Exhibit 8

Case 6:20-cv-00460-ADA Document 51-1 Filed 02/24/21 Page 1 of 23
PATENT 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 

IN RE: APPLICATION OF 

TITLE 

APPLICATION NO. 

FILED 

CONFIRMATION NO. 

EXAMINER 

ART UNIT 

LAST OFFICE ACTION 

(Supplemental) 

ATTORNEY DOCKET NO. 

MAIL STOP AMENDMENT 

Commissioner for Patents 

P.O. Box 1450 

Alexandria, VA 22313-1450 

Dear Sir: 

Xiangyang LI, et al. 

METHOD, A 

TELECOMMUNICATION SYSTEM 

AND A NETWORK NODE FOR 

SPONSORING A 

COMMUNICATION SERVICE 

13/381,412 

December 29, 2011 

4160 

Quoc Due Tran 

2656 

April 16, 2013 

: LUTZ 201358US01 

ALU No. 805653 

AMENDMENT A 

Responsive to the Office Action mailed March 7, 2013 and the Supplemental 

Office Action mailed April 16, 2013, regarding the above-referenced patent application, 

the Applicants respectfully request amendment and reconsideration of the application. 

Amendments to the Claims are reflected in the listing of claims which begins on 

page 2 of this paper. 

Remarks/Arguments begin on page 7 of this paper. 

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Case 6:20-cv-00460-ADA Document 51-1 Filed 02/24/21 Page 2 of 23
AMENDMENTS TO THE CLAIMS: 

The listing of claims will replace all prior versions, and listings of claims in the 

application: 

LISTING OF THE CLAIMS 

1. (Currently Amended) A method for sponsoring a communication service, 

the method comprising: 

receiving a request for communication services; 

accessing, dynamically, a multi-dimensional rule for charging a sponsor of said 

communication services at least a portion of total charges for the requested 

communication services based at least on at least one respective value of at least one 

respective parameter other than an identity of an originator of the request for 

communication services, an intended recipient of a communication of the requested 

communication services and an identity of the sponsor; 

providing wherein said communication service is made available directly, i-R 

particular to a user of said communication service, directly, and wherein a rule, in 

particular applicable for charging a sponsor of said communication service, is 

determined dynamically; and 

generating a charging record for charging the sponsor according to the multidimensional rule. 

2. (Currently Amended) A- The method according toof claim 1, wherein a first 

cost for the usage of said communication service is charged at least partially to said 

sponsor, in particular by determining a second cost, in particularthe second cost 

depending on said rule and said first cost. 

3. (Currently Amended) A- The method according toof claim 1, wherein said 

rule depends on aR-the originator of the request or a-the intended recipient of said 

communication service. 

2 

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4. (Currently Amended) A- The method according toof claim 1, wherein an 

advertisement is added to said communication service. 

5. (Currently Amended) A- The method according toof claim 4, wherein said 

rule is determined depending on information about said advertisement. 

6. (Currently Amended) A- The method according toof claim 1, wherein said 

sponsor is reimbursed at least partially, in particular by a user of said communication 

service, in particular by determining a third cost. 

7. (Currently Amended) A- The method according to claim 1, wherein said rule 

depends on information about the location of a user of said communication service. 

8. (Currently Amended} A system for sponsoring a communication service, 

comprising: 

A---2--communication meanstelecommunications network for making said 

communication service available directly, in particular to a user of said communication 

service, and 

A-~first proeessing meansbalance management server for dynamically 

determining a multi-dimensional rule, in particular applicable for charging a sponsor of 

said communication service at least a portion of · total charges for the requested 

communication services based at least on at least one respective value of at least one 

respective parameter other than an identity of an originator of the request for 

communication services, an intended recipient of a communication of the requested 

communication services and an identity of the sponsor. 

9. (Currently Amended) A-The system according toof claim 8, further 

comprising~ 

___ a second processing meanscharging server for charging a first cost for the 

usage of said communication service at least partially to said sponsor, in particular by 

3 

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determining a second cost, in particular the second cost depending on said rule and 

said first cost. 

10. -16. (Canceled) 

17. (Currently Amended) A device for sponsoring a communication service, 

comprising~ 

___ a balance management server first processing means for dynamically 

determining a multi-dimensional rule, in particular applicable for charging a sponsor of 

said communication service at least a portion of total charges for the requested 

communication services based at least on at least one respective value of at least one 

respective parameter other than an identity of an originator of a request for 

communication services. an intended recipient of a communication of the requested 

communication services and an identity of the sponsor. 

18. (Currently Amended) A-The device according toot claim 17, further 

comprising a charging serversecond processing means for charging a first cost for the 

usage of said communication service at least partially to said sponsor, in particular by 

determining a second cost, in particular the second cost depending on said rule and 

said first cost. 

