Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 1 of 10
`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 1 of 10
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`EXHIBIT 1
`EXHIBIT 1
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`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 2 of 10
`pase 6-g0-cv-0 272-ADA
`cument 1064 Filed 11/15/23 Page 2 of 10
`NITED STATES
`PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`90/019, 124
`
`10/17/2022
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`15942282
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`071994-0099
`
`2064
`
`THORPE NORTH & WESTERN,LLP.
`P.O. Box 1219
`SANDY, UT 84091-1219
`
`ENGLAND, DAVID E
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`ART UNIT
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`3992
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`MAIL DATE
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`11/09/2023
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`PAPER NUMBER
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`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
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`

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`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 3 of 10
`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 3 of 10
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`PERKINS COIE LLP - SEA GENERAL
`PATENT-SEA P.O. BOX 1247
`
`SEATTLE, WA 98111-1247
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`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
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`REEXAMINATION CONTROL NO. 90/019, 124 .
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`PATENT UNDER REEXAMINATION 10278606.
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`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the aboveidentified exparte reexamination proceeding (87 CFR 1.550(f)).
`
`Wherethis copy is supplied after the reply by requester, 37 CFR 1.535, or the timefor filing a
`reply has passed, no submission on behalf of the evparfe reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`

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`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 4 of 10
`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 4 of 10
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`Patent Under Reexamination
`Control No.
`10218606
`90/019, 124
`Notice ofintent to /ssue
`
`
`Ex Parte Reexamination Certificate\Examiner Art Unit AIA Status
`DAVID E ENGLAND
`3992
`No
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`
`1.
`
`Prosecution on the merits is (or remains) closed in this exgarfe reexamination proceeding. This proceeding is
`subject to reopening at the initiative of the Office or upon petition. C4 37 CFR 1.313(a). A Certificate will be
`issued in view of
`(a)¥)Patent owner's communication(s) filed: 07/24/2023.
`(b) (J Patent owner'sfailure to file an appropriate timely response to the Office action mailed:
`(c) () Patent owner'sfailure to timely file an Appeal Brief (837 CFR 41.31).
`(d) (J The decision on appeal by the () Board of Patent Appeals and Interferences (j Court dated
`(e) 2 Other:
`.
`The Reexamination Certificate will indicate the following:
`a) Change in the Specification: 0 Yes
`([JNo
`b) Change in the Drawing(s):
`(J Yes
`(No
`c) Status of the Claim(s):
`(1) Patent claim(s) confirmed: 1,3-9, 11, 13-16, 18-24, 26, 27, 29, 30, 32, 35 - 37, 41, 42, 44.
`(2) Patent claim(s) amended (including dependent on amended claim(s)):
`(3) Patent claim(s) canceled:
`.
`(4) Newly presented claim(s) patentable: 50-57.
`Newly presented canceled claims:
`(5)
`Patent claim(s) (] previously (J currently disclaimed:
`(6)
`(7) Patent claim(s) not subject to reexamination: 2,10,12,17,25,28,31,33-34,38-40,43 and 45-49.
`. OA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`.
`.
`Note the attached statement of reasons for patentability and/or confirmation. Any comments considered
`necessary by patent owner regarding reasonsfor patentability and/or confirmation must be submitted promptly
`to avoid processing delays. Such submission(s) should be labeled: "Comments On Statement of Reasonsfor
`Patentability and/or Confirmation."
`
`
`
`))
`
`(( (
`
`. EJNote attached NOTICE OF REFERENCES CITED (PTO-892).
`
`. ONote attached LIST OF REFERENCES CITED (PTO/SB/08 or PTO/SB/08substitute).
`
`.
`
`.
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`£1) The drawing correction requestfiled on
`
`is: Clapproved (Jdisapproved.
`
`(Acknowledgment is madeofthe priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`a) O All
`b) () Some*
`c) CJNone of the certified copies have
`(beenreceived.
`Cnot beenreceived.
`(beenfiled in Application No.
`(Cibeenfiled in reexamination Control No.
`Cbeenreceived bythe International Bureau in PCT Application No.
`
`“ Certified copies not received:
`
`9. [Note attached Examiner's Amendment.
`
`10.2 Note attached Interview Summary (PTO-474).
`
`11.4 Other: .
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`All correspondencerelating to this reexamination proceeding should be directed to the Central Reexamination
`Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`/DAVID E ENGLAND/
`Primary Examiner, Art Unit 3992
`
`requester)
`cc: Requester (if third party
`U.S. Patent and Trademark Office
`PTOL-469 (Rev. 08-13)
`Notice of Intent to Issue Ex Parte Reexamination Certificate
`
`Part of Paper No. 20231024
`
`

