Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 1 of 35
`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 1 of 35
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`EXHIBIT 1
`EXHIBIT 1
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`

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`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 2 of 35
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`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.
`
`13/056,277
`
`01/27/2011
`
`Johan Emil Viktor Bjorsell
`
`SMARB19.004APC
`
`2403
`
`04/11/2013
`7590
`20995
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET
`FOURIBENTH FLOOR
`IRVINE, CA 92614
`
`EXAMINER
`
`RAHMAN, MOSTAZIR M
`
`ART UNIT
`
`PAPER NUMBER
`
`2413
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/11/2013
`
`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):
`jayna.cartee@knobbe.com
`efiling@knobbe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 3 of 35
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`13/056,277
`
`Examiner
`
`BJORSELL ET AL.
`
`Art Unit
`
`2413
`M MOSTAZIR RAHMAN
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`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 )IZI Responsive to communication(s) filed on 01/27/2011.
`2a)O This action is FINAL.
`2b)IZI This action is non-final.
`3)0 An election was made by the applicant in response to a restriction requirement set forth during the interview on
`__ ; the restriction requirement and election have been incorporated into this action.
`4)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 G.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)1Zl Claim(s) 1-90 is/are pending in the application.
`5a) Of the above claim(s) __ is/are withdrawn from consideration.
`6)0 Claim(s) __ is/are allowed.
`7)1Zl Claim(s) 1-90 is/are rejected.
`8)0 Claim(s) __ is/are objected to.
`9)0 Claim(s) __ are subject to restriction and/or election requirement.
`
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway
`program at a participating intellectual property office for the corresponding application. For more information, please see
`htto:/iwww.uspto.aov/oatents/init events/pph/index.isp or send an inquiry to PPHfeedback@uspto.qov.
`
`Application Papers
`
`10)0 The specification is objected to by the Examiner.
`11 )IZI The drawing(s) filed on 01/27/2011 is/are: a)IZI 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).
`
`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) [8J Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date
`
`, . . , -
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`,,..,,..
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`, . . , . _ , , , . .
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`, . . , . . . , , , . .
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`,...
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`,..
`
`A
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`, , . .
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`3) 0 Interview Summary (PTO-413)
`Paper No(s)/Mail Date. __ .
`4) 0 Other: __ .
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 09-12)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20130313
`
`

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`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 4 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`Page 2
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`DETAILED ACTION
`
`Information Disclosure Statement
`
`The information disclosure statements (IDS) submitted on 01/27/2011,
`
`05/26/2011, 06/21/2012, 08/03/2012, 09/06/2012, 09/10/2012 and 01/14/2013 have
`
`been placed in record and considered by the examiner.
`
`Priority
`
`Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which
`
`papers have been placed of record in the file.
`
`Claim Objections
`
`Claims 52, 71 and 90 are objected to because of the following informalities:
`
`Specifically,
`
`a. Claim 52 line 5: replace first occurrence of "said routing controller" -- "a
`
`routing controller" -- instead.
`
`b. Claim 71 line 9: replace first occurrence of "said routing controller" into -
`
`- "a routing controller" -- instead.
`
`c. Claim 90 line 6: replace first occurrence of "said routing controller" into
`
`-- "a routing controller" -- instead.
`
`Appropriate corrections are required.
`
`

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`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 5 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`Page 3
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`Claim Rejections - 35 USC§ 101
`
`35 U.S.C. 101 reads as follows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
`matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
`conditions and requirements of this title.
`
`Claims 32 and 90 are rejected under 35 U.S.C. 101 because the claimed invention is
`
`directed to non-statutory subject matter.
`
`The claims are drawn to a "computer readable medium". Thus, applying the broadest
`
`reasonable interpretation in light of the specification and taking into account the
`
`meaning of the words in their ordinary usage they would be understood by one of
`
`ordinary skill in the art (MPEP §2111) , the claim as a whole covers both transitory and
`
`not transitory media. A transitory medium does not fall into any of the 4 categories of
`
`invention (Process, Machine, Manufacture, or composition of matter). The applicants
`
`are respectfully suggested to amend the claims to read as "A non-transitory computer
`
`readable medium ... " to overcome the 35 USC§ 101 rejection.
`
`Claim Rejections - 35 USC § 103
`
`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
`
`