19. (Currently Amended) A-The device according toot claim 17, wherein said 

balance management server first processing means. is adapted configured to determine 

an originator of the request or a-an intended recipient of said communication service, 

and wherein said balance management server first processing means is adapted 

configured to determine said rule depending on said originator of the request or said 

intended recipient of said communication service. 

20. (Currently Amended) A-The device according toot claim 17 further 

comprising a first storage meanssponsorship database for storing said rule. 

4 

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21. (Currently Amended) A-The device according toof claim 17, further 

comprising third processing meansan advertisement server for adding an advertisement 

to said communication service. 

22. (Currently Amended) A-The device according toof claim 21, wherein said 

balance management server first processing means is adapted configured to determine 

said rule depending on information about said advertisement. 

23. (Currently Amended) A-The device according toof claim 17, further 

comprising a fourth processing meansprocessor for reimbursing said sponsor, in 

particular by a user of said communication service, in particular by determining a third 

cost fGB. 

24. (Canceled) 

25. (Currently Amended) A-The device according to claim 17, wherein said 

balance management serverfirst processing means is adapted configured to determine 

information about a location of a user of said communication service, and wherein said 

balance management server first processing means is adapted configured to determine 

said rule depending on said location of said user. 

26. (Currently Amended) A non-transient computer readable medium 

comprising: 

instructions for a computer program for sponsoring a communication service, 

wherein said computer program.which when executed o-n-QY_a computer, causes the 

computer to~ 

_____ make a communication service available directly, in particular to a user of 

said communication service, and 11.iherein said computer readable program, 'lt'hen 

executed on a computer causes the computer 

_____ to dynamically determine a multi-dimensional rule, in particular applicable 

for charging a sponsor of said communication service at least a portion of total charges 

5 

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for the communication service based at least on at least one respective value of at least 

one respective parameter other than an identity of an originator of a request for the 

communication service, an intended recipient of a communication of the requested 

communication service and an identity of the sponsor, dynamically. 

27. (Currently Amended) A computer program product for sponsoring a 

communication service, comprising~ 

___ -a non-transient computer usable readable medium having a computer readable 

programinstructions, wherein said computer readable program which, when executed 

GA-.!rl..a computer, causes the computer to make a communication service available 

directly, in particular to a user of said communication service, and wherein said 

computer readable program, 111hen executed on a computer causes the computer to 

dynamically determine a multi-dimensional rule, in particular applicable for charging a 

sponsor of said communication service at least a portion of total charges for the 

communication service based at least on at least one respective value of at least one 

respective parameter other than an identity of an originator of a request for the 

communication service, an intended recipient of a communication of the requested 

communication service and an identity of the sponsor, dynamically. 

28. (New) The method of claim 1 wherein the at least one respective parameter 

comprises at least one of a user location, a type of service, a direction of service, time 

information, a payment type and rule priority information. 

6 

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REMARKS 

The Applicants have now had an opportunity to carefully consider the comments 

set forth in the Office Action that was mailed March 7, 2013 and the Supplemental 

Office Action mailed April 16, 2013. All of the rejections and objections are respectfully 

traversed. Amendment and reconsideration of the Application are respectfully 

requested. 

The Office Action 

In the Supplemental Office Action that was mailed April 16, 2013: 

claims 1 and 26 were objected to for alleged reasons of form; 

claims 1 and 26 - 27 were rejected under 35 USC §101 for allegedly being 

directed toward non-statutory subject matter; 

the specification was objected to in regards to claims 26 and 27; 

claims 1, 3, 7, 8, 17, 19 - 20 and 25 - 27 were rejected under 35 USC §102(b) 

as allegedly being anticipated by U.S. Patent Application Publication Number 

2003/0076940 by Manto ("Manto"); · 

claims 2, 9, 18 and 24 were rejected under 35 USC §103(a) as allegedly being 

obvious in view of Manto and U.S. Patent Number 7,424,102 to Koskinen et al. 

("Koskinen"); 

claims 4 - 5 and 21 - 22 were rejected under 35 USC §103(a) as allegedly 

being obvious in view of Manto and U.S. Patent Application Publication Number 

2001/0048737 by Goldberg et al. ("Goldberg"); and 

claims 6 and 23 were rejected under 35 USC §103(a) as allegedly being obvious 

in view of Manto and U.S. Patent Application Publication Number 2006/0034438 by 

O'Neill ("O'Neill"). 

The Present Application 

By way of brief review, the present application is directed toward a flexible, 

dynamic method that facilitates a sponsor totally, or partially, sponsoring communication 

services of a communications service user. The disclosed methods and systems 

provide a mechanism for a portion of communication service charges, to be paid for by 

7 

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Case 6:20-cv-00460-ADA Document 51-1 Filed 02/24/21 Page 8 of 23
a sponsor, to be determined through the use of a multi-dimensional rule and without 

delaying the provision of the communication service. That is, the methods and systems 

of the present application provide communication services to the user directly, without 

delay such as would be caused by requiring a menu selection or other information 

collection procedures. The multi-dimensional rule allows a proportion or amount to be 

paid by a sponsor to be determined according to plural characteristics of the 

communication service or associated with the communication service that is desired. 

