Apple Computer Inc. v. Burst.com, Inc.

Filing 79

EXHIBITS re 74 Declaration in Support, filed byApple Computer Inc.. (Attachments: # 1 Exhibit L Part 1# 2 Exhibit L Part 2# 3 Exhibit L Part 3# 4 Exhibit L Part 4# 5 Exhibit L Part 5# 6 Exhibit L Part 6# 7 Exhibit L Part 7# 8 Exhibit L Part 8)(Related document(s) 74 ) (Brown, Nicholas) (Filed on 12/9/2006)

Case 3:06-cv-00019-MHP
Apple Computer Inc. v. Burst.com, Inc.

Document 79-7

Filed 12/09/2006

Page 1 of 40
Doc. 79 Att. 6

I

UNITED STATES DEPARTMENT OF COMMERCE
Address: CUMMISSIONER OF PAWNTS AND TRAOEMARKS .. . .. .

Patent and Trademark Office

I r
OAlE
ATTORN

KETNO.

'

E3M1/0903 RICHARD A. LANG C/O INSTANT VIDEO TECHNOLOGIES; INC.. 500 SANSOME STREET. SUITE 503 SAN FRANCISO. CALFORINA 94111

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Nb

LdER

I

I

m e f

1

PN'ER NUMBER

0?/7 &39
DATE MAILED

NOTICE OF ABANDONMENT
This application is abandoned in view of: Applicant`s failure to timeiyfile a proper responseto the Office letter mailed on

0 A response (with a Certificate of Mailing or Transmissionfo )time of-month(@) rejection.

,which Is after the expiration of the period for response (including a total extension of which expired on ,but it does not constitute a proper responseto the final

was received on

'

0 A proposed responsewas received on
0 No response has been received.

(A proper responseto a final rejection consists only of: a timely filed amendment which places the application In condition for allowance; a Notice of Appeal; or the filing of a contlnulng application under 37 CFR 1.62 (FWC).

Appllcant's failure to timely pay the required issue fee within the statutory period of three months from the maillng date o the Notice of Allowance. f

0The issue fee (with a Certificate of Mailing or Transmlsslon of
The submitted issue fee of $s i

) was received on

insufflcient. The issue fee required by 37 CFR 1.I8is $ . -

0The issue fee has not been received.
Appllcant's failure to timely file new formal drawings as required in the Notlce of Aliowabllity.

0Proposed new formal drawings (with a Certificateof Mailing or Transmission of
received on

) were

0The proposed new formal drawings filed 0 No proposednew formal drawings have been received.

are not acceptable.

The express abandonment under 37 CFR 1.62(g) in favor of the FWC application filed on

47 !$) ,iqw .

The letter of express abandonmentwhich is signed by the attorney or agent of record, the assignee of the entire interest, or all of the applicants. The letter of express abandonmentwhich is signed by an attorney or agent (acting in a representative capacity under 37 CFR 1.34(a) upon the filing o a continuing application. f The decision by the Board of Patent Appeals and interferences rendered on for seeking court review of the decision has expired and there are no allowed claims. and because the period

I

APBU-00000592
Dockets.Justia.com

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 2 of 40

di

MON 1 5 : 0 7 FAX 703 3 O F
I

199

USPTO GROUP 280
I

lib002

Interview Summary

(1 1 Marc A. Sockol I1 Huy Nguven 2
Date of Interview Type:
I41

Jun 3 , 1997 0

1 Telephonlc X

0 Personal (copy ISgiven to

0 applicant

5 applicant's representatlve).

Exhibit shown or demonstratlon conducred:

0Yes

No. If yes, brief description:

Agreement

was reached.

was not reached.

Claim's) discussed: 2 7 Identification of prlor art dlscussed: lzeki (4,974,1781 ,Eogers 14,920,432) snd Muramuto (4,947,0541, rhe applied arr

Adding in claim 2 7 new limirarion * 8 receiver", the amended c a m 2 7 would overcome fhe applied an. However. the li new limirarion raises new issue that require a furrher search and consideration and willnot be entered.

