Exhibit 4

Case 6:20-cv-00460-ADA Document 48-4 Filed 01/29/21 Page 1 of 10
REMARKS 

Serial No.: 10/612,471 

Examiner: Elahee, MD S 

Claims 1-20 are pending in this application. Claims 1 and 12 have been amended. 

Double Patenting 

The Examiner has made a non-statutory double patenting rejection based on claims 1-20 

of U.S. Patent Application No. 7,460,658. Based on the current amendment to the claims, 

Applicant does not believe a double patenting situation exists. 

35 u.s.c. § 103 

Claims 1-20 are pending in the application. Claims 1, 2, 4, 5, 12, 13 and 18 rejected 

under 35 U.S.C. § 103(a) as being unpatentable over Staples (5,889,845) in view of Cho 

(2003/0165145). Applicants respectfully traverse this rejection for at least the reasons stated 

below. 

As stated in MPEP §2143.01, to establish prima facie obviousness of a claimed 

invention, all the claim limitations must be taught or suggested by the prior art. In re Royka, 490 

F.2d 981, 180 USPQ 580 (CCPA 1974). Applicants respectfully submit, as is detailed above, 

that neither Staples nor Cho, either expressly or inherently, teach or suggest many limitations as 

recited in the pending claims. 

The Examiner has rejected all of the limitations of claim 1, except for "a virtual location 

indexer ... " based on FIG. 3, and various quotes out of the Summary of the Invention of Staples. 

However, the Summary of the Invention does not present the invention as it functions, it 

provides an overview. The description for FIG. 3 states "Referring now to FIG. 3, an 

embodiment used for telecommuters and road warriors is shown. For a user who is a 

"telecommuter", i.e., a user who is working at home and remotely connects to the corporate 

office, the telecommuter may operate with either a desktop or portable computer system, or 

optionally with another type of communications device. FIG. 3 illustrates a telecommuter 

operating with a desktop computer system, designated as 102A. If the telecommuter operates 

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with a desktop computer system 102A, the user telephony communication device 104 is 

preferably an add-in card to an expansion bus of the computer system 102A, such as a PCI 

(Peripheral Component Interconnect) card or AT bu,.., card, or may he an external device. As 

shown in FIG. 3, in one embodiment a telephone instrument 124 is connected to the computer 

system 102A. Alternatively, or additionally, the computer system 102A executes software which 

presents a "virtual telephone" on the video screen of the computer system 102A. The virtual 

telephone executing on the computer system preferably uses the computer's speakerphone, or the 

computer's built-in microphone and speakers, as the voice transmitter and receiver for the virtual 

telephone. For a "road warrior", i.e., a business traveler operating with a portable or notebook 

computer 102B, the user telephony communication device 104 preferably comprises a PC 

Card, or the user telephony communication device logic is hardwired to the computer 

motherboard. Users who are "road warriors", i.e., business users who travel and desire to "stay 

connected" to the corporate office, generally use a portable computer system 102B or a portable 

communications device (not shown). Thus, for road warriors, the user telephony communication 

device 104 preferably comprises a PCM CIA card, also referred to as a PC Card, adapted for 

insertion into a PCMCIA slot of the portable computer system 102B. Also, ink if the 

telecommuter uses a portable computer or notebook computer, the user telephony 

communication device 104 also preferably comprises a PC Card. The portable computer system 

102B may include an external telephone instrument which connects to the computer system 

102B. Alternatively, or additionally, as shown, the portable computer system 102B preferably 

executes software which presents a "virtual telephone" on the video screen of the computer 

system 102B, as described above. In this embodiment, the portable computer 102B preferably 

includes an integrated speakerphone which provides transmitter/receiver capabilities. As shown, 

each of the computers 102A and 102B are connected to the corporate office virtual presence 

server 106 via the public switched telephone network (PSTN). Each of the computers 102A and 

102B are also connected to the corporate office PBX 112 via the PSTN. In one embodiment, 

the user telephony communication device I 04 includes an analog modem 184, preferably a 

V.34 modem, which is used where an ordinary analog telephone line is available to connect to 

the corporate office. In a second embodiment, the user telephony communication device 104 

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utilizes an integrated services digital network (ISDN) terminal adapter 182. The ISDN 

embodiment provides higher speed data transmissions and improved voice quality. Any of the 

various embodiments preferably also supports a local group three facsimile (fax) machine. The 

PSTN connects to the corporate office virtual presence server 106 preferably via either ISDN 

terminal adapters 182 or analog V.34 modems 184, and the PSTN connects to the corporate 

PBX via PBX--Central Office phone lines, as is well known. As shown in FIG. 3, the virtual 

presence server 106 connects to the corporate PBX 112 via PBX lines. The corporate PBX 112 

connects to various telephone instruments 122 in the corporate office, as is well known. The 

virtual presence server 106 connects to the corporate PBX 112 to extend PBX features to the 

remote user and also to support voice communication between the corporate office and the 

remote user. The virtual pre,<iience ,<iierver 106 al,m connects to the corporate local area network 