`

`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 5 of 10
`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 5 of 10
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`Application/Control Number: 90/019,124
`Art Unit: 3992
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`Page 2
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`NOTICE OF INTENT TO ISSUE AN EXPARTE REEXAMINATION CERTIFICATE
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`1.
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`This action is in response to the POfiling of a Responses, dated 09/29/2023 and
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`07/24/2023, in responseto the Notification of Defective Papers in Reexam dated 09/22/2023 and
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`the Non-Final Office action, filed 04/24/2023, respectively, with regards to claims 1, 3 — 9, 11,
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`13 — 16, 18 — 24, 26, 27, 29, 30, 32, 35 — 37, 41, 42, 44, and newly added claims 50 — 57 of US
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`Patent No. 10,218,606 to Perreault et al., hereinafter “the ‘606 Patent’.
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`2.
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`The present application is being examined underthe pre-AJA first to invent provisions.
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`History and Status of Proceeding
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`3.
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`A request for ex parte reexamination of claims 1, 3 — 9, 11, 13 — 16, 18 — 24, 26, 27, 29,
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`30, 32, 35 — 37, 41, 42, and 44 of the “606 Patent wasfiled 06/30/2022.
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`4.
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`5.
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`An Ordergranting the request for ex parte reexamination was mailed on 11/25/2022.
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`A Non-final Office action was mailed on 04/24/2023, rejecting claims 1, 3 —9, 11, 13 —
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`16, 18 — 24, 26, 27, 29, 30, 32, 35 — 37, 41, 42, and 44.
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`6.
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`A Responseto the Non-final Office action wasfiled 07/24/2023 along with an
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`amendmentto the claims adding claims 50 — 57 and a Declaration of Dr. Danijela Cabric
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`Under 37 C.F.R. $1.132.
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`7.
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`An interview was conducted 08/29/2023 to discuss the limitations in claim 1, see
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`Examiner’s Interview summary dated 09/22/2023, and PO’s Interview Summary dated
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`09/29/2023.
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`8.
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`A Notification of Defective Paper in a Reexam wasfiled 09/22/2023.
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`

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`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 6 of 10
`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 6 of 10
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`Application/Control Number: 90/019,124
`Art Unit: 3992
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`Page 3
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`9.
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`Another Response by the PO wasfiled 09/29/2023 correcting the errors stated in the
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`Notification of Defective Paper in a Reexam.
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`Prior Art Cited in the Proceeding
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`10.
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`The following patents and printed publications were utilized in the rejection of the
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`claims:
`
`a.
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`b.
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`Cc.
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`d.
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`USPatent No. 7,016,343 to Mermelet al., (hereinafter “Mermel”).
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`USPatent No. 7,103,168 to Bedingfield, Sr.et al., (hereinafter “Bedingfield’”).
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`US Patent No. 7,412,049 to Kochet al., (hereinafter “Koch”).
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`International Telecommunication Unit Telecommunication Standardization Sector
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`(“ITU-T”), “H.323: Packet-based multimedia communications systems,” November
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`2000, (hereinafter “H.323 Standard).
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`11.
`
`The Declaration of Dr. Daniela Cabric Under 37 C.F.R. $1.132 has been considered.
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`Status of Reexamination
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`12.
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`The following groundsof rejection were set forth in the Non-Final Office action mailed
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`on 04/24/2023:
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`13.
`
`Claim(s) 1,3 —5, 8,9, 11, 13 — 16, 18 — 21, 23, 24, 26, 27, 29, 30, 32, 36, 37, and 44
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`is/are rejected under 35 U.S.C. 103(a) as being rejected by Mermel, the H.323 Standard, and in
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`view of Bedingfield.
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`14.
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`Claim(s) 6, 7, 20, 22, 35, 37, 41, and 42 is/are rejected under 35 U.S.C. 103(a) as being
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`rejected by Mermel, the H.323 Standard, Bedingfield, and in further view of Koch.
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`

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`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 7 of 10
`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 7 of 10
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`Application/Control Number: 90/019,124
`Art Unit: 3992
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`Page 4
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`STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
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`15.
`
`The Reasons for Confirmation of the claims are as stated by the Patent Owner,
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`hereinafter “PO”, their response to the Non-Final Office action.
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`16.
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`Theprior art of record alone or in combination doesnot disclose the limitations of claims
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`1,3-—9, 11, 13 — 16, 18 — 24, 26, 27, 29, 30, 32, 35 — 37, 41, 42, 44, and 50 — 57 which are under
`
`reexamination.
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`17.
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`The prior art of Mermel, the H.323 Standard, Bedingfield, and Koch, in combination,
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`does not disclose “a second participant identifier associated with the second participant device, in
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`responseto initiation of a communication from thefirst participant device to the second
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`participant device...; processing the secondparticipant identifier and the at least onefirst
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`attribute, using the at least one processor, to produce a new secondparticipant identifier based on
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`at least one match between the second participant identifier and the at least one first participant
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`attribute”.
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`18.
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`In the Response, dated 07/24/2023, hereinafter the “Response”, the PO specifically
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`argues 5 point, see Response, p. 22. Of these arguments, the Examiner agrees with arguments 1
`
`and 3.
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`19.
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`Upon further review ofthe prior art and the analysis given by the Declaration by Dr.
`
`Danijela Cabric it can be seen that Mermel’s system does not combine with Bedingfield in a way
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`that Bedingfield’s alias for a second participant would be used in Mermelsince the caller in
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`Mermeldoes not know whothe second participant associated with the second participant device
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`would be. As stated in the response:
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`

