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`UNITED STATES DEPARTMENT OF COMMERCE
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`United States Patent and Trademark Office
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`June 06, 2018
`
`THIS IS TO CERTIFY THAT ANNEXED IS A TRUE COPY FROM THE
`
`RECORDS OF THIS OFFICE OF THE FILE WRAPPER AND CONTENTS
`OF:
`
`APPLICATION NUMBER: 10/817,994
`
`FILING DATE: April 05, 2004
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`PATENT NUMBER:
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`ISSUE DATE: June 14, 2011
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`Ex. 1004 - Page 1
`
`

`

`17090170IIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIlIIll
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`Under the Panrvork Reduction Act of 1995 no 7. :
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`PTO/SB/OS (01-04)
`Approved for use through 07/31/2006. OMB 0651-0032
`US. Patent and Trademark Office. US. DEPARTMENT OF COMMERCE
`rsons are re uire to re ond to a collection of information unless it dis-Ia s a valid OMB control number.
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`UTILITY
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`See MPEP chapter 600 concerning utility patent application contents.
`Alexandria VA 22313-1450
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`us.PTO10/817994
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`22141
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`1. Ea Fee Transmittal Form (e.g., PTO/SB/17)
`(Submit an original and a duplicate for fee processing)
`2 E5 Applicant claims small entity status.
`See 37 CFR 1.27.
`[Total Pages M
`3. g Specrfication
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`name in the prior application. see 37 CFR
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`' 18. If a CONTINUING APPLICATION, check appropriate box, and supply the requisite information below and in the first sentence of the
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`Ifyou need assistance in completing the form, call 1-800—PTO-9199 and select option 2.
`
`Apple Inc.
`EX. 1004 - Page 2
`
`Apple Inc.
`Ex. 1004 - Page 2
`
`

`

`PTO/SB/17 (10-03)
`Approved for use through 07/31/2006. OMB 0651 -0032
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
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`1401
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`2002 170
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`165 Notice of Appeal
` 2401
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`1453 1,330
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`1501 1.330
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`1801
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`1205
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`‘ SUBMITTED BY
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`
`Wm
`
`40 Recording each patent assignment per
`property (times number of properties)
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`(37 CFR 1.129(3))
`385 For each additional invention to be
`examined (37 CFR 1.129(b))
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`of a design application
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`WARNING: InformatIon on this form may become public. Credit card Information should not
`be included on this form. Provide credit card Information and authorization on PTO-2038.
`.
`This collection of information is required by 37 CFR 1.17 and 1.27. The information is required to obtain or retain a benefit by the public which is to file (and by the
`USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 12 minutes to complete,
`including gathering. preparing. and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on
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`SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`A le Inc.
`If you need assistance in completing the form, call 1—800-PTO-9199 and select option 2,
`pp
`Ex. 1004 - Page 3
`
`Apple Inc.
`Ex. 1004 - Page 3
`
`

`

`WW
`
`Applicant:
`
`Daniel J. Lin
`
`Serial No.:
`
`'
`
`Filed:
`
`April 5, 2004
`
`Group No.:
`
`Batch No.:
`
`Examiner:
`
`PEER-TO-PEER INSTANT MESSAGING
`For:
`METHOD AND DEVICE
`
`Attorney
`Docket No.: DJL-l
`
`Mail Stop Patent Application
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`I hereby certify that
`
`the attached Utility Patent Application Transmittal Form, Fee
`
`Transmittal Form (and check), Declaration for Utility or Design Patent Application, Information
`
`Disclosure Statement (PTO/SB/08a) (and copies of HDS citations), specification entitled "Peer-to-
`
`Peer Mobile Instant Messaging Method and Device" and accompanying drawings are being
`
`deposited with the. United States Postal Service as Express Mail in an envelope addressed to:
`
`Commissioner for Patents, PO. Box 1450, Alexandria, VA, 22313-1450 on this date.
`
`April 5, 2004
`
`Express Mail No: ER 036214039 US
`
`‘
`
`Z ’/ A
`
`Daniel J. Lin
`
`Registration No. 47,750
`
`Daniel J. Lin
`
`240 Lombard Street #839
`
`San Francisco, CA 941 1 1
`(415) 956-3005 (tel)
`
`Apple Inc.
`EX. 1004 - Page 4
`
`Apple Inc.
`Ex. 1004 - Page 4
`
`

