IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Confirmation No.: 4705
`
`Group Art Unit:
`
`2617
`
`Examiner:
`
`Liton Miah
`
`In re Application of:
`Daniel J. Lin
`
`Serial No.: 12/832,576
`
`Filed: July 8, 2010
`
`For: PEER-TO-PEER MOBILE
`DATA TRANSFER METHOD
`AND DEVICE
`
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`MAIL STOP AMENDMENT
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`RESPONSE TO OFFICE ACTION DATE SEPTEMBER 27, 2010
`
`Dear Sir:
`
`In response to the Office Action dated September 27, 2010, please enter this
`response and reconsider the claims pending in the application for reasons discussed
`below. The Commissioner is hereby authorized to charge counsel's Deposit Account
`No. 20-0782/LIN/0002.C2/FDK for any fees required to make this response timely and
`acceptable to the Office.
`
`Amendments to the Claims are reflected in the listing of claims which begins on
`page 2 of this paper. Remarks begin on page 7 of this paper.
`
`1
`
`Apple Inc.
`Ex. 1020 - Page 1
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`

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`IN THE CLAIMS:
`
`The following listing of the claims replaces all prior versions of the claims in the
`application.
`
`1.-29. (Cancelled).
`
`30.
`(New) A method of establishing a direct data transfer session between
`mobile devices that support a data packet-based communications service over a digital
`mobile network system, the method comprising:
`opening a listening software port on an initiating mobile device to receive
`communications through the data packet-based communications service;
`transmitting an invitation message to a target mobile device through a page-
`mode messaging service, wherein the invitation message comprises a network address
`associated with the initiating mobile device, and wherein the target mobile device is
`located by providing a unique identifier to the page-mode messaging service;
`receiving a response from the target mobile device at the listening software port
`on the initiating wireless device; and
`establishing a data
`transfer session
`the data packet-based
`through
`communications service between the initiating mobile device and the target mobile
`device, wherein the data transfer session is established in a peer-to-peer fashion
`without a server intermediating communications through the established data transfer
`session between the initiating mobile device and the target mobile device.
`
`31.
`(New) The method of claim 30 further comprising:
`opening a second listening software port on the initiating mobile device to receive
`invitation messages through the page-mode messaging service;
`receiving, at the second listening software port and through the page-mode
`messaging service, a message from another mobile device inviting the initiating mobile
`device to establish a data transfer session, wherein such message comprises a network
`address associated with the other mobile device; and
`
`2
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`Apple Inc.
`Ex. 1020 - Page 2
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`

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`transmitting a response to the network address associated with the other mobile
`device, wherein the response acknowledges the ability to establish a data transfer
`session.
`
`32.
`(New) The method of claim 30, wherein the network address of the
`initiating mobile device is an IP address.
`
`33.
`(New) The method of claim 30, wherein the page-mode messaging
`service is SMS.
`
`(New) The method of claim 30, wherein the page-mode messaging
`34.
`service is a PIN-to-PIN messaging service.
`
`35.
`number.
`
`(New) The method of claim 30, wherein the unique identifier is a telephone
`
`(New) The method of claim 30, wherein the data transfer session utilizes a
`36.
`TCP connection.
`
`(New) A mobile device enabled to establish a direct data transfer session
`37.
`with other mobile devices in a digital mobile network system, the mobile device
`comprising a processor configured to perform the steps of:
`opening a listening software port on an initiating mobile device to receive
`communications through the data packet-based communications service;
`transmitting an invitation message to a target mobile device through a page-
`mode messaging service, wherein the invitation message comprises a network address
`associated with the initiating mobile device, and wherein the target mobile device is
`located by providing a unique identifier to the page-mode messaging service;
`receiving a response from the target mobile device at the listening software port
`on the initiating wireless device; and
`establishing a data
`transfer session
`the data packet-based
`through
`communications service between the initiating mobile device and the target mobile
`3
`
`Apple Inc.
`Ex. 1020 - Page 3
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`