Description of the general nature o what was agreed io If an agreement was reached, or any other comments: f

(A fuller description, if necessary, and a copy of the amendments, if available, which the examlner agreed .would render the claims allowable must be sttached. Also, where no copy of the amendents which would render the claims allowable is available, a summary thereof must be attached.)
1.
'

X

11 is not necessary for applicant to provide a separate record of the substance of the inferview.

Unless the paragraph above has been checked to indlcate to the contrary, A FORMAL WRITTEN RESPONSE TO THE LAST OFFICE .'.3T:3N IS NOT WAIVED AND MUST INCLUDE THE SUBSTANCE OF THE INTERVIEW. (See MPEP Section 713.04). If a response to the last Office acrion has already been filed, APPLICANT I GIVEN ONE MONTH S FROM THIS INTERVIEW OAT TO FILE A STATEMENT OF THE SUBSTANCE OF THE INTERVEW.
2.
Since the Examiner's inrerview summary above (including any attachments1 reflects a complete response 1 0

E x a m i m r Nor.:

You murl *ion 4mt $ramp chis torrn unlcav it is an arrdchment to a ri9n.d Officc &.ion.

APBU-00000593

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 3 of 40

,
;

/

Foreignpnority ddmed

STATE OR COUNTRY

SHEETS TOTAL DRWGS. CLAIMS

CWMS

INDEP.

FILING FEE RECEIVED

ATTORNEY'S DOCKETNO.

,

IYIWI"

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't2*271.I-l0 &JiS.US

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APBU-00000594

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 4 of 40

APPROVED FOR LICENSE

I ITI A LS N
\

Received

Da!c

.

M%ed

I

APBU-00000595

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 5 of 40

APBU-00000596

> Case 3:06-cv-00019-MHP

Document 79-7 Filed 12/09/2006 Stzple Issue Slip Here

Page 6 of 40

INDEX OF CLAIMS

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SYMBOLS

.......Rejected
Allowed

(lhroughnumbsral) Canceled

N I ......................... A 0

.......Rsslllctd
"..._.Appsal

....Nan-elected
Oblecled

lntetlerence

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APBU-00000597

.Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

-._ Page 7 of 40
I >

Staple Issue Slip Hae

I
I

INDEX OF CLAIMS

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APBU-00000598

: ; . i p i' .. Case 3:06-cv-00019-MHP
,

. .. .

Document 79-7

Filed 12/09/2006

Page 8 of 40

SEARCHED
Class
Sub.
Date Exrnr.

I

I

I

SEARCH NOTES
Date Exmr.

i SEARCHED
Class

386

It

id?

-9s ?x/yq

Sub.

Date

Exrnr.

L

(RIGHT OUTSIDE)

APBU-00000599

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 9 of 40

t

~

PATENT APPLlCATl

APBU-00000600

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 10 of 40

APBU-00000601

Form PTO 1130 (REV 2/94)

US DEPARTMENT OF COMMERCE ..

PACE DATA ENTRY CODING SHEET FILING DATE
I

PatentandTrademarkOffice lsT u<nMrNEb

DATE DATE SHEETS OF DRAWING

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---__I __ R 08/W
NPE A L '' !!
lDJ.,Ej'4+l

APPLICATION NUMBER

,Tq
FOREIGN LICENSE CONTINUITY DATA

2ND EXAMINER SPECIAL GROUP HANDLING ART UNIT

07/18/97

I

Case 3:06-cv-00019-MHP

TOTAL CWMS

INDEPENDENT CLAIMS

SMALL ENTITY?

laFILING FEE

AlTORNEY DOCKET NUMBER

,

...

.

-

Document 79-7

PARENT PATENT NUMBER

PARENT FILING DATE
MONTH DAY YEAR

PCTFOREIGN APPLICATION DATA

Page 11 of 40

B

Filed 12/09/2006

FOREIGN PRIORIN COUNTRY CODE

PCTFOREIGNAPPLlCATlON SERIAL NUMBER

FILING DATE
MONTH
DAY YEAR

FOREIGN

. ~. .