`

`Peer-to-Peer Mobile Instant Messaging Method and Device
`
`Field of the Invention
`
`The present invention relates generally to messaging techniques for mobile devices, and
`more specifically, a technique to establish peer-to-peer session-based instant messaging ("IM")
`communications among mobile devices without the need for IM registration.
`
`Background of the Invention
`
`technologies depend upon a registration system to
`Current instant messaging ("IM")
`enable end users to communicate with one another. For example, to establish an IM session on
`AOL's Instant Messenger ("AIM"), each participating end user must have registered with AOL and
`must log into an AIM server in order to use the service. This registration system creates a virtual
`network of registered users and the value to a new user in joining an IM service is directly related
`
`this phenomenon causes a further tipping effect, which is the natural tendency for few (or even a
`single) lM services to pull away from their competitors once they have gained an initial edge by
`registering a critical mass of users. This tipping effect tends to occur rapidly and stems, in part,
`from users'
`inclination to gravitate towards the IM services that they expect will be become
`dominant.
`This tipping effect gives proprietary IM services such as AIM, Microsoft's .NET
`Messenger Service, and Yahoo! Messenger, that have achieved a large network of registered
`users, a strong barrier to entry into the IM market. As such, proprietary lM services may be
`reluctant to provide interoperability to other less established IM services since providing such
`access could cannibalize their competitive network advantage.
`From a technical perSpective, the registration system used in IM services is necessary to
`provide presence capabilities.
`in order to establish an IM session, an end user must be
`registered with the M service so ”that the end user can log into the service's lM server, which
`broadcasts the end user's availability to engage in IM sessions to an authorized group of the end
`user's peers that have also registered and logged into the IM server. The M server also similarly
`provides the end user with a list of registered peers that are available to engage in an IM session.
`When end users engage in IM sessions over a traditional connected network environment,
`presence capabilities are a critical characteristic of an IM service because such capabilities are
`needed to provide an end user’s peers with sufficient presence information (i.e., IP address and
`port number) in order to locate the end user within the network and establish a connection
`between the end user and a peer for an IM session. Furthermore, logging into an IM server also
`
`10
`
`15
`
`20
`
`25
`
`30
`
`35
`
`40
`
`Apple Inc.
`Ex. 1004 - Page 5
`
`Apple Inc.
`Ex. 1004 - Page 5
`
`

`

`enables an end user to indicate whether or not he or she is physically present (e.g., sitting in front
`of a networked workstation or in front of a laptop that is connected the network) and willing to
`engage in an IM session.
`
`IM services for mobile devices, such as smartphones, appear to have less a
`However,
`need for presence capabilities. Unlike establishing an IM session on a laptop, desktop or
`workstation, where the end user must broadcast his or her availability and presence information
`on the network when he or she is physically sitting in front of the laptop, desktop or workstation,
`establishing an IM session on a mobile device does not suffer from the same presence issues
`because the end user is presumed to be carrying the mobile device at all times. So long as the
`mobile device has enough contact information'(e.g., cellular telephone number, PIN number, etc.)
`to directly communicate with other mobile devices through the underlying wireless network
`technology (e.g., cellular technology, etc.), an IM session could be initiated and established in a
`manner similar to making and answering mobile phone calls without the need for registering with
`or logging into an IM server in order to broadcast presence information to other end users for lM
`purposes.
`
`Furthermore, unlike lM services in a traditional connected network environment,
`successful end user adoption of an IM service between mobile devices would not suffer from
`reliance upon establishing a critical mass of end users through a registration system.
`In contrast,
`such an IM service would be instantly usable to any and all end users of mobile devices so long
`as such mobile devices are already capable of directly communicating with other mobile devices
`through the underlying wireless mobile technology without needing further presence information
`(e.g., cellular phones directly communicating with other cellular phones through cellular telephone
`numbers). As such, what is needed is a method to establish lM sessions directly between mobile
`devices, where such mobile devices are capable of directly communicating with other mobile
`devices through the underlying wireless technology, such that no IM registration or log—in server is
`needed to provide presence information to other mobile devices for lM purposes.
`
`Summary of the Invention
`
`The present invention provides a method for establishing a peer-to-peer session-based
`lM communications between mobile devices over a digital mobile network system that supports
`data packet-based communications. Under the present invention, no N registration or IM log-in
`server need be used to provide presence information.
`Instead, a mobile device initiating an IM
`session opens a listening port defined by an underlying data packet based network protocol. The
`initiating mobile device sends an invitation message containing the network address,
`including
`the listening port, of the initiating device to a target mobile device through a page-mode
`messaging service supported by the digital mobile network system. The initiating mobile device
`further utilizes and incorporates a unique identification number (e.g., telephone number, PIN
`
`10
`
`15
`
`20
`
`25‘
`
`30
`
`35
`
`Apple Inc.
`Ex. 1004 - Page 6
`
`Apple Inc.
`Ex. 1004 - Page 6
`
`

