Overture Services, Inc. v. Google Inc.

Filing 82

DECLARATION in Support re 70 (Christine P. Sun) Opposition to Overture's Motion for Protective Order filed by Google Inc.. (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D# 5 Exhibit E# 6 Exhibit F# 7 Exhibit I# 8 Exhibit J# 9 Exhibit K# 10 Exhibit L# 11 Exhibit M# 12 Exhibit N# 13 Exhibit O# 14 Exhibit P# 15 Exhibit Q# 16 Exhibit R)(Related document(s) 70 ) (Sun, Christine)

Overture Services, Inc. v. Google Inc.

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Page 1 of 10

Doc. 82 Att. 2

Case 3:02-cv-01991-JSW

Document 82-3

Filed 08/11/2003

/'" ~OO
UNITED STATE JEPARTMENT OF COMMERCE Patent and Trad~mark Office
Address: COMMISSIONER OF PATE NTS AND TRADEMA Washington, D.C, 20231
APPLICATION NO,

ARST NAMED INVENTOR

,'C

:.'; 1

EXAMINER

'io 11,
, I, ART UNIT

"1"

PAPER NUMBER

DATE MAILED:

Please find below andlor attached an Office communIcation concerning this application or

proceeding,
Commissioner of Petents Bnd Trademarks

GOG 31624
PTO' 9DC IRo. 2"'1

us GPO

19"4~

FlioCooy

Dockets.Justia.com

Case 3:02-cv-01991-JSW

Document 82-3

Filed 08/11/2003

Page 2 of 10

AppIicallon No,

Office Action Summary
on

09/322 677
Examiner

Cuong H, Nguyen

29 ResponSIve to communlcatlon(s) "led

ocr 25 1999

This action IS FINAL.
In accordance with the practice under

prosecution as to the merits is Closed Since this appilcat,on IS In conditIon for allowance except lor formal matters Ex parte OuQ/I835 CD, 11 , 453 O, G, 213,
month(s), or thirty days, whichever IS

A shortened statutory penod for response to this action IS set to expire

longer , trom the mailing date of this communication Failure to respond wit/un the penod for response will cause the application to become abandoned (35 U S C 9133). Extens,ons of time may be obtained under the prOviSIOns of 37 CFR 1 136(a)
Disposition of Claim
29 Clalm(s) 1Of the above , clalm(s)

is/are pending in the appllcal

Is/are wnhdrawn from considerat,on
Is/are allowed
!~';!re

Clalm(s)
!!! GI;!Im(!S) 1- 6(,

rejeded,

Clalm(s)

is/are objected to

Claims

are subject to restriction or election requirement

Application Papers
119 See the attached Notice of Draftsperson

s Patent Drawing Review, PTO- 948
is/are objected to by the Examiner

0 The drawlng!s) filed on

0 The proposed drawing correction , filed on
0 The specification is objected to by the Examiner

IS 0 approved (Jjlsapproved

0 The oath or Geclaratlon IS objected \0 by the Examiner

Priority under 35 U, C, 9 119 Acknowledgement IS made of a claim for foreign priority under 35 U S, C, 9 119(a)-(d)
0 All cpome . received,

~ne

of the CERTIFIED copies of the priority documents have been

received in Application No, (Series Code/Serial Number)

received In this nalional stage application from the International Bureau (PCT Rule 17 2(a))

Cert,lled COpies not received
Acknowledgement is made of a claim for domestic priority under 35 U,

C !i 119(e)

Attachment(s) 29 Notice of References Cited , PTO-892
Information Disclosure Statement(s), PT0-1449, Paper No(s) Interview Summary, PTO..A13 Not'ce of Draftsperson s Patent Drawing Review, PTO-948

29

Notice of Informai Patent Appllcalioo, PTO- 152

SEE OFRCE ACT10N ON THE

FOllO'NING

PAGES-

u S ""ent.n4T~',,",""""" PTO- 326 (Rev 9- 95)

Office Action Summary

GOG 31625
Part of Paper No

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,"

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Case 3:02-cv-01991-JSW

Document 82-3

Filed 08/11/2003

Page 3 of 10

'or'
: 09/322 677

tt,.;(,

Art Unit: 2764

" ' DETAILED ACTION

This Office Action is
Claims 1- 68
been canceled,

the answer to the comniu nr~ation

received on 10/25/99 (th~ ~etition to make special: paper) ;~
are pending in this application : .' Claim "
6 ' J:ias ;