For example, during time of natural disaster at a particular location, a 

government may elect to pay for all communication services for particular individuals if 

they are in a particular location. In an alternative, in order to alleviate bandwidth 

demands during a time of crisis, the government may elect to pay for or subsidize only 

low bandwidth communication services such as, for example, SMS messages for 

everyone in the area of the crisis or, for example, only particular individuals that meet 

income criteria or are associated with a particular government program. In this regard, 

the methods and systems are able to provide this flexibility by determining or accessing 

a multi-dimensional rule, for charging the sponsor of the communication service that is 

based at least on at least one respective value of at least one respective parameter 

other than an identity of an originator of a request for the communication service, an 

intended recipient of a communication of the requested communication service and an 

identity of the sponsor. 

As indicated above, such parameters might include the location of the calling or 

called party, the time of day, the day of the week, whether or not a user has agreed to 

receive an advertisement, the identity of an advertisement, the type of service, the 

direction of the call or communication (i.e., whether the call, message or information is 

incoming or outgoing), whether or not the communication is a "roaming" communication 

(e.g., see paragraphs 42 - 50 of the published version of the application: U.S. 

2012/0106722 A 1 ), etc. 

The Cited Documents 

In contrast, it is respectfully submitted that the cited documents, to the extent 

they mention communication sponsorship; describe less flexible arrangements and/or 

8 

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Case 6:20-cv-00460-ADA Document 51-1 Filed 02/24/21 Page 9 of 23
arrangements that do not provide communication services directly. 

For example, Manto allegedly describes systems and methods for providing 

sponsored or universal telecommunication service and a third-party payer service. It is 

respectfully submitted that Manto allegedly discusses a method of operating a 

telecommunications device wherein the telecommunications device is used to detect an 

outgoing call from a calling party to a called number. The calling number is used to 

determine whether or not the calling party is a universal service user (Abstract). If it 

is determined that the called number is among the class of numbers exempt from 

charges. the call is connected. A determination on the sufficiency of funds in a prepaid 

account is made. If it is determined that there are insufficient funds in a prepaid account 

to cover charges associated with the outgoing call, a message is generated and sent 

to the calling party or a 3rd party requesting authorization to charge an additional 

fee for connecting the call with the called party and providing related information or 

application services. User input is received from a calling party, indicating the 

calling party's authorization of such charge. The connection between the calling and 

called party is made (Abstract). It is respectfully submitted that this is not fairly 

construed as providing communication service directly. as that word is used in the 

present application (e.g., see paragraphs 3 and 7 of the published version of the 

present application). 

The Office Action cites paragraphs 44, 29 and 67 of Manto against claims 1, 8, 

17 and 26. However, it is respectfully submitted that the cited paragraphs do not 

disclose or suggest "making said communication services available directly." 

Paragraph 7 of the present application indicates that an advantage of the method 

of the present application is that communication services made available to the user 

directly, e.g. without any delay or disruption e.g. by advertisement or a prompt to said 

user. 

In contrast, cited paragraph 29 of Manto discusses smart card, phonecard and 

virtual phonecard based operations. It is respectfully submitted that the use of such 

cards requires a disruption and/or delay for the entry of card information. 

Cited paragraph 67 is part of a discussion of Figure 6. Taken alone, paragraph 

67 indicates that if the calling party is on a sponsored list, then the call is 

9 

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completed. Accordingly, the Office appears to have felt justified in asserting that 

paragraph 67 discloses making communication services available directly. However, 

the discussion of Figure 6 begins at paragraph 64 and paragraph 65 clearly indicates 

(as does Figure 6 itself) that incoming calls are received and the incoming caller is 

asked to pay. Accordingly, it is respectfully submitted that the cited portion do not 

disclose making said communication services available directly. 

Cited paragraph 44 addresses aspects of Figure 1 (i.e. Figure 1a and Figure 

1 b ). Figure 1 a includes a number of processing paths beginning with an incoming 

call. Most of the paths include "generate message" and the generation of a message 

indicating: "to complete this call please accept an additional charge of _/minute by 

pressing # or saying yes. Accordingly, it is respectfully submitted that the cited portion 

do not disclose making said communication services available directly (e.g. without any 

delay or disruption, .§.:..9.:._by advertisement or a prompt ). 