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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`Page 4
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`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.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
`
`obviousness under 35 U.S.C. 103(a) are summarized as follows:
`
`1.
`2.
`
`3.
`4.
`
`Determining the scope and contents of the prior art.
`Ascertaining the differences between the prior art and the claims at
`issue.
`Resolving the level of ordinary skill in the pertinent art.
`Considering objective evidence present in the application indicating
`obviousness or nonobviousness.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of
`
`the various claims was commonly owned at the time any inventions covered therein
`
`were made absent any evidence to the contrary. Applicant is advised of the
`
`obligation under 37 CFR 1 .56 to point out the inventor and invention dates of each
`
`claim that was not commonly owned at the time a later invention was made in order
`
`for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35
`
`U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
`
`Claims 1-3, 5-7, 8-14, 16- 24, 26-35, 52-54, 71-73 and 90 are rejected
`
`under 35 U.S.C. 103(a) as being unpatentable over ELLIOTT et al. (US Pub No.
`
`2004/0022237 A1; hereinafter as "ELLIOTT") in view of ALBINA et al. (US Pub No.
`
`2008/0056235 A1; hereinafter as "ALBINA").
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`

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`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 7 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`Page 5
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`1. Elliott teaches a method of initiating a call to a callee using, a telephone, the
`
`method comprising (Elliott; Fig. 1: initiate a call from caller 102 to callee 120):
`
`receiving, from a user of the telephone, a callee identifier associated with the callee
`
`(Elliott, [0035] lines 20-22; user of calling party dials phone number of the
`
`called party);
`
`transmitting an access code request message to an access server, said access
`
`code request message including said callee identifier (Elliott, [0035] lines 24-37:
`
`soft switch takes request from calling party with dialed number to set up
`
`contact with called party);
`
`receiving an access code reply message from the access server in response to
`
`said access code request message, said access code reply message including an
`
`access code different from said callee identifier and associated with said callee
`
`identifier ([0487]: soft switch sends IPDC protocol command back to gateway
`
`(reply) which is connected to the calling party so that the call termination to
`
`called party 120); and
`
`initiating a call with the telephone using said access code to identify the callee
`
`([0487]: the connection between origination and termination is established).
`
`However, Elliott does not explicitly teach that caller is a mobile phone.
`
`

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`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 8 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`In an analogous art, Albina teaches functionality of:
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`Page 6
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`a mobile phone is calling a callee (Albina, Fig. 1 mobile device 102 is calling
`
`device 104).
`
`Therefore, it would have been obvious to one of the ordinary skill in the art at the
`
`time the invention was made to provide the technique of Albina to the system of
`
`Elliott in order to establish a VoIP media session between the originating cellular
`
`telephone and the VoIP destination device (Albina, [0007]).
`
`2. Elliott and Albina, specifically, Elliott teach the method of claim 1 wherein
`
`transmitting comprises transmitting said access code request message to said
`
`access server on a non-voice network (Elliott,[0485]: dialed number; (Fig. 4A:
`
`408: [0582):408 is a TCP/IP (i.e. non-voice) connection).
`
`3. Elliott and Albina, specifically, Albina teach the method of claim 1.
`
`wherein transmitting comprises transmitting a location identifier of a location
`
`associated with the mobile telephone to said access server (Albina [0105]; mobile
`
`station 1202 register with Registrar/Location server 1210 to give the location
`
`of mobile station; Fig. 12).
`
`5. Elliott and Albina, specifically, Albina teach the method of claim 3 wherein
`
`transmitting said location identifier comprises transmitting an identifier of a wireless
`
`