`

`number, etc.) associated with the target mobile device into the invitation message to locate and
`
`contact the target mobile device within the wireless mobile network. Once the initiating mobile
`
`device receives a response from the target mobile device at the listening port, the two mobile
`
`devices are able to establish a reliable virtual connection through the underlying data packet-
`
`based network protocol
`
`in order to exchange text messages directly between the two mobile
`
`devices through a session-based communication.
`
`Brief Description of the Drawings
`
`FIGURE 1 depicts a diagram of an environment for establishing an IM session in
`
`accordance with the present invention between a first mobile device and a second mobile device
`
`in a GSM mobile network system supporting GPRS as a data packet-based communications
`
`service, SMS as a text messaging service, and TCP/IP as an underlying data packet based
`
`network protocol.
`
`FIGURE 2 depicts a flow chart for establishing a peer-to-peer session-based IM system
`in accordance with the present invention.
`
`Detailed Description of the Invention
`
`Figure 1 depicts one environment to deploy an embodiment of the present invention. As
`
`depicted, the underlying digital mobile network system in this environment is the Global System
`
`for Mobile communications (GSM) 100 standard. Under the GSM standard, each of the mobile
`
`devices 105 and 110 includes a Subscriber Information Module (SIM) card that contains unique
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`identification information that enables the GSM system to locate the mobile devices within the
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`network and route data to them. A current commercial example of a mobile device (e.g.,
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`smartphone, PDA, handheld, etc.) that might be used in Figure 1 could be Research In Motion's
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`(RIM) BlackBerry handheld devices, which includes a QWERTY keyboard to facilitate the typing
`
`of text. As depicted, a GSM architecture includes the following components: base transceiver
`
`stations (BTS) 115 and base station controllers (380) (120A or 1203) for managing the
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`transmission of radio signals between the MSC (defined below) and the mobile devices, mobile
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`service-switching centers (MSC) (125A and 1258) for performing the all switching functions and
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`controlling calls to and from other telephone and data systems, a home location register (HLR)
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`130 for containing all the administrative,
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`routing and location information of each subscriber
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`registered in the network, visitor location registers (VLR) (135A and 1353) for containing selected
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`administrative information about subscribers registered in one HLR who are roaming in a another
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`HLR, and an equipment identity register (EIR) (not shown) for containing a list of all valid mobile
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`equipment on the network). As depicted in Figure 1, in one architecture of a GSM network, there
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`may be exist one HLR while there may exist multiple MSCs (each with a related VLR') which each
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`serves a different geographic area. The M805 also provide the interface for the GSM network to
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`Ex. 1004 - Page 7
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`more traditional voice networks 170 such as the PSTN. This underlying GSM architecture
`provides radio resources management (e.g., access, paging and handover procedures, etc),
`mobility management
`(e.g.,
`location
`updating,
`authentication and security,
`etc.),
`and
`communication management (e.g., call routing, etc.) in order to enable mobile devices in the
`GSM network to send and receive data through a variety of services,
`including the Short
`Message Service (SMS), an asynchronous bi-directional
`text messaging service for short
`alphanumeric messages (up to 160 bytes) that are transported from one mobile device to another
`mobile device in a store-and-forward fashion.
`
`page-mode messaging service, such as SMS, that relies upon the underlying GSM mechanisms
`to resolve routing information in order to locate destination mobile devices.
`Page-mode
`messaging services such as SMS transmit messages that are independent or asynchronous with
`each other, but there is no formal relationship between one message and another.
`In contrast, an
`IM session that is implemented in accordance with the present invention is a sessiOn-mode or
`
`components: a short message service center (SMSC) (140A or 1408) for storing and fon/varding