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`device, wherein the data transfer session is established in a peer-to-peer fashion
`without a server intermediating communications through the established data transfer
`session between the initiating mobile device and the target mobile device.
`
`(New) The mobile device of claim 37, wherein the processor is further
`38.
`configured to perform the steps of:
`opening a second listening software port on the initiating mobile device to receive
`invitation messages through the page-mode messaging service;
`receiving, at the second listening software port and through the page-mode
`messaging service, a message from another mobile device inviting the initiating mobile
`device to establish a data transfer session, wherein such message comprises a network
`address associated with the other mobile device; and
`transmitting a response to the network address associated with the other mobile
`device, wherein the response acknowledges the ability to establish a data transfer
`session.
`
`(New) The mobile device of claim 37, wherein the network address of the
`39.
`initiating mobile device is an IP address.
`
`40.
`(New) The mobile device of claim 37, wherein the page-mode messaging
`service is SMS.
`
`41.
`(New) The mobile device of claim 37, wherein the page-mode messaging
`service is a PIN-to-PIN messaging service.
`
`(New) The mobile device of claim 37, wherein the unique identifier is a
`42.
`telephone number.
`
`43.
`(New) The mobile device of claim 37, wherein the data transfer session
`utilizes a TCP connection.
`
`4
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`Apple Inc.
`Ex. 1020 - Page 4
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`

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`(New) A non-transitory computer-readable storage medium including
`44.
`instructions that, when executed on a processor of a mobile device that supports a data
`packet-based communications service over a digital mobile network system, causes the
`processor to establish a direct data transfer session by performing the steps of:
`opening a listening software port on an initiating mobile device to receive
`communications through the data packet-based communications service;
`transmitting an invitation message to a target mobile device through a page-
`mode messaging service, wherein the invitation message comprises a network address
`associated with the initiating mobile device, and wherein the target mobile device is
`located by providing a unique identifier to the page-mode messaging service;
`receiving a response from the target mobile device at the listening software port
`on the initiating wireless device; and
`establishing a data
`transfer session
`the data packet-based
`through
`communications service between the initiating mobile device and the target mobile
`device, wherein the data transfer session is established in a peer-to-peer fashion
`without a server intermediating communications through the established data transfer
`session between the initiating mobile device and the target mobile device.
`
`(New) The non-transitory computer-readable storage medium of claim 44,
`45.
`further including instructions that cause the processor to perform the steps of:
`opening a second listening software port on the initiating mobile device to receive
`invitation messages through the page-mode messaging service;
`receiving, at the second listening software port and through the page-mode
`messaging service, a message from another mobile device inviting the initiating mobile
`device to establish a data transfer session, wherein such message comprises a network
`address associated with the other mobile device; and
`transmitting a response to the network address associated with other mobile
`device, wherein the response acknowledges the ability to establish a data transfer
`session.
`
`46.
`(New) The non-transitory computer-readable storage medium of claim 44,
`wherein the network address of the initiating mobile device is an IP address.
`5
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`Apple Inc.
`Ex. 1020 - Page 5
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`

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`47.
`(New) The non-transitory computer-readable storage medium of claim 44,
`wherein the page-mode messaging service is SMS.
`
`(New) The non-transitory computer-readable storage medium of claim 44,
`48.
`wherein the unique identifier is a telephone number.
`
`49.
`(New) The non-transitory computer-readable storage medium of claim 44,
`wherein the data transfer session utilizes a TCP connection.
`
`6
`
`Apple Inc.
`Ex. 1020 - Page 6
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`