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`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 8 of 10
`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 8 of 10
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`Application/Control Number: 90/019,124
`Art Unit: 3992
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`Page 5
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`“Mermel discloses how to use already-existing PSTN-based contact (call center)
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`software on an H.323 network. EX2010 (Cabric Declaration), J 32. A key focusis
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`automatic call distribution (ACD) for 1-800 numbers, which is a process that results in
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`running custom call center scripts for selecting endpoints or destinations, e.g., based on
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`time of day, day of the week, lookups, percentallocation, call context, etc. Mermel at 3:1-
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`4, 3:48-51, 6:26-37, Fig. 4; EX2010, 7, 33, 40, 58. In other words, the "second
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`participant” and the "second participant device” is unknown, therefore the "second
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`participantidentifier" does not identify the "second participant” when the call is made.
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`Put another way, when a 1-800 numberis called, the caller does not know who they are
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`calling; the incoming call is passed on-the-fly to a destination based on ACDscripts, thus
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`the "1-800" numberinformation does notidentify a "participant" or a specific
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`"participant device". See Mermel, Figs. 6 and 7. As Dr. Cabric explains, by way of
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`analogy, it's like the difference between making an "appointment" with your doctor
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`("second participant") or, instead, walking into a medical clinic where you wait to be
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`assigned to an unknown doctor. In the second case, you would not consider that a
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`"doctor's appointment”, since you are assigned one on-the-fly. In the opinion of Dr.
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`Cabric, in the context of the examples relied upon in the Office action, Mermelrelates to
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`agent/endpoint selection, which implies that the called number (“destinationInfo”field)
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`at the time the call is placed is not information that “identifies a participant or
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`participant’s device”’.”
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`20.
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`Though Bedingfield does disclose an alias as pointed out by the PO and Non-final office
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`action, there would be no reason to combine the two inventions since Mermel does not know the
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`second participant, only the system the participant may belocated after the call is already
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`

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`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 9 of 10
`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 9 of 10
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`Application/Control Number: 90/019,124
`Art Unit: 3992
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`Page 6
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`established. Therefore, there would be no reason to combinethe inventions since the system of
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`Mermeldoes not specifically need to identify the second participant since the second participant
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`is not even knownatthe time of the call and Bedingfield’s invention needs to know the end user
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`participant in order to determine a secondparticipant identifier and to produce a new second
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`participant identifier.
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`21.
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`Claims 1,3-—9, 11, 13-16, 18 — 24, 26, 27, 29, 30, 32, 35 — 37, 41, 42, 44, and 50 — 57
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`are confirmed as patentable.
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`22.
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`Any comments considered necessary by PATENT OWNERregarding the above
`
`statement must be submitted promptly to avoid processing delays. Such submission by the
`
`patent owner should be labeled: "Comments on Statement of Reasons for Patentability and/or
`
`Confirmation” and will be placed in the reexaminationfile.
`
`Conclusion
`
`All correspondencerelated to this ExParte reexamination proceeding should be directed:
`
`By EFS:
`
`Registered users may submit via the electronic filing system EFS-Web, at
`
`https://efs.uspto.gov/efile/myportal/efs-registered
`
`By Mailto: Mail Stop Ex Parte Reexam
`
`Central Reexamination Unit
`
`Commissioner for Patents
`
`United States Patent & Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`

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`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 10 of 10
`Case 6:20-cv-00272-ADA Document 104-1 Filed 11/15/23 Page 10 of 10
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`Page 7
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`Application/Control Number: 90/019,124
`Art Unit: 3992
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`By FAX to:
`
`(571) 273-9900
`
`Central Reexamination Unit
`
`By hand: Customer Service Window
`
`Randolph Building
`
`401 DulanyStreet
`
`Alexandria, VA 22314
`
`Telephone numbers for reexamination inquiries:
`
`Reexamination and Amendmentpractice: (571) 272-7703
`
`Central Reexamination Unit (CRU): (571) 272-7705
`
`Any inquiry concerning this communication or earlier communications from the examiner, or as
`
`to the status of this proceeding, should be directed to the Central Reexamination Unitat
`
`telephone number (571) 272-7705.
`
`/DAVID E ENGLAND/
`Primary Examiner, Art Unit 3992
`
`Conferee:
`
`/Roland Foster/ Primary Examiner, Art Unit 3992
`
`/MICHAEL FUELLING/
`Supervisory Patent Examiner, Art Unit 3992
`
`