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`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 9 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`Page 7
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`voice signal station in wireless communication with the mobile telephone (Albina;
`
`Fig. 2: [0033] lines 1-18: mobile device 102 sends a data message (i.e.
`
`identifier) which is carried via mobile data network 106 which is deliver to
`
`application server 110).
`
`6. Elliott and Albina, specifically, Albina teach the method of claim 3 wherein
`
`transmitting said location identifier comprises transmitting a user-configured
`
`identifier of a location associated with the mobile telephone (Albina; Fig. 12:
`
`mobile station 1202 registers with register/location server 1210. [0104] lines
`
`8-14: Client's application (j.e. user-configured identifier) resides on mobile
`
`station 1202 for enabling the user to select a call. Application is configured
`
`(j.e. user-configured identifier) such that requests arrive at the IP address of
`
`IWF 1208).
`
`7. Elliott and Albina, specifically, Albina teaches the method of claim 1 wherein
`
`receiving said access code reply message comprises receiving said access code
`
`reply message from said access server on a non-voice network (Elliott, Fig. 1:
`
`mobile phone 102 is communicating with soft switch using data network 112
`
`which is a non-voice network.; [0863]: ServerProxy 426).
`
`8. Elliott and Albina, specifically, Albina teach the method of claim 1.
`
`wherein receiving said access code reply message comprises receiving, in said
`
`access code reply message, said access code temporarily associated with said
`
`

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`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 10 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`Page 8
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`callee identifier (Albina; [0053]: destination phone number (the assigned local
`
`temporary number) to the SIP application server).
`
`9. Elliott and Albina, specifically, Elliott teach the method of claim 1 wherein
`
`receiving said access code reply message comprises receiving, in said access
`
`code reply message, a telephone number identifying a channel operably configured
`
`to cooperate with an IP network to cause a call involving the mobile telephone and
`
`the callee to be routed through the IP network (Elliott, Fig. 1: Device 102 makes
`
`a call to callee 120 which is routing through IP data network 112).
`
`10 Elliott and Albina, specifically, Elliott teach the method of claim 1 wherein
`
`initiating said call comprises engaging a routing controller to route said call on said
`
`IP network to the callee (Elliott Fig. 1: device 102 engaging gateway site 108 &.
`
`routing controller) to route the call through IP data network 118 to callee 120).
`
`11. Elliott and Albina, specifically, Elliott teach the method of claim 1 further
`
`comprising:
`
`receiving from the mobile telephone said access code request message (Elliott
`
`,[0485]: dialed number);
`
`communicating with a routing controller to obtain from the routing controller said
`
`access code wherein said access code identifies a channel and is useable by the
`
`

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`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 11 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`Page 9
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`mobile telephone to cause the routing controller to establish a call to the callee
`
`using the channel (Elliott, Fig. 22A: 2226: [0487]: gateway setup call from
`
`caller to callee using IPDC protocol commands);
`
`and transmitting said access code reply message to the mobile telephone (Elliott
`
`,[0487]: soft switch sends IPDC protocol command back to gateway (reply)
`
`which is connected to the calling party so that the call termination to called
`
`party 120 and the connection between origination and termination is
`
`established).
`
`12. Elliott teaches a telephone apparatus comprising:
`
`means for receiving, from a user of the telephone, a callee identifier associated with
`
`the callee (Elliott, [0035] lines 20-22; user of calling party dials phone number
`
`of the called party);
`
`transmitting means for transmitting an access code request message to an access
`
`server, said access code request message including said callee identifier (Elliott,
`
`[0035] lines 24-37: soft switch takes request from calling party with dialed
`
`number to set up contact with called party);
`
`means for receiving an access code reply message from the access server in
`
`response to said access code request message, said access code reply message
`
`

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`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 12 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`Page 1 O
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`including an access code different from said callee identifier and associated with
`
`said callee identifier ([0487]: soft switch sends IPDC protocol command back to
`
`gateway (reply) which is connected to the calling party so that the call
`
`termination to called party 120);
`
`and means for initiating a call using said access code to identify the callee ([0487]:
`
`the connection between origination and termination is established).
`
`However, Elliott does not teach that apparatus is a mobile phone.
`
`In an analogous art, Albina teaches functionality of:
`
`a mobile apparatus is calling a callee (Albina, Fig. 1 mobile device 102 is calling
`
`device 104).
`
`Therefore, it would have been obvious to one of the ordinary skill in the art at the
`
`time the invention was made to provide the technique of Albina to the system of
`
`Elliott in order to establish a VoIP media session between the originating cellular
`
`telephone and the VoIP destination device (Albina, [0007]).
`
`21. Elliott and Albina, specifically, Elliott teach a system for initiating a call to a
`
`callee, the system comprising the mobile telephone apparatus of claim 12, and
`
`further comprising:
`
`