(LAN) 114. As shown, the corporate LAN 114 may comprise an Ethernet network 132, a 

Token Ring network, or other type of local area network, as desired. Various computer systems 

are connected to the LAN 114, as is well known. In one embodiment, the computer systems 

102A and 102B comprise DSVD (digital simultaneous voice and data) modems as well as the 

appropriate software for enabling simultaneous voice and data transmissions. In another 

embodiment, the computer systems 102A and 102B include a communications device, such as 

a modem, which utilizes a special protocol for multiplexing multiple data types on a single 

communication,.., line, such as a telephone line, including voice, LAN data, fax data, and 

telephony control data. In the present disclosure, the term "telephony control data" includes 

PBX extension data as well as other telephony control information. It is noted that a road 

warrior preferably has virtual phone and virtual fax software applications executing on his 

computer system. The telecommuter operating from his home may include a "real" fax machine 

as well as a "real" phone. Where a telecommuter's system includes a physical fax machine, and 

an ISDN connection is used, the analog facsimile data generated by the fax machine is preferably 

re-digitized in the remote computer system 102 and communicated over the PSTN to the virtual 

presence server 106. In this embodiment, each of the remote computer system 102 and the 

virtual presence server 106 include a fax/modem chip. When the remote user sends a fax using 

the "real" fax machine, the remote computer 102 receives the fax, converts the analog data to 

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digital data, and transmits the digital data to the virtual presence server 106. The virtual 

presence server 106 uses its fax modem to peiform digital to analog conversion and provides the 

analog fax data to a "real" or virtual fax machine at any location, such as the corporate office. 

Alternatively, the virtual presence server may forward the fax data to a fax server for 

transmission." 

Applicant's claims state "a service-user calling station connected to a packet-based 

network, an improvement of an assembly for facilitating call connection between the first calling 

station and the service-user calling station, the service-user calling station having at least a first 

virtual calling-station identity in the first telephonic network such that the service-user calling 

station appears virtually resident in the first telephonic network". The service-user calling 

station is connected to a packet-based network, while the first calling station is connected to a 

telephonic network. The improvement is that the service-user calling station has a first virtual 

calling station identity in the first telephonic network, i.e., non-packet based network, while the 

logical identity is in the packet-based network, such that the service-user calling station appears 

virtually resident in the first telephonic network. Staples does not a disclose a packet-based 

network. There is nothing in Staples that teaches or suggests, expressly or inherently, that a 

packet-based network is used. In fact, even though Staples includes an ISDN connection, 

Staples goes on to state that the connection is via the PSTN connects to the corporate office 

virtual presence server 106 preferably via either ISDN terminal adapters 182 or analog V.34 

modems 184, and the PSTN connects to the corporate PBX via PBX--Central Office phone lines, 

as is well known. As shown in FIG. 3, the virtual presence server 106 connects to the corporate 

PBX 112 via PBX lines. The corporate PBX 112 connects to various telephone instruments 122 

in the corporate office, as is well known. presence as in a "virtual office." As one of ordinary 

skill in the art knows, the PSTN and a PBX are used for public switched telephone network calls, 

i.e. a circuit switched network, not a packet-based network. The Examiner has misinterpreted the 

prior art and distilled the invention down to a thrust or gist of the invention - both of which are 

impermissible and invalidates the Examiner's analysis. "Tn determining whether the invention 

as a whole would have been obvious under 35 USC 103, we must first delineate the invention as 

a whole. In delineating the invention as a whole, we look not only to the subject matter which is 

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literally recited in the claim in question ... but also to those properties of the subject matter which 

are inherent in the subject matter and are disclosed in the specification ... Just as we look to a 

chemical and its properties when we examine the obviousness of a composition of matter claim, 

it is this invention as a whole, and not some part of it, which must be obvious under 35 USC 

103." (Emphasis added) In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977) 

(citations omitted). Under this analysis, Staples is patentably distinct from Applicant's claimed 

invention under 37 CPR 1.111 (b ). Applicant's claims are patentable under this analysis. 

The Examiner states that Staples also teaches "the packet-based-network identity 

associated with logical connection of the service-user calling station to the packet data network 

and the virtual calling-station identity associated with a virtual residency location of the serviceuser calling station in the first telephonic network, and said indexer accessed pursuant to call 

routing of a call between the first calling station and the service-user calling station to permit 

effectuation of the call connection there between, wherein the call connection is local to the first 

telephonic network". However, as detailed in the above passage, the virtual residency in Staples 

is in the second local, not the first, wherein Applicant's claim, in one embodiment, describes the 

virtual calling-station identity is associated with the virtual residency location of the service-user 

calling station in the first telephonic network. In Staples, the disclosure teaches a virtual office, 

i.e. one is connected via the PSTN and a PBX to a corporation and it is as if the corporation is at 

their home. While, in Applicant's claim, in one embodiment, describescthe virtual callingstation identity associated with a virtual residency location of the service-user calling station, i.e. 

it is as if the caller is local to wherever he calls, he can call anywhere due to the nature of a 

packet based network. The user in Staples can only log into the corporation via the PSTN and 

PBX. Then it is as if the "corporation is in their home." 

