 306). More particularly, in one embodiment, the wireless-network
`user 301 accesses (through the desktop service 310) web pages that are forms
`requesting information relating to communication devices that can be used to
`reach the wireless-network user 301. The wireless-network user then fills out the
`forms, indicating the type of device, any associated phone number, or other
`information necessary to communicate with the communication devices.
`
`Based on the above, the portal server seems to have the contact information of the user
`(such as phone numbers). If information present in the portal server is considered as
`“available,” then contact information of the user would be available information. Such
`information would be made available to the service providers.
`
`Appln. No. 12/798,995
`
`13
`
`Docket No. IPVMCP02C1
`
`Epic Games Ex. 1030
`Page 144
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`

`

`Based on the above analysis, Tran seems to teach its portal server provides the
`contact information of the wireless users to the service providers, which is opposite to
`Applicants’ claimed invention.
`Not only that Tran does not teach or suggest its portal server does not provide
`contact information of the user to the service providers, Tran also does not teach or
`suggest:
`
`its portal server not providing the contact information of the service provider to
`the user.
`
`Applicants submit that not providing the contact information of the service provider to
`the wireless user is counter to the teaching of Tran. For example, in the second
`sentence of its summary, Tran teaches:
`
`More particularly, embodiments of the present invention provide wireless-device
`users access to information and services offered by service providers.
`
`Tran teaches its service providers providing services to users. Tran does not seem to
`teach or suggest not providing contact information of the service providers to the
`wireless users to inhibit direct contact.
`In addition to the above deficiencies, in both Tran and Pepp