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`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 13 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`Page 11
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`a routing controller (Elliott: Fig. 1: Gateway site 108); and
`
`an access server comprising (Elliott: Fig 1: Soft switch 106):
`
`means for receiving from the mobile telephone said access code request message
`
`(Elliott,[0485]: dialed number);
`
`means for communicating with said routing controller to obtain from said routing
`
`controller said access code wherein said access code identifies a channel and is
`
`useable by the mobile telephone to cause the routing controller to establish a call to
`
`the callee using the channel (Elliott ,Fig. 22A: 2226: [0487]: gateway setup call
`
`from caller to callee using IPDC protocol commands); and
`
`means for transmitting said access code reply message including said access code
`
`to the mobile telephone (Elliott ,[0487]: soft switch sends IPDC protocol
`
`command back to gateway (reply) which is connected to the calling party so
`
`that the call termination to called party 120 and the connection between
`
`origination and termination is established).
`
`22. Elliott teach a telephone apparatus comprising:
`
`a processor circuit (Fig. 1: a phone stations (102 and 122) must have a
`
`processor);
`
`

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`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 14 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`Page 12
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`a network interface in communication with said processor circuit (Fig. 1: phone
`
`stations (102 and 122) must have a network interface to connect to other
`
`devices); and
`
`a computer readable medium in communication with said processor circuit and
`
`encoded with codes for directing said processor circuit (stations (102 and 122)
`
`must have computer code to operate) to:
`
`receive, from a user of the telephone, a callee identifier associated with the callee
`
`(Elliott, [0035] lines 20-22; user of calling party dials phone number of the
`
`called party);
`
`cause an access code request message to be transmitted to an access server, said
`
`access code request message including said callee identifier (Elliott, [0035] lines
`
`24-37: soft switch takes request from calling party with dialed number to set
`
`up contact with called party);
`
`receive an access code reply message from the access server in response to said
`
`access code request message, said access code reply message including an
`
`access code different from said callee identifier and associated with said callee
`
`identifier (Elliott ,[0487]: soft switch sends IPDC protocol command back to
`
`gateway (reply) which is connected to the calling party so that the call
`
`termination to called party 120); and
`
`

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`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 15 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`Page 13
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`initiate a call using said access code to identify the callee ([0487]: the connection
`
`between origination and termination is established).
`
`However, Elliott does not teach that apparatus is a mobile phone.
`
`In an analogous art, Albina teaches functionality of:
`
`a mobile apparatus is calling a callee (Albina, Fig. 1 mobile device 102 is calling
`
`device 104).
`
`Therefore, it would have been obvious to one of the ordinary skill in the art at the
`
`time the invention was made to provide the technique of Albina to the system of
`
`Elliott in order to establish a VoIP media session between the originating cellular
`
`telephone and the VoIP destination device (Albina, [0007]).
`
`23. Elliott and Albina, specifically, Elliott teach the mobile telephone apparatus
`
`of claim 22 wherein said network interface comprises a non-voice network
`
`interface, and wherein said codes for directing said processor circuit to cause said
`
`access code request message to be transmitted include codes for directing said
`
`processor circuit to cause said access code request message to be transmitted to
`
`said access server using said non-voice network interface on a non-voice network
`
`(Elliott, Fig.1: phone 102 calls callee 120 which is routing through gateway
`
`site 108 using data network (j.e. non-voice network) through another gateway
`
`