Finally, the Examiner asserts that Cho teaches "indexing together the at least the first 

virtual calling-station identity of the service-user calling station with a selected packet-basednetwork identity of the service-user calling station". While Cho teaches indexing, Cho teaches 

compulsive indexing. A user must enter the addresses, specific code keys and group numbers, 

etc. For example, "[0033] In FIG. 1, the IP telephony system comprises a gatekeeper (G/K) 10, a 

plurality of IP terminals 22,24, a Authentication, Authorization and Account (AAA) server 30. 

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These elements are connected to the IP network. The G/K 10 includes a gatekeeper core 12, a 

Trivial File Transfer Protocol (TFTP) server 14, a Dynamic Host Configuration Protocol 

(DHCP) server 16 and a storage portion 18. The IP terminals 22, 24 are connected to the 

gatekeeper 10 for voice call service through the IP network or call service among the IP 

terminals. The call service among the IP terminals includes 1 :n multi-call (or group call) 

service as well as 1:lcall service. The multi-call or group call service means that any source IP 

terminal i,fii connected to a plurality of destination IP terminal,.., managed by the gatekeeper 10. 

The IP terminals 22, 24 are connected to the DHCP server 16 of the gatekeeper 10 to be 

allocated their IP addresses and TFTP server IP addresses. Then they are connected to the TFTP 

server 14 to be allocated their phone numbers, namely subscriber's information of H. 323 IDs 

and gatekeeper IP addresses. The subscriber's information of phone number can adopt various 

terms according to the protocol, and the phone number is used as a virtual address, 

Virtual_ Address #. Alternatively, the IP terminals 22,24 are provided the destination IP 

terminals' IP addresses from the gatekeeper 10 using the destination IP terminals' phone 

number,..,, H323 ID,<ii, if they want to perform multi-calls. Subsequently, the source IP terminals 

22,24 transmit compulsive setup message to the destination IP terminals corresponding to the IP 

addresses provided by the gatekeeper 10. Meanwhile, the source IP terminals 22, 24 transmit 

connection message automatically to the destination IP terminals without destination IP 

terminal's confirmation when they receive the compulsive setup message. Therefore, any ,<iiource 

IP terminal becomes connected to the destination IP terminals compulsively when it generates 

compulsive reception message according to multi-calls. In other words, the call or multi call is 

received irregardless of whether or not the destination party or parties respond. The gatekeeper 

core 12 controls actions undertaken by the gatekeeper 10 generally. The storage portion 18 

comprises a database in order to store information on the source IP terminals, which request 

registration. The storage portion 18 also stores package files to the database. The package files 

are downloaded from the AAA server 30 and stored by the gatekeeper 10 with the subscriber's 

information of the source TP terminal. At this time, the subscriber's information includes phone 

numbers of H.323 IDs and IP addresses, stored in the DB. When a function of the DHCP server 

16 is used, the IP addresses are not necessary. The DHCP server 16 allocates the IP addresses 

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and the TFTP server's IP addresses to the destination IP terminals. The TFTP server 14 allocates 

subscriber's information as phone numbers of H.323 IDs and gatekeeper's IP addresses to the 

destination IP terminals. The TFTP server 14 stores IP addresses corresponding to the source IP 

terminals of H.323 IDs to the storage portion 18 in response to that information on subscribers 

who want to call, namely phone numbers of H.323 IDs, is provided by the source IP terminals. 

The elements of the gatekeeper 10 including the gatekeeper core 12, the TFTP server 14, the 

DHCP server 16 and the storage portion 18 are interconnected each other in order to make interprocessor communication possible. The AAA server 30 authenticates the IP terminals 22, 24 in 

order for them to be connected to the IP network and accounts them for their connection. 

[0046] Referring to the FIGS. 4a and 4b, the destination IP terminals 24 check if key data 

requesting the compulsive reception multi-calls from the user are input through the user interface 

portion 212 at step 410. The key data may be comprised of "a specific code key +group 

number". Keys, not used as telephone numbers such as "#", "*", etc., in the keypad maybe 

used as the specific code key. The group number means numbers designating a group of the 

de,,;,tination IP tenninal,,;,, defined for the multi-calls. Accordingly, the source IP terminal 22 can 

decide the compulsive reception multi-calls by confirming that first key data are the specific 

code keys through the user interface portion 212. The source IP terminal proceeds to step 412 

and performs corresponding function when it decides the call request is a common call 

reque,,;,t, not the compulsive reception multi-call.,;, at ,,;,tep 410." 