`

`REMARKS
`
`The following is intended as a full and complete response to the Office Action
`dated September 27, 2010. The Office rejected claims 1-29. Claims 1-29 have been
`cancelled and new claims 30-49 have been added. New claims 30-49 contain
`limitations similar to (but not the same as) those limitations made to the allowed claims
`in parent U.S. Application 11/042,620 (the "Parent Application").
`
`Oath/Declaration
`
`The Office noted that the oath or declaration is defective. Applicant is filing a
`corrected oath and declaration simultaneous with the filing of this response to address
`the deficiency of the current oath or declaration.
`
`Rejections under 35 U.S.0 §101
`
`The Office rejected claims 21-29 under 35 U.S.C. §101 as being directed to non-
`statutory subject matter. Applicant has cancelled claims 21-29 and have added new
`claims 44-49 that are directed towards a "non-transitory computer readable storage
`medium," consistent with the Office's January 2010 guidance on the Subject Matter
`Eligibility of Computer Readable Media.
`However, the Office additionally notes that a "review of the specification yielded
`that there is no computer readable medium disclosed in the specification; therefore
`amending the claims to recite a computer readable medium will raise a potential new
`matter issue." Past decisions by the Board of Patent Appeals and Interferences (BPAI)
`indicate that discussion of the term "computer readable medium" in the specification is
`not a necessary requirement to claim a computer readable medium. For example, in Ex
`parte Daughtrey, Appeal 2008-0202 (BPAI April 8, 2009), the Board noted that "[t]he
`phrase 'computer readable medium' is not defined or discussed in the Appellant's
`Specification" and only appears in the claim 19 (which was rejected on other grounds,
`namely, that it covered non-statutory signals, which is now addressed by the Office's
`January 2010 guidance). Additionally, in Ex parte Mazzara, Appeal 008-4741 (BPAI
`February 5, 2009), the Board stated:
`
`7
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`Apple Inc.
`Ex. 1020 - Page 7
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`"The present Specification, however, does not set forth any definition or any examples of
`what is covered by their 'computer usable medium.' The Summary of the Claimed
`Subject Matter section of the Appeal Brief also fails to point to any specific description or
`definition in the Specification for the term, 'computer usable medium.' . . . In the present
`case, there is no express statement in the Specification, nor any other indication in the
`record, that the term 'computer usable medium' is intended to include non-statutory
`subject matter such as signals or paper. Accordingly, we find that the term 'computer
`usable medium' is limited to only tangible manufactures. As such, claim 17 is directed to
`statutory subject matter."
`Finally, original claims 21-29 directed towards a computer program are considered part
`of Applicant's specification (see MPEP 2163(I)(B) and 35 U.S.C. §112). As such, given
`that a "computer program" is indeed disclosed in the specification, Applicant respectfully
`submits that adding new claims 44-49 directed towards a "non-transitory computer
`readable storage medium" that includes computer program instructions similar to (but
`the same as) those of the "computer program" of original claims 21-29 does not result in
`a "potential new matter issue" because a non-transitory computer readable storage
`medium is inherently supported by the computer program of original claims 21-29.
`Specifically, Applicant respectfully submits that "a person of ordinary skill would have
`understood, at the time the patent application was filed, that the description requires [a
`non-transitory computer readable storage medium in order to store the computer
`program of original claims 21-29]" (quoting Hyatt v. Boone, 146 F.3d 1348, 1353, 47
`USPQ2d 1128, 1131 (Fed. Cir. 1998) as discussed in MPEP 2163(I)(B)). That is, a
`non-transitory computer readable storage medium in a mobile device must be
`"necessarily present" to store the computer program of original claims 21-29 and this
`"would be so recognized by persons of ordinary skill" (quoting In re Robertson, 169
`F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) as discussed in MPEP
`2163(I)(B)). Based on the foregoing, Applicant respectfully requests that the §101
`rejection be withdrawn.
`
`Double Patenting Rejection
`The Examiner provisionally rejected (1) claims 1-4, 10-14 and 20 on the ground
`of nonstatutory obviousness-type double patenting over claims 1, 3, 8, 10 and 11 of