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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`site 110 and reach to destination callee 120).
`
`Page 14
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`24. Elliott and Albina, specifically, Albina teaches the mobile telephone
`apparatus of claim 22.
`
`wherein said access code request message further includes a location identifier of
`
`a location associated with the mobile telephone server (Albina [0105]; mobile
`
`station 1202 register with Registrar/Location server 1210 to give the location
`
`of mobile station; Fig. 12).
`
`26. Elliott and Albina, specifically, Albina teach the mobile telephone apparatus
`
`of claim 24 wherein said location identifier comprises an identifier of a wireless
`
`voice signal station in wireless communication with the mobile telephone (Albina;
`
`Fig. 2: [0033] lines 1-18: mobile device 102 sends a data message (i.e.
`
`identifier) which is carried via mobile data network 106 which is deliver to
`
`application server 110).
`
`27. Elliott and Albina, specifically, Albina teach the mobile telephone apparatus
`
`of claim 24 wherein said location identifier comprises a user-configured identifier of
`
`a location associated with the mobile telephone (Albina; Fig. 12: mobile station
`
`1202 registers with register/location server 1210. [0104] lines 8-14: Client's
`
`application (j.e. user-configured identifier) resides on mobile station 1202 for
`
`enabling the user to select a call. Application is configured (j.e. user-
`
`

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`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 17 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`Page 15
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`configured identifier) such that requests arrive at the IP address of IWF 1208).
`
`28. Elliott and Albina, specifically, Albina teach the mobile telephone apparatus
`of claim 22 as applied above and
`
`wherein said network interface comprises a non-voice network interface, and
`
`wherein said codes for directing said processor circuit to receive an access code
`
`reply message include codes for directing said processor circuit to cause said
`
`access code reply message to be received from said access server using said non(cid:173)
`
`voice network interface on a non-voice network (Albina, Fig. 11: Mobile phone
`
`1102 to communicate with wireless data network 1106 and application server
`
`1108. It must have a data interface (i.e. non-voice interface) to communicate
`
`with wireless data network 1106; [0007]; mobile phone sends data message
`
`to wireless data network (j.e. non-voice network; [0011]: cellular-to-VoIP call
`
`establishment module)).
`
`29. Elliott and Albina, specifically, Elliott teaches the mobile telephone
`
`apparatus of claim 22 wherein said access code includes a telephone number
`
`identifying a channel operably configured to cooperate with an IP network to cause
`
`a call involving the mobile telephone and the callee to be routed through the IP
`
`network (Elliott, Fig. 1: phone 102 engaging gateway site 108 (a routing
`
`controller) to route the call through IP data network 118 to callee 120).
`
`

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`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 18 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`Page 16
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`30. Elliott and Albina, specifically, Elliott teaches the mobile telephone
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`apparatus of claim 22 as applied above, wherein said network interface comprises
`
`a mobile telephone network interface, and wherein said codes for directing said
`
`processor circuit to initiate include codes for directing said processor circuit to
`
`cause a call to be initiated using said mobile telephone network interface on a
`
`mobile telephone network (Albina, Fig. 1: Mobile communication device 102
`
`which must have mobile telephone network interface communicate with
`
`mobile wireless service provider 116).
`
`31. Elliott and Albina, specifically, Elliott teaches a system for initiating a call to
`
`a callee, the system comprising the mobile telephone of claim 22, and further
`
`comprising:
`
`a routing controller (Elliott, Fig. 1: Gateway 108); and
`
`an access server comprising a processor circuit and a computer readable medium
`
`in communication with the processor circuit, the computer readable medium
`
`encoded with codes for directing said processor circuit to (Elliott, Fig. 1: Soft
`
`switch 104, 106 must have a process, must have a computer readable
`
`medium and computer code to operate):
`
`receive from the mobile telephone said access code request message (Elliott,
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`[0035] lines 20-22; user of calling party dials phone number of the called party
`
`

`

`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 19 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`on mobile phone);
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`Page 17
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`communicate with said routing controller to obtain from said routing controller said
`
`access code wherein said access code identifies a channel and is useable by the
`
`mobile telephone to cause the routing controller to establish a call to the callee
`
`using the channel (Elliott, Fig. 22A: 2226: [0487]: gateway setup call from
`
`caller to callee using IPDC protocol commands;
`
`and transmit said access code reply message to the mobile telephone (Elliott
`
`,[0487]: soft switch sends IPDC protocol command back to gateway (reply)
`
`which is connected to the calling party so that the call termination to called
`
`party 120 and the connection between origination and termination is
`
`established).
`
`Regarding claim 13, the claim is interpreted and rejected for the same reason as
`
`set forth in claim 2.
`
`Regarding claim 18, the claim is interpreted and rejected for the same reason as
`
`set forth in claim 7.
`
`Regarding claim 20, the claim is interpreted and rejected for the same reason as
`
`set forth in claim 9.
`
`Regarding claim 32, the claim is interpreted and rejected for the same reason as
`
`set forth in claim 1.
`
`