Additionally, it is respectfully submitted that Manto does not disclose the 

determination of a rule for charging of the type recited in, for example, claim 1 of the 

present application. For example, in regard to the rule, the Office Action characterizes 

paragraphs 29 and 67 as indicating that a sponsor approves communication costs for 

particular users. Even if this characterization is correct, it does not disclose a rule that 

determines a cost of a sponsor based on a parameter value other than an identity of an 

originator of a request for the communication service, an intended recipient of a 

communication of the requested communication service and an identity of the sponsor, 

as is now recited in, for example, claim 1. 

Koskinen is directed toward charging for an IP-based communication 

system. Column 3, line 59 - column 4, line 49 of Koskinen is cited for its discussion of 

sponsorship charging information and for a table including examples of a sharing 

code. For example, code 00 refers to normal charging - charges are not shared. It is 

used when an originating subscriber is charged for the full cost and the user of 

terminating part does not bear any of the charges; and code 06, which indicates that the 

user of the terminating part bears a portion of the total charge. Code 01 indicates that 

the user of the terminating part or the service provider will bear all of the network access 

charge. 

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It is respectfully submitted that even if the table of Koskinen is considered to be a 

rule for charging, it is respectfully submitted that the cited portions of Koskinen do not 

disclose a rule for charging a sponsor based on a parameter value other than an 

identity of an originator of a request for the communication service, an intended 

recipient of a communication of the requested communication service and an identity of 

the sponsor, as is now recited in, for example, claim 1. 

Goldberg is directed toward a method and apparatus for providing 

advertisement supported communications. Paragraph 37, 20, 21, 25 and 44 - 45 are 

cited against claims of the present application. Cited paragraphs 25, 44 - 45 discuss 

scenarios wherein callers receive discounted or free calls in exchange for listening to 

advertisements. Paragraphs 20 and 21 describe a database that includes information 

indicating that a particular caller has signed up for the advertisement based 

discount. Cited paragraph 45 refers to Figure 6, which provides a flowchart wherein the 

calling party is identified, dialed digits are received, a determination is made as to 

whether the caller participates in the advertisement service and if so is connected to the 

dialed telephone. Subsequently an advertisement is selected and played to the caller 

and the billing record is generated. Cited paragraph 25 indicates that advertisers may 

provide different rate premiums for listening to their messages and that rate premiums 

cause callers to receive discounted or free calls. 

However, it is respectfully submitted that Goldberg does not disclose or suggest 

a particular mechanism for performing these functions. Moreover, it is respectfully 

submitted that Goldberg does not disclose or suggest accessing or determining 2 

multi-dimensional rule of the type recited, for example, in claim 1 of the present 

application. Instead, it is respectfully submitted that Goldberg appears to suggest a two 

stage process wherein, first it is determined whether or not a caller participates in the 

advertisement program. If the caller participates in the advertisement program, an 

advertisement is selected and played. Cited paragraph 25 might be said to imply that 

the selected advertisement identifies a rate premium. It is respectfully submitted that 

and rule that the Office might believe is associated with this this identification of a rate 

premium is one dimensional. That is, the rate premium is dependent solely on the 

selected advertisement. 

11 

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In contrast the multi-dimensional rule of the present application allows, for 

example, one user to receive a first level of sponsorship for receiving an advertisement 

and a second user to receive a second level of sponsorship for receiving the same 

advertisement. Moreover, the level of sponsorship received by either or both users can 

be further adjusted based on the location of the users, the time of day, the day of the 

week or any other parameter or set of parameters. 

O'Neill is concerned with a system wherein resources are allocated to respective 

users, but where a particular user may not need a portion of the resources allocated to 

that user during a particular period and wherein a second user might need resources in 

addition to those allocated to that second user. Under those circumstances, the system 

of O'Neil temporarily re-allocates the resources and credits the first user and charges 

the second user (e.g., claim 1 of O'Neill). For example, paragraph 9 of O'Neill indicates 

that a first subscriber of guaranteed resources in a communications network can allow 

the reallocation of the guaranteed resource to another user. Under those conditions, 

the user who originally paid for the resource guarantee is fully or partially compensated 

for a resource which what might otherwise go unused. Cited paragraph 71 discusses 

donated and borrowed resources. The last 12 lines of cited paragraph 71 indicate that 

borrowing costs assign cost components to a borrowing process and refer to a charge 

to the borrower and a credit to "the donor". 

It is respectfully submitted that this general discussion of reimbursement related 

to the reallocation of leased resources does not disclose or suggest reimbursement 

of a sponsor that sponsors communication services to a user. 

The Claims are Formal 

Claims 1 and 26 were objected to for allegedly not conforming to "current claim 

drafting practice." The Office Action alleges that the claims must be in 2-part form 

having a preamble, transition and body. While this assertion is respectfully traversed 

and while it is noted that 37 CFR §1.75(e) indicates a similar format "should" be 

followed if the case admits, and it is respectfully submitted that the suggested format is 

therefore not a requirement, it is noted that claims 1 and 26 have been amended and 

now conform to the suggested format. 