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 12 of 40

I

,

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Prior Application: SERIAL NO.: FILING DATE: TITLE:
08/624,958

March 28,1996
( Burst Transmission Apparatus And Method For ` Audio / K g o

EXAMINER
GROUP ART UNIT:

Huy Nguyen
2604

ATTY.DKT.NO.:

639 US

/

Anticipated Classification of this application:

Class: 358

Subclass:

BOX FWC ASSISTANT COMMISSIONER FOR PATENTS WASHINGTON, D.C. 20231
FILE WRAPPER CONTINUING APPLICATION (Fwcy

Sir: This is a request for a filing under the file wrapper continuing application I. , procedure, 37 CFR 1.62, for a

.

X

continuation divisional continuation-in-part
(for oath or declaration see I11 below)

-

attached is an amendment for added subject matter continuing application to permit consideration if an

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.

..

APBU-00000603

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 13 of 40

information disclosure statement under 37 CFR 1.97 PARTICULARS OF PRIOR APPLICATION

A.

Application.Serial No. 08/624,958filed . Title (as originally filed Audio/Video Recorder Transceiver . and as last amended) Burst Transmission Aparatus And Method For Audio/Video Information.

B.

Name of applicant(s) (as originally filed and as last amended) and C. current correspondence address of applicant(s):
I 1. 1 IFULLNAME I OF INVENTOR
I FAMILYNAME I 1 I FIRSTGIVENNAME

I

I

I

I
I

I RESIDENCE &
I CITIZENSHIP I

I

r

n

I I I I
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Mendocino 1

I I STATE ORFOREIGN I COUNTRY I I ICITY

I I

Richard

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"cpi I

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POSTOFFICE ADDRESS 9301 No. Pacific Coast Highway 1

I I

Mendccino

I SECONDGIVENNAME I I I I I I L I COUNTRY OF I I CITIZENSHIP I USA I I I I I I STATE &ZIP CODE/ I I COUNTRY I I CA,95460 USA I I I I I

I

The above identified application, in which no payment of issue fee, abandonment of, (other than where the above identified application was abandoned under 37 CFR 1.313(b)(5)to permit consideration of an information disclosure statement under 37 CFR (1.97)),or termination of proceedings has occurred, is hereby expressly abandoned as of the filing date of this new application. Please use all the contents of the prior ' application file wrapper, including the drawings, as the basic papers for the new application. It is understood that secrecy under 35 U.S.C. 122 is hereby waived to the extent that if information or access is available to any one of the applications in the file wrapper of a 37 CFR 1.62 application, be it either this application or a prior application in the same file wrapper, the U.S. Patent and Trademark Office may provide similar information or access to all the other applications in the same file wrapper.

2

APBU-00000604

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 14 of 40

II. INVENTORSHIP STATEMENT
(a) Y T h i s ,application discloses anc, claims only subject matter disclosec in the prior application whose particulars are set out above and the inventor(s) in this application are

X -

the same less than those named in the prior application and it is requested that the following inventor(s) identified above for the prior application be deleted: (Type name(s) of inventor(s) to be deleted)

(b) - This application discloses and claims additional disclosure by amendment and a new declaration or oath is being filed. With respect to the prior application whose particulars are set out above the inventor(s) in this application are

- -the same

-

add the following additional inventor+) (Type name(s) of inventor(s) to be deleted)

(c)

The inventorship for all the claims in this application is
I

X

the same not the same, and an explanation, including the ownership of the various claims at the time the last . claimed invention was made, is submitted herewith.

43
iJ

-

III. DECLARATION 0R OATH
A. Continuation or divisional

none required

3
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,

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APBU-00000605

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 15 of 40

B. Continuation-in-part

-

attached, executed by (check applicable items)

-

inventor (s). legal representative of inventor@)37 CFR 1.42 or 1.43. joint inventor or person showing a proprietary interest for inventor who refused to sign or cannot be'reached. 37 CFR 1.47; This is the petition required by 37 CFR 1.47 and the statement required by 37 CFR 1.47 is also attached. not attached Application is made by a person aGthorized under 37 CFR 1.41(c)on behalf of all .of the above named applicant(s). showing that the filing is authorized.