Drawings
This application has been filed with informal drawings

which

are acceptable for examination purposes

only,

Formal drawings

will be required when the application is
The following reJections are

allowed.

based on the examiner s best

interoretation of the claims
e~aim Rejections - 35 use

102

States,

(bl the lnventlon was patented or described in a printed publication in this or a foreign country or in public use or On sale in thlS country, more than one year prior to the date of application for patent in the United

Because the claims in a pending application should be given
their broadest reasonable interpretation;
rejected on 35 D,
C. lO2(b) because the article

claims 1-68 are

published on May

19,

, about " GoTo. com announces first round of

financing,
mode

totaling more than $6 million, led by Draper Fisher Jurvetson

indicates

possession of that

invention.
carrying

sets forth the
out his

contemplated by the inventor

invention
toadverti sers

Bidding for hIgher placement offers big benefit
Page 2 of9

GOG 31636

. ,.

~' '.

Case 3:02-cv-01991-JSW

Document 82-3

Filed 08/11/2003

Page 4 of 10

1" ,,

09/322 677 Art Unit 2764

Any advertiser can increase a bid for a listing in order to
obtain a higher ranking'

Therefore, this article was published

before the application date of the invention (May 28, 1999), in
another word,
country,

the invention was described in a printed publ ication in

this

more than one vear prior to the date of application for patent in the

Un,ted States,

Conclusion
Claims 1- 68 are rejected.
These references are considered pertinent to applicant'

disclosure, - US Pat. 5, 724, 521 (Dedrick) filing date

11/03/1994

for " Method

and apparatus for providing electronic advert~sements to end
users in a consumer best- fit pricing manner'
- US Pat. 5 794

210 (Goldhaber, et al.
brokerage

) filing date

12/11/1995

for " Attention
- US Pat. 5

848, 397 (Marsh et

al.) filing date

4/19/1996

for

Method and apparatus for scheduling the presentation of messages
to computer user

- US Pat. 5, 852

820 (Burrows) filing date 8/09/1996 for " Method

for optimizing entries for searching an index

- US Pat. 5, 855, 008
Attention brokerage

(Goldhaber , et al. ) filing date 8/28/1997 for

Page 3 of9

GOG 31637

-"

",

Case 3:02-cv-01991-JSW

Document 82-3

Filed 08/11/2003

Page 5 of 10

09/322 677 Art Unit 2764

- US Pal:, 5 864, 845 (Voorhees, et aLl fll1ng date 6/28/1996 for
facilitating ~orld-wide- web searches utilizing a multiple search engine query clustering fusion strategy'

- US Pat. 5, 864, 846

(Voorhees, eL a1.) filing daLe 6/26/1996 for

Method for facilitating world-~ide- web searches utilizing a
document distribution fusion strategy'
- US Pat. 5 918,

014 (Robinson)

filing date 12/26/1996 for

Automated collaborative filtering in world- wide- web

advertising - US Pat. 5, 920 854 (Kirsch, et al. )
indexing

filing date 8/14/1996 for

Real-time document collection search engine with phrase

- US Pat, 5, 920

859 (Li) filing date 2/02/1997 for " Hypertext

document retrieval system and method"

- APS Search Tools - Patent Search Client Strategy publishing

date 9/17/1997 by US Patent & Trademark

Office.

- Frequently Asked Questions NT Image Search & Retrieval (I5&R)
modified 12/04/1997 by US Patent & Trademark Office.