`messages to and from one mobile device to another, an SMS Gateway-MSG (SMS GMSC) for
`receiving the short message from the SMSC (140A or 1403) and interrogating the destination
`mobile device's HLR 130 for
`routing information to determine the current
`location of the
`destination device to deliver the short message to the appropriate MSC (125A or 1258). The
`SMS GMSC is typically integrated with the SMSC 140.
`In a typical transmission of an SMS text
`message from an originating mobile device 105 to a receiving mobile device 110,
`(i) the text
`message is transmitted from the mobile 105 to the MSC 125A, (ii) the MSC 125A interrogates its
`VLR 135A to verify that the message transfer does not violate any supplementary services or
`restrictions, (iii) the MSC 125A sends the text message to the SMSC 140A, (iv) the SMSC 140A,
`through the SMS GMSC, interrogates the receiving mobile device's HLR 130 (by accessing the
`SS7 network) to receive routing information for the receiving mobile device 110, (v) the SMSC
`sends the text message to the MSC 1258 servicing receiving mobile device 110, (vi) the MSC
`1258 retrieves subscriber information from the VLR 1353, and (vii) the MSC 125A transmits the
`text message to the receiving mobile device 110. Similar to other transactions on the GSM
`network, SMS text messaging utilizes telephone numbers as identifying addresses for mobile
`devices and as such, utilizes the SS7 network signaling system through which cellular service
`providers share information from the HLR with other service providers. As depicted in Figure 1,
`SS7 based signaling communication is represented by the broken lines.
`In contrast, the solid
`lines in Figure 1 represent data or voice based communications.
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`In addition to a page-mode messaging service such as SMS, a GSM network within
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`which the present
`
`invention may be deployed would also support a data packet based
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`communications service, such as the General Packet Radio Service (GPRS),
`
`that enables
`
`TCP/IP transmission protocol based communications between mobile devices within the network.
`
`As depicted in Figure 1, a core GPRS network exists in parallel
`
`to the existing GSM core
`
`network. The BSC 120 may direct voice traffic through the MSC (125A or 1258) to the GSM
`
`network and data traffic through the Serving GPRS Support Note (SGSN) (145A or 1458) to the
`
`GPRS network. Such communication between the BSC (125A or 1258) and the SGSN (145A or
`
`1458) may be, for example, based upon the IP network protocol communication 155. As such,
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`GPRS signaling and data traffic do not flow through the core GSM network.
`
`Instead, the core
`
`GSM network is used by GPRS only for table look-up in the HLR 130 and VLR (135A or 1358) to
`
`obtain routing,
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`location and other subscriber information in order to handle user mobility. The
`
`SGSN (145A or 1458) serves as a "packet-switched MSC," delivering data packets to mobile
`
`devices in its service area.
`
`The Gateway GPRS Support Note (GGSN)
`
`(150A or 1508)
`
`communicates with the SGSN (145A or 1458) through an IP based GPRS backbone 160 and
`
`serves as an interface to other external IP networks 165 such as the Internet and other mobile
`
`service providers' GPRS services.
`When an IM service is offered in a traditional online packet based network environment
`such as the Internet,
`the initiating computer must have knowledge of the IP address (and
`
`possibly, a port) that has been opened on the listening computer to receive IM communications.
`
`In order to provide such IP address information, an IM service will set up a log-on or registration
`
`server through which end users can record the IP address on which they are currently listening
`
`for instant messaging communications. Because all end users have access to (Le, know the IP
`
`address of) the registration server, they are able to obtain the IP addresses of other end users
`
`who have also logged-on or registered on the server and thereby initiate IM sessions directly with
`
`another end user's computer. Alternatively,
`
`the log—on or registration server may serve as a
`
`fowvarding agent between the two end users engaged in an instant messaging session.
`
`In contrast, in accordance with the present invention, a log-on or registration sewer for IM
`
`or presence purposes can be eliminated on a mobile network environment such as that depicted
`
`on Figure 1. Through the use of a page-mode messaging service, such as SMS, which transmits
`
`messages to mobile devices based upon their telephone numbers, an initiating mobile device can
`
`transmit its IP address (and a listening port) in an invitation message to a target mobile device
`
`through the target device's telephone number. Once the target device receives the invitation
`
`message, it is able to contact the initiating mobile device through the received IP address and the
`
`two devices can establish a reliable virtual connection, such as a TCP connection, for session-