`

`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 20 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
`
`Page 18
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`Regarding claims 14, 16, 17, 19, the claim are interpreted and rejected for the
`
`same reason as set forth in claims 3, 5, 6, 8 respectively.
`
`71. Elliott teaches a system for enabling a telephone to initiate a call to a callee
`
`through a channel (Fig. 1: 102 to 120), the system comprising:
`
`a processor circuit (Fig. 1: soft switch (104 and 106) must have a processor); a
`
`network interface in communication with said processor circuit (Fig. 1: soft switch
`
`(104 and 106) must have a network interface to connect to other devices); and
`
`a computer readable medium in communication with said processor circuit and
`
`encoded with codes for directing said processor circuit to (soft switch, 104, 106
`
`must have computer code to operate):
`
`receive from the mobile telephone an access code request message including a
`
`callee identifier associated with the callee ([0485]: dialed number);
`
`communicate with said routing controller to obtain from said routing controller an
`
`access code identifying the channel, said access code being different from the
`
`callee identifier and useable by the telephone to initiate a call to the callee using the
`
`channel (Fig. 22A: 2226: [0487]: gateway setup call from caller to callee using
`
`

`

`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 21 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`IPDC protocol commands); and
`
`Page 19
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`cause an access code reply message including said access code to be transmitted
`
`to the telephone ([0487]: soft switch sends IPDC protocol command back to
`
`gateway (reply) which is connected to the calling party so that the call
`
`termination to called party 120 and the connection between origination and
`
`termination is established).
`
`However, Elliott does not teach that caller is a mobile phone.
`
`In an analogous art, Albina teaches functionality of:
`
`a mobile phone is calling a callee (Albina, Fig. 1 mobile device 102 is calling
`
`device 104).
`
`Therefore, it would have been obvious to one of the ordinary skill in the art at the
`
`time the invention was made to provide the technique of Albina to the system of
`
`Elliott in order to establish a VoIP media session between the originating cellular
`
`telephone and the VoIP destination device (Albina, [0007]).
`
`72. Elliott and Albina, specifically, Elliott teach the system of claim 71 wherein
`
`said network interface comprises a non- voice network interface (Elliott ,Fig. 4A:
`
`408: [0582):408 is a TCP/IP (i.e. non-voice) connection), and wherein said codes
`
`for directing said processor circuit to receive include codes for directing said
`
`

`

`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 22 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
`
`Page 20
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`processor circuit to cause said access code request message to be received using
`
`said non-voice network interface on a non-voice network (Elliott ,Fig. 4B: Codes
`
`to interface with Route ServerProxy 426; [0860]; [0863];).
`
`73. Elliott and Albina, specifically, Elliott teach the system of claim 71 wherein
`
`said computer readable medium is further encoded with codes for directing said
`
`processor circuit to cause said access code to be produced (Elliott ,Fig. 22: 2226;
`
`[0515] soft switch sites 104,106 can send messages (i.e. encoded with codes)
`
`through data network 112 (e.g. using IPDC protocol commands) (i.e. access
`
`code) to gateway sites 108,101 to instruct the gateway sites to make the
`
`necessary connecting for setting up the call from origination and
`
`termination).
`
`Regarding claims 33-35, the claims are interpreted and rejected for the same
`
`reason as set forth in claims 71-73 respectively.
`
`Regarding claims 52-54, the claims are interpreted and rejected for the same
`
`reason as set forth in claims 71-73 respectively.
`
`Regarding claim 90, the claim is interpreted and rejected for the same reason as
`
`

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`Case 6:21-cv-00667-ADA Document 41-2 Filed 04/08/22 Page 23 of 35
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`Application/Control Number: 13/056,277
`Art Unit: 2413
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`set forth in claim 71.
`
`Page 21
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`Claims 4, 15, 25, 36-42, 43-48, 55-67, 74-80, and 81-86 are rejected under
`
`35 U.S.C. 103(a) as being unpatentable over ELLIOTT et al. (U