12 

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Accordingly, withdrawal of the objections to claims 1 and 26 is respectfully 

requested. 

The Claims Recite Statutory Subject Matter 

Claims 1 and 26 - 27 were rejected under 35 USC §101 for allegedly being 

directed toward non-statutory subject matter. 

However, in an effort to explain the reason for this rejection in regard to claim 1, 

the Office Action appears to make reference to the outdated and overturned Federal 

Circuit Court decision, In re Bilski and a related reliance on a so called "machine or 

transformation" test. In this regard, it is respectfully submitted that the Supreme Court 

of the United States has since ruled that the machine or transformation test 

promulgated by the Federal Circuit in Bilski is not the sole test for patent eligibility under 

35 USC §101. It is respectfully submitted that the Supreme Court indicated that what 

is at issue is whether or not the claim recites merely an abstract idea. It is respectfully 

submitted that claim 1 of the present application did not, and as amended does not, 

merely recite an abstract idea. Accordingly, claim 1 recites statutory subject matter. 

In this regard, the attention of the Office is directed toward the July 27, 2010 

Memorandum to the Patent Examining Corps from Robert W. Bahr, the Acting 

Associate Commissioner for Patent Examination Policy regarding Interim Guidance for 

Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappas. 

It is respectfully submitted that claim 1 clearly describes a particular solution to a 

particular problem to be solved, implements a concept in some tangible way and/or 

performs procedures that are observable and verifiable. For example, that the 

communication services are made available can be observed when the user is 

successful in making or receiving a call or sending or receiving a message. 

Additionally, charges made to the sponsor can also be observed. Accordingly, it is 

respectfully submitted that contrary to the assertion of the Office Action, claim 1 did not 

and after the present amendment does not recite "merely an abstract idea" and is 

patent eligible under 35 USC §101. 

For at least the forgoing reasons, claim 1 recites statutory subject matter and 

withdrawal of the rejection of claim 1 under 35 USC §101 is respectfully requested. 

13 

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Claims 26 and 27 were apparently rejected for allegedly reciting subject matter 

that could reasonably interpreted as being directed toward a signal or software program. 

However, claims 26 and 27 have been amended and recite non-transient 

computer readable medium. Accordingly, it is respectfully submitted claims 26 and 27 

are directed to a machine or manufacture and not a transient signal or "software per se". 

For at least the forgoing reasons, claims 26 and 27 recite statutory subject 

matter and withdrawal of the rejection of claims 26 and 27 under 35 USC §101 is 

respectfully requested. 

It is respectfully submitted that one of ordinary skill in the art would have 

understood and would understand that instructions for processors, processing means, 

computers or servers (e.g. Fig. 2 and Fig. 5) to perform aspects of the methods, 

depicted, for example in Figs. 3 and 6, would be or could be provided on non-transient 

computer readable media. Furthermore, the version of claim 26 and 27 that the Office 

Action characterizes as being reasonably interpreted as "software per se" were 

substantially the same as the original claims and were therefore self-supporting. To the 

extent that the characterization of the Office Action was correct, one of ordinary skill in 

the art would have understood that "software per se" can be included in, or on, nontransient computer readable media. Accordingly, it is respectfully submitted that the 

amendments to claims 26 and 27 do not represent new matter. 

The Specification 

The specification was objected to for allegedly failing to provide proper 

antecedent basis for the phrases "computer program product", "computer program" and 

"computer usable medium" as they are used in claims 26 and 27. 

However, it is respectfully submitted that claims 26 and 27 were substantially the 

same as original claims 26 and 27 and original claims 26 and 27 were part of the 

specification and were therefore were self-supporting (MPEP §2163: "See In re Koller, 

613 F.2d 819, 204 USPQ 702 (CCPA 1980) (original claims constitute their own 

description); accord In re Gardner, 475 F.2d 1389, 177 USPQ 396 (CCPA 1973); 

accord In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). It is now well 

14 

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accepted that a satisfactory description may be in the claims or any other portion of the 

originally filed specification. These early opinions did not address the quality or 

specificity of particularity that was required in the description, i.e., how much description 

is enough".). 

Additionally, it is respectfully submitted that one of ordinary skill in the art would 

know what "computer program product", "computer program" and "computer usable 

medium" mean. 

Accordingly, withdrawal of the objection to the specification is respectfully 

requested. 

The Claims Are Not Anticipated 

Claims 1, 3, 7, 8, 17, 19 - 20 and 25 - 27 were rejected under 35 USC §102(b) 

as allegedly being anticipated by Manto. 

In regard to claims 1, 8, 17 and 26, and in an effort to support the assertion that 

Manto discloses a method and device for sponsoring a communication service, wherein 

said communication service is made available directly, in particular to a user of said 

communication service, the Office Action cites paragraph 44 of Manto. 