`
`based lM communications. Figure 2 depicts a flow chart depicting the steps taken by an initiating
`
`and target mobile device to establish an IM session in accordance with the present invention.
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`Ex. 1004 - Page 9
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`then transmits a request to establish a TCP connection to the initiating mobile device's IP address
`and TCP port 260. The initiating mobile device receives this request 270 and a TCP connection
`is established between the IP addresses and TCP ports of the initiating and listening mobile
`devices and these devices are able to engage in an IM session over a reliable virtual connection
`280.
`
`While the foregoing detailed description has described the present invention using SMS,
`GSM, GPRS, and TCP/IP, other similar services and protocols may be used in a variety of similar
`environments in which the present invention may be implemented. For example and without
`limitation, rather than using SMS to transmit an IP address (and port) from the initiating mobile
`device to the listening mobile device through the devices' telephone numbers, an alternative
`embodiment of the present invention might use a PlN-to-PIN messaging technology (as, for
`example, offered in RIM's Blackberry handheld devices) to transmit the IP address (and port)
`through unique PIN numbers associated with the mobile devices, or an alternative paging
`protocol using telephone numbers. Furthermore, the present invention contemplates that the
`actual protocol used during an established lM session may also vary depending upon the
`preference of the implementation. For example and without limitation, Message Session Relay
`Protocol (MSRP) or any proprietary based protocol may be used during the IM session that is
`established in accordance with the present invention. Thus, various modifications, additions and
`substitutions and the like can be made without departing from the spirit of the invention and these
`are therefore considered to be within the scope of the invention as defined in the following claims.
`
`Apple Inc.
`Ex. 1004 - Page 10
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`Ex. 1004 - Page 10
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`What is claimed is:
`
`1. A method of establishing session-based instant messaging communications between mobile
`devices that support a data packet-based communications service over a digital mobile network
`system, the method comprising:
`
`opening a listening port on an initiating mobile device to receive communications through
`the data packet-based communications service;
`
`transmitting an invitation message containing the address and the listening port of the
`initiating mobile device to a target mobile device through a page-mode messaging
`service, wherein the target mobile device is located by providing to the page-mode
`messaging service a unique identification number that
`is used by the digital mobile
`network system to locate the target mobile device;
`
`receiving a response from the target mobile device at the listening port on the initiating
`wireless device through the data packet-based communications service; and
`
`establishing a virtual connection through the data packet-based communications service
`for the session-based instant messaging session between the initiating mobile device and
`the target mobile device.
`
`2. The method of claim 1 further comprising:
`
`opening a second listening port on the initiating mobile device to receive invitation
`messages through the page-mode messaging service;
`
`receiving, at the second listening port and through the page-mode messaging service, a
`message from another mobile device inviting the initiating mobile device to establish an
`instant messaging session, wherein such message contains the address and listening
`port of the other mobile device; and
`
`transmitting a response to the address and listing port of the other mobile device through
`the data packet-based communications service, wherein the response acknowledges the
`ability to establish a virtual reliable connection.
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`3. The method of claim 1 wherein the data packet-based communications service is GPRS and
`the digital mobile network system is GSM.
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`4. The method of claim 1 wherein the initiating mobile device and the target mobile device
`include QWERTY keyboards.
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`Apple Inc.
`EX. 1004 - Page 11
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`Ex. 1004 - Page 11
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`5. The method of claim 1 wherein the address of the initiating mobile device is an IP address and
`the listening port is a TCP port.
`
`6. The method of claim 1 wherein the page-mode messaging service is SMS.
`7. The method of claim 1 wherein the page-more messaging service is a PlN-to—PlN messaging
`service.
`
`8. The method of claim 1 wherein the unique identification number is a telephone number.
`9. The method of claim 1 wherein the u