-

-

73
=.A
t%

v

-

N. IDENTIFICATION OF CLAIMS FOR WRTHER PROSECUTION
X The fees to be charged are to be based on the number of
claims remaining as a result of the attached preliminary amendment
'

__
-

the unentered amendment filed under 37 CFR 1.116 in the prior application, which is now repeated.
claims as on file in the prior application

X

4
. .-

.

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APBU-00000606

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 16 of 40

V. FEE CALCULATION N~mber Filed Total Claims
.

Number Extra

Rate

Basic Fee
$750.00

164 - 2 0 ~

144

x

$22.00

$3168.00
$ 624.00

Independent Claims 1 -3= 1 Multiple dependent claim(s), if any

8X

$78.00
$250.00

-

The fee for extra claims in not being paid at this time.
.Filing

Fee calculation

$

4542.00 '

VI. SMALL ENTITY STATEMENT

X

A verified statement that this is a filing by a small entity is attached. The small entity statement was filed in the parent application Serial No. 08/624.958 ,filed on March 28,1996 and this status is still proper and its benefit under 37 CPR 1.28(a)is hereby claimed. Filing fee calculation (50% of above) $ 2271.00

VII. FEE PAYMENT BEING MADE AT THIS T I m Not attached

-

No filing fee is submitted.

Attached
.& .
filing fee recording assignment ($40.00; 37 CFR l.Zl(h)(i)).
$ 2271.00 $___

-

5

APBU-00000607

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 17 of 40

-

petition fee for filing by other than all the inventors or person not the inventor where inventor refused to sign or cannot be reached ($130.00; 37 CFR 1.47 and 1.17(h)) processing and retention fee ($100.00; 37 CFR 1.53(d)and 1.21(1) TOTAL FEES ENCLOSED

$ -

-

$ $ -

VIE. METHOD OF PAYMENT OF FEES

-,X

attached is check in the amount of charge Account No. 06-0600 in the amount of A duplicate of this request is attached.

$2271,00 $ I

-

X

IX. bUTHORIZATION TO CHARGE ADDITIONAL FEES

X The Commissioner is hereby authorized to charge the following additional fees which may be required by this paper and during the entire pendency of this application to Account No. 06-0600:

-

'

37 CFR 1.16 (filing fees) 37 CFR 1.16 (presentation of extra claims) 37 CPR 1.16(e) (surcharge for filing the basic filing fee and/or declaration on a date later than the filing date of the application) 37 CFR 1.17 (application processing fees) 37 CFR 1.18 (issue fee at or before mailing of Notice of Allowance, pursuant to 37 CFR 1.311@)).

X

-

6

APBU-00000608

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 18 of 40

I

, ., .,, ..
,

X. INSTRUCTIONS AS TO OVERPAYMENT

X

credit Account No. 06-0600refund
i

XI. pRIORITY-35 U .S.C. 119

-

Priority of application Serial No. filed on is claimed under 35 U.S.C. 119. in (country) The certified copy has been filed on application Serial No. filed on certified copy will follow
/

in prior US.

-

line the paragraph
3

by inserting after the title and before the first

'I
This is a

5

Related Apvl ica tions"

e3

-X

continuation divisional continuation-in-part

-

of co-pending application(s)

APBU-00000609

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 19 of 40

XTII. ASSIGNMENT

X.
-

the prior application is assigned of record to Instant Video Technology,Inc. an assignment of the invention to

is attached.

Type name of assignee

m. POWER OF ATTORNEY

~

The power of attorney in the prior application is to William Hein. a. b. c.

-ZL.

The power appears in the original papers in the prior application. / The power does not appear in the original papers, but was filed on A new power has been executed and is attached. Address all future communications

d.

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Sockol. Re?.

No. 40,823(\)

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P% f

Carr, DeFilippo & Ferrell LLP 2225 East Bavshore Road. Suite 200 Address Palo Alto. California 94303
c-

[phone]

XV. $fAINTENANCE OF COPENDENCY OF PRIOR APPLICATION
A petition, fee and response has been filed to extend the'term in the pending prior application until iulv 21.1997 . attached.

X A copy of the petition for extension of time in the prior application is
8

APBU-00000610

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 20 of 40

XVI. CONDITIONAL PETITIONS FOR EXTENSION 