However, it is respectfully submitted that cited paragraph 44 does not disclose 

providing a sponsored communication service directly. 

Paragraph 7 (i.e., page 2, lines 10 - 20 and in particular lines 5 - 20) of the 

present application indicates that the method of the present application is "very flexible 

in terms of amount of sponsorship and sponsored party and on the other hand said 

communication service is made available to said user directly, e.g., without any delay 

or disruption e.g. by advertisement or a prompt to said user. 

In contrast, it is respectfully submitted that cited paragraph 44 does not describe 

a sponsored service. Instead, paragraph 44 indicates that if the prepaid balance 

includes enough funds to cover the call, the call is complete unless it must first go 

through an authorization routine. It is respectfully submitted that paragraph 45 

describes the situation when the balance in the prepaid account is not sufficient. Under 

those conditions before the call is completed, the calling party will hear a voice on the 

line (or see a message or receiving indication one way or another) that informs the 

15 

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caller that they are reaching a number which requires an additional payment and asks 

the calling party if they are willing to pay the additional charge to complete the call for 

service. Accordingly, it is respectfully submitted that cited paragraph 44 does not 

disclose a sponsored communication service that is provided directly. It is respectfully 

submitted that paragraph 46 emphasizes the indirect nature of the call completion of the 

this aspect of Manto by indicating that the "software both interrupts the caller, queries 

the caller, determines whether to complete the call by seeing if the caller is willing and 

in many cases able to pay for the call, completes the call and then bills the call. 

Accordingly, it is respectfully submitted that the cited portion of Manto does not disclose 

or suggest that a call is sponsored or that communications services are made directly. 

For at least the foregoing reasons, it is respectfully submitted that claims 1, 7, 8, 

17 and 26 - 27, as well as claims 2 - 7, 9 and 18 - 25, which depend from claims 1, 8 

and 17 respectively, are not anticipated by Manto. 

Moreover, with regard to - - wherein a rule, in particular applicable for charging 

a sponsor of said communication service is determined dynamically--, the Office Action 

cites paragraphs 29 and 67. The Office Action characterizes paragraphs 29 and 67 as 

indicating that a sponsor approves communication costs for particular users. However, 

even if this were fairly construed as disclosing a rule, in particular applicable for 

charging a sponsor of said communication service is determined dynamically (which is 

disputed because a rule for approving or not approving is not a rule for charging for 

approved calls), claim 1 has been amended and now recites a multi-dimensional rule 

for charging a sponsor of said communication services at least a portion of total charges 

for the requested communication services based at least on at least one respective 

value of at least one respective parameter other than an identity of an originator of the 

request for communication services, an intended recipient of a communication of the 

requested communication services and an identity of the sponsor. 

It is respectfully submitted that Manto does not disclose a multi-dimensional 

rule that determines a cost of a sponsor based on a parameter value other than an 

identity of an originator of a request for the communication service, an intended 

recipient of a communication of the requested communication service and an identity of 

the sponsor, as is now recited in, for example, claims 1, 8, 17 and 26. 

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For at least the foregoing additional reasons, it is respectfully submitted that 

claims 1, 8, 17 and 26 - 27, as well as claims 2 - 7, 9 and 18 - 25, which depend from 

claims 1, 8 and 17 respectively, are not anticipated by Manto. 

With regard to claims 3 and 19, the Office Action characterizes paragraph 28, 29 

and 67 as disclosing that a rule depends on an originator or recipient of said 

communication service. However, claims 3 and 19 depend from claims 1 and 17 

respectively and even if the characterization of paragraphs 28, 29 and 67 were correct, 

it is respectfully submitted that the cited paragraphs do not disclose or suggest a rule 

dependent on an originator or recipient as well as at least one value of at least one 

other parameter, as is now recited in claims 1 and 17 from which claims 3 and 19 

depend. 

For at least the foregoing additional reasons, claims 3 and 19 are not anticipated 

by Manto. 

Claim 20 recites: the device of claim 17 further comprising a sponsorship 

database for storing said rule. 

In an effort to explain the rejection of claim 20, the Office Action cites Fig. 3, and 

paragraphs 29, 67, 93. 

However, it is respectfully submitted that cited Fig. 3 of Manto depicts a store of 

network monitoring and management tools, a store of quality of service and service 

level agreements and a store of cost models. It is respectfully submitted that Fig.3 

does not disclose a sponsorship database for storing said rule. 