- Chapter 1 - Introduction to Dialog, pp. l-l to 1-14 by Dialog

Information Service, Inc.
Automated Patent System lAPS) Workstation Reference Manual
published on 7/01/1996 by US Patent and Trademark Office,

Page 4 of 9

GOG 31638

Case 3:02-cv-01991-JSW

Document 82-3

Filed 08/11/2003

Page 6 of 10

~cW ~
SB'~

GOG 31639

-"

...
Document 82-3 Filed 08/11/2003 Page 7 of 10

Case 3:02-cv-01991-JSW

09/322 677 Art Unit 1764
- Riedman, " Search er.gine startup to auction ,
Interactive - ad,:ertising ~

listings :.. from
this way

published on 2/.23/1998,

- Rich, " New search engine allows sites

, to pay

t.o top

from http://www. adweek. com/iq/iqnews02, asp,

published on

2/23/1998.
- Mardesich, " Web site ,

operators pay

for top billing - Search

engine allows site sponsors to buy place on special lis~, from
Knight Ridder Newspapers or Alexander Communications, published
on

3/02/1998.
What happens when an online search engine

- Hilty, " GoTo. Hell

accept.s cash from Web sites~
ht tp: Ilwww.

ocweekly. com/~nkl archi ves/97 /27byte- 3 . 11, 98- 1. html,

published on

3/11/1998,
3/1611998.

- Flynn, " With Goto. com s Search Engine , the Highest Bidder Shall

Be Ranked First"
- Clark, "

, by the New York Times, published on

Start- up

plans Internet search service tying results to

advertising spending' from The Wall Street Journal , publ~shed on

2/20/1998,
Going, Going

N from A closer look of The Wall Street

Journal - Marketplace, published on

410211998.

coursey. com

David

Coursey s insider report on Personal

Computing, the Internet, and Communications, published on

3/18/1998.
Page 6 of9

GOG 31640

-"

",

Case 3:02-cv-01991-JSW

Document 82-3

Filed 08/11/2003

Page 8 of 10

~tr~;." ..

09/322 677 Art Unit 2764
- Glaser, " Who will GoT.o- com

from onl~nePress. com,

published on

2/20/1998.
- Mardesich, " Search engine charges hit sites
http: / /www,

sjmercury - com/business/center Igoto022198. htm,

published on 2/29/1998.

News About Search Engines , from

ht tp: /1 searchenginewatch. com/ness. hLml,

published on 2/23/1998.

- Wang, " Engines Battle Irrelevance of Results , from Internet

world, published on 2/23/1998.
- Swartz

Browser only IlstS paying Web sites, Critics fear

approach will squeeze out most small Internet players , from

ht tp: / /www.

sfgate. com/cgi- bin/, published on San Francisco

Chronicle 2/21/1998.
- McWilliams, " Search engine to sell top positions on results

list~, http: //www. pcworld. com/news/daily/data/0298 /. . , html,
published on 2/23/1998.

Search engine startup

to~uction listings

, from

ht tp: / /www,
Feb. 1998-

adage.

com/interactive/daily /index. html,

published on

- Alyson, " Searching the search engines , from Bacon s, published
on 5/08/1998.

Page 7 of9

GOG 31641

Case 3:02-cv-01991-JSW

Document 82-3

Filed 08/11/2003

Page 9 of 10

09/322 677 Art Unit 2764

- Pelline .

. Pay-for-placement gets another shot"
19307

http: //www. news. com/News /Item/O, 4,

00, html, published

on

2/19/1998.
Any inquiry

concerning this communication or earlier

communications from the examiner should be directed to examiner
Cuong H. Nguyen , whose telephone number is [phone].

The

examiner can normally be reached on Monday-Friday from 7: 00

AM-4:30 Pt~,
If attempts to reach the examiner

by telephone are

unsuccessful, the examiner s supervisor, James P. Trammell, can

be reached on [phone].
Any response to this action should be mailed to:
Box Issue Fee
Commissioner of

Amendments
Patents and Trademarks

c/o Technology Center, 2700

Washington ,

D. C.

20231

or faxed to:
[phone],
(for

formal communications

intended for entry)

Or:
[phone]
(for

informal or draft communications,

please label

" PROPOSED" or " DRAFT"

Page 8 of 9

GaG 31642

""

Case 3:02-cv-01991-JSW

Document 82-3

Filed 08/11/2003

Page 10 of 10

09/322 677 Art Unit 2764
Hand-delivered responses should be brought to Crystal Park II,

2121 Crysta 1

Drlve, Arlington, VA" Sixth Floor

(Receptionist) ,

Any inquIry of a general nature or relating to the

status, of

this application should be directed to the Group receptionist

whose telephone number is (703) 305- 3900.

Cuong H. Nguyen Jan. 17 , 1999

Page 9 of 9

GOG 31643