Cho discloses a call service. Applicant's claim, in one embodiment, describes an 

assembly and method of improving a communication network. Neither Staples nor Cho provide 

the necessary elements to obviate Applicant's invention. "[R]ejections on obviousness cannot be 

sustained by mere conclusory statements; instead, there must be some articulated reasoning with 

some rational underpinning to support the legal conclusion of obviousness." KSR, 550 U.S., 82 

USPQ2d at 1396 quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 

2006). The Examiner has not provided any reasoning as to how the structure in Lee is in any 

way similar to that of Applicant's claims. Under this analysis, Cho is patentably distinct from 

Applicant's claimed invention under 3 7 CPR 1.111 (b ). Applicant's claimed invention is 

patentable under this analysis. 

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However, purely in the interest of expediting the prosecution of the instant invention, 

Applicant has amended claims 1 and 12 to include the following limitations: 

1. ( currently amended) In a communication network having at least a first calling 

station connected to a first telephonic network and a service-user calling station 

automatically connected to a packet-based network, an improvement of an 

assembly for facilitating call connection between the first calling station and the 

service-user calling station, the service-user calling station having at least a first 

virtual calling-station identity in the first telephonic network such that the serviceuser calling station appears virtually resident in the first telephonic network, said 

assembly comprising: 

a virtual-location indexer embodied at the packet-based network, said 

indexer for automatically indexing together the at least the first virtual callingstation identity of the service-user calling station with a selected packet-basednetwork identity of the service-user calling station, 

the packet-based-network identity automatically associated with logical 

connection of the service-user calling station to the packet data network and the 

virtual calling-station identity associated with a virtual residency location of the 

service-user calling station in the first telephonic network, 

said indexer automatically accessed pursuant to call routing of a call 

between the first calling station and the service-user calling station to permit 

effectuation of the call connection there between, wherein the call connection is 

local to the first telephonic network, while permitting the first calling station to be 

physically located at another location. 

Support for such limitations can be found at least in paragraphs [0029] through [0046] of 

the instant invention. Neither Staples nor Cho teach or suggest such limitations. 

The Examiner states that he is taking Official Notice regarding claims 3, 16 and 17 that 

he is taking Official Notice that Staples teaches the "service-user calling station is moveable, 

separately connectable at the first logical location and at the at least the second logical location, 

and wherein the selected packet-based network identity indexed together by said virtual location 

indexer is updateable responsive to movement and connection of the service-user calling station 

separately at the first logical location and at the at least the second logical location." However, 

Staples does not teach whether the index is update able. Though, the Examiner is taking 

Official Notice that is well known to one in of ordinary skill in the art to modify Staples to 

incorporate the feature of updating an index in Staples invention. Still, as set forth above, the 

element "indexing together the first virtual calling-station identity of the service-user calling 

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station with the selected packet-based-network identity of the service-user calling station" is 

not in Staples invention. 

It would not be appropriate for the Examiner to take official notice of facts without citing 

a prior art reference where the facts asserted to be well known are not capable of instant and 

unquestionable demonstration as being well-known. 

It is never appropriate to rely solely on "common knowledge" in the art without 

evidentiary support in the record, as the principal evidence upon which a rejection was based. 

Zurko, 258 F.3d at 1385, 59 USPQ2d at 1697 ("[T]he Board cannot simply reach conclusions 

based on its own understanding or experience-or on its assessment of what would be basic 

knowledge or common sense. Rather, the Board must point to some concrete evidence in the 

record in support of these findings."). While the court explained that, "as an administrative 

tribunal the Board clearly has expertise in the subject matter over which it exercises 

jurisdiction," it made clear that such "expertise may provide sufficient support for conclusions 

[only] as to peripheral issues." Id. at 1385-86, 59 USPQ2d at 1697. As the court held in Zurko, 

an assessment of basic knowledge and common sense that is not based on any evidence in the 

record lacks substantial evidence support. Id. at 1385, 59 USPQ2d at 1697. 

As such Applicant would like the examiner to support each and every instance of his 

statements above as to where every element of Applicant's claim elements are supported in 

Staples. 

As all the independent claims are allowable, all the dependent claims depending 

therefrom are also allowable. Per the above comments, Applicant believes the current claims are 

in condition for allowance. As such, Applicant believes that claims 1-20 are in condition for 

allowance. 

CONCLUSION 

For the above reasons, the foregoing amendment and response places the Application in 

condition for allowance. Therefore, it is respectfully requested that the rejection of the claims be 

withdrawn and full allowance granted. Should the Examiner have any further comments or 

suggestions, please contact the undersigned. 

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