Cited paragraph 29 indicates that smart card, phonecard or virtual phonecard 

services can be paid by a sponsor in such a way that the numbers that are able to be 

called can be restricted by the sponsor. Accordingly, the method of Manto uses both 

white-listing and blacklisting, and allows a sponsor to manage which parties may be 

contacted by the sponsored user during a telecommunication session. It is respectfully 

submitted that paragraph 29 does not disclose a sponsorship database for storing a 

rule for charging a sponsor of said communication services at least a portion of total 

charges. Even if the discussion of white-listing and blacklisting is considered to be 

suggestive of a rule, it is a rule for providing service, not a rule for charging for a service 

granted or provided. Furthermore, it is respectfully submitted that paragraph 29 does 

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not mention a database of any kind. 

Cited paragraph 67 indicates that software checks to see if the calling number is 

on a list of approved callers for which the sponsor will pay. Again, it is respectfully 

submitted that even if this discussion is considered to suggest a rule, it is a rule for 

providing service, not a rule for charging for service granted or provided. Furthermore, 

it is respectfully submitted that paragraph 67 does not mention a database. 

Cited paragraph 93 mentions a billing database, a USU account status database 

and a payment authorization database. The payment authorization database is 

described as being for recording authorizations by businesses and other organizations. 

These authorizations may include either generally authorize payment for USUoriginated calls to certain number, authorization for certain outgoing calls to the 

organization or other predetermined numbers, authorization for certain payment codes 

to be effective to place a call to a USU and other authorizations. It is respectfully 

submitted that even this discussion of the payment authorization database does not 

disclose a rule for charging a sponsor of said communication services at least a portion 

of total charges for the requested communication services. Even if this discussion is 

considered to suggest a rule, it is a rule for providing service, not a rule for charging for 

service granted or provided. 

For at least the foregoing additional reasons, it is respectfully submitted that 

claim 20 is not anticipated by Manto. 

With regard to claims 7 and 25, the Office Action cites paragraphs 89, 161 and 

claim 5 of Manto. 

However, for example, claim 7 recites: the method according to claim 1, 

wherein said rule depends on information about the location of a user of said 

communication service. As indicated above, "said rule" is a rule for charging a sponsor 

of said communication services at least a portion of total charges for the requested 

communication services. While the cited portions of Manto include the word "location", 

it is respectfully submitted that the cited portions of Manto do not disclose that a rule 

for charging depends on information about the location. 

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Instead, cited paragraph 161 refers to a location independent service. 

Likewise, cited paragraph 89 indicates that it is "possible for users to be authorized on 

the condition that they call pre-identified numbers from any location. 

Cited claim 5 of Manto recites, inter alia: using a calling number to determine, as 

necessary, the location of the calling party needing services ... so that a request for 

additional services and/or funds can be made... However, it is respectfully submitted 

that claim 5 does not disclose that a rule for charging a sponsor depends on 

information about the location of a user. 

It is respectfully submitted that in making these rejections the Office appears to 

be disregarding the "as a whole" requirement and distilling the invention down to a 

"gist", contrary to MPEP §2141.02(11). 

For at least the foregoing additional reasons, claims 7 and 25 are not anticipated 

by Manto. 

The Claims Are Not Obvious 

Claims 2, 9, 18 and 24 were rejected under 35 USC §103(a) as allegedly being 

obvious in view of Manto and Koskinen. 

It is respectfully submitted that the Office Action concedes that Manto does not 

disclose the subject matter of claims 2, 9, 18 and 24 and relies instead on column 3, 

line 59 - column 4, line 49 of Koskinen for the recited subject matter. 

However, while Koskinen mentions sponsorship charging information and 

shared percentage information it is respectfully submitted that the cited portions of 

Koskinen do not disclose or suggest a rule for charging a sponsor. Instead, Koskinen 

indicates that an attribute value pair (AVP) defines the amount of the fee (0 - 100%) 

that the service provider or terminating part is to pay. It is respectfully submitted that 

this attribute value pair is not fairly construed as a rule of the type disclosed and claimed 

in the present application. 

In any event, it is respectfully submitted that the attribute value pair of Koskinen 

is not fairly construed to be a multi-dimensional rule for charging a sponsor of said 

communication services at least a portion of total charges for the requested 

communication services based at least on at least one respective value of at least one 

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respective parameter other than an identity of an originator of the request for 

communication services, an intended recipient of a communication of the requested 

communication services and an identity of the sponsor as is now recited in the claims 

from which claims 2, 9, 18 and 24 depend. 

For at least the foregoing additional reasons, claims 2, 9, 18 and 24 are not 

anticipated and are not obvious, even in view of Manto and Koskinen. 

Claims 4 - 5 and 21 - 22 were rejected under 35 USC §103(a) as allegedly 

being obvious in view of Manto and Goldberg. 

With regard to claims 4 and 21, the Office Action cites paragraphs 20 - 21, 37 

and 44-45 of Goldberg. 

However, even if Goldberg could be construed as suggesting adding an 

advertisement to a communication service, it is respectfully submitted that Goldberg 

does not cure the deficiencies of Manto . 