`U.S. Patent 7,764,637 and claims 1-4, 10-14 and 20 of U.S. Patent 7,773,550, and (2)
`claims 1-2, 6, 8, 10-12, 16-18 and 20 on the ground of nonstatutory obviousness-type
`
`8
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`Apple Inc.
`Ex. 1020 - Page 8
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`double patenting over claims 30, 31, 34-39, and 41-44 of co-pending U.S. Patent
`Application 10/817,994. Applicant respectfully requests that these rejections be held in
`abeyance until pending claims are allowed. At that time, a proper terminal disclaimer
`will be filed, if still necessary, to cure the double patenting issues.
`
`Rejections under 35 U.S.0 §102(b)
`The Office rejected claims 1-4, 6-9, 11-14, 16-19, 21-23 and 25-28 under 35
`U.S.0 §102(b) as being anticipated by U.S. Patent Publication 2003/0142654
`(hereinafter, "Chambers"). Applicant has cancelled claims 1-29 and added new claims
`30-49.
`Each of independent claims 30, 37 and 44 includes the limitation that "the data
`transfer session
`is established
`in a peer-to-peer fashion without a server
`intermediating communications through the established data transfer session
`between the initiating mobile device and the target mobile device" (emphasis
`added). Support for the foregoing limitation can be found throughout Applicant's
`specification including, for example, on page 2, lines 4-5 ("no separate data server
`need be used to provide a known location from which a recipient retrieves data such as
`multimedia content") and the title of the specification ("Peer-To-Peer Mobile Data
`Transfer Method And Device").
`In complete contrast, rather than establishing a data transfer session in a peer-
`to-peer fashion between two devices, Chambers
`focuses on establishing a
`communication sessions for multiples parties (e.g., three or more) in which one of the
`participating parties is a server that intermediates communications among the multiple
`parties. For example, paragraph [0046] of Chambers states that "[i]f the chosen active
`member accepts the initiator status, the chat session remain active with the chosen
`active member's terminal acting as server." Indeed, U.S. Patent 7,558,220, Chambers'
`resulting issued patent, claims a method (i.e., claim 1) involving a first, second and third
`terminal in which "said first terminal [is employed] as a server for said
`communication short message service chat session." That is, in Chambers, the
`initiating terminal is a server that enables other terminals to continually join or leave
`an established communication session (see, e.g., paragraphs [0040]-[00421). As such,
`Applicant respectfully submits that Chambers teaches away or at least simply fails to
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`teach or suggest the limitation of independent claims 30, 37 and 44 that "the data
`transfer session
`is established
`in a peer-to-peer fashion without a server
`intermediating communications through the established data transfer session
`between the initiating mobile device and the target mobile device." For at least
`these reasons, Chambers cannot anticipate independent claims 30, 37 and 44, or any
`of the remaining pending claims which are dependent thereon.
`Furthermore, as previously mentioned, new claims 30-49 contain limitations
`similar to (but not the same as) those limitations made to the allowed claims in parent
`application 11/042,620 (the "Parent Application") in response to the Office's citation of
`the U.S. Patent Application No. 2005/0058094 (hereinafter, "Lazaridis"). As discussed
`in the prosecution history of the Parent Application, Applicant, herein, respectfully
`reiterates his arguments in the Parent Application that Applicant's disclosure claims
`priority back to April 5 , 2004 and therefore precedes the Lazaridis disclosure which is
`dated September 16, 2004 and that the provisional applications dated September 16,
`2003 upon with Lazaridis claims priority do not disclose "an invitation message
`compris[ing] a network address" as required by independent claims 30, 37 and 44
`herein.
`
`Conclusion
`Based on the foregoing, Applicant believes that they have overcome all of the
`objections and rejections set forth in the Office Action mailed on September 27, 2010
`and that the pending claims are in condition for allowance. If the Examiner has any
`questions, please contact the Applicant at the number provided below.
`
`Respectfully submitted,
`
`/ Daniel Lin /
`Daniel Lin, Reg. No. 47,750
`240 Lombard Street #839
`San Francisco, CA 94111
`Telephone: 650.996.1050
`Applicant
`
`10
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`Apple Inc.
`Ex. 1020 - Page 10
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`