That is, it is respectfully submitted that Goldberg does not disclose or suggest 

accessing or determining a multi-dimensional rule of the type recited, for example, in 

claims 1 and 17 of the present application. Instead, it is respectfully submitted that 

Goldberg appears to suggest a two stage process wherein, first it is determined whether 

or not a caller participates in the advertisement program. If the caller participates in the 

advertisement program, an advertisement is selected and played. Cited paragraph 25 

argu~bly implies that the selected advertisement identifies a rate premium. It is 

respectfully submitted that if this identification of a rate premium is construed to suggest 

a rule, the suggested rule is one dimensional. That is, the rate premium of Goldberg 

appears to be dependent solely on the selected advertisement. 

In contrast the multi-dimensional rule of the present application allows one user 

to receive a first level or rate of sponsorship for receiving an advertisement and a 

second user to receive a second level or rate of sponsorship for receiving the same 

advertisement. Moreover, the level of sponsorship received by either or both users can 

be further adjusted based on the location of the users, the time of day, the day of the 

week or any other parameter or set of parameters. That is, the rule for determining 

sponsor charges of the present application is multi-dimensional. 

For at least the foregoing additional reasons, claims 4 and 21, as well as claims 

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Case 6:20-cv-00460-ADA Document 51-1 Filed 02/24/21 Page 21 of 23
5 and 22, which depend respectively therefrom, are not anticipated and are not obvious, 

even in view of Manto and Goldberg. 

Claims 6 and 23 were rejected under 35 USC §103(a) as allegedly being 

obvious in view of Manto and O'Neill. 

In an effort to explain these rejections, the Office Action cites paragraphs 9 and 

71 of O'Neill 

However, paragraph 9 of O'Neil indicates that a first subscriber of guaranteed 

resources in a communications network can allow the reallocation of the guaranteed 

resource to another user. Under those conditions, the user who originally paid for the 

resource guarantee is fully or partially compensated for a resource which what might 

otherwise go unused. Cited paragraph 71 discusses donated and borrowed 

resources. The last 12 lines of cited paragraph 71 indicate that borrowing costs assign 

cost components to a borrowing process and refer to a charge to the borrower and a 

credit to "the donor". 

It is respectfully submitted that this general discussion of reimbursement related 

to the reallocation of leased resources does not disclose or suggest reimbursement 

of a sponsor that sponsors communication services to a user. 

For at least the foregoing additional reasons, claims 6 and 23 are not anticipated 

and are not obvious, even in view of Manto and Goldberg. 

Additionally, O'Neill is non-analogous art with regard to the present application. 

One of ordinary skill in the art would not have looked to the communication resource 

reallocation of O'Neill to address problems of implementing a sponsored communication 

service. It is respectfully submitted that the Office cites O'Neill only in impermissible 

hindsight based on information gleaned only from the present application. 

For at least the foregoing additional reasons, claims 6 and 23 are not anticipated 

and are not obvious, even in view of Manto and Goldberg. 

Telephone Interview 

In the interests of advancing this application to issue the Examiner is invited to 

telephone the undersigned to discuss the foregoing or any suggestions that the 

Examiner may have to place the case in condition for allowance. 

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CONCLUSION 

Claims 1 - 9, 17 - 23 and 25 - 27 remain in the application. Claims 1 - 9, 17 -

23 and 25 - 27 have been amended. Claim 24 has been canceled. Claim 28 has 

been added. For at least the forgoing reasons, the application is in condition for 

allowance. Accordingly, an early indication thereof is respectfully requested. 

t8J Remaining Claims, as delineated below: 

(1) FOR (2) CLAIMS REMAINING AFTER (3) NUMBER EXTRA 

AMENDMENT LESS HIGHEST NUMBER 

PREVIOUSLY PAID FOR 

TOTAL CLAIMS 20 I -20= 0 

INDEPENDENT CLAIMS 5 I -5 = 0 

t8J This is an authorization under 37 CFR 1.136(a)(3) to treat any concurrent 

or future reply, requiring a petition for extension of time, as incorporating a petition for 

the appropriate extension of time. 

t8J The Commissioner is hereby authorized to charge any filing or prosecution 

fees which may be required, under 37 CFR 1.16, 1.17, and 1.21 (but not 1.18), or to 

credit any overpayment, to Deposit Account Number 06-0308. 

In the event the Examiner considers personal contact advantageous to the 

disposition of this case, he/she is hereby authorized to telephone the undersigned, at 

216.363.9000. 

Date 

Respectfully submitted, 

Fay Sharpe LLP 

Jos D. Dreher, Reg. 37,123 

Thomas Tillander, Reg. No. 47,334 

The Halle Building, 5th Floor 

1228 Euclid A venue 

Cleveland, Ohio 44115-1843 

216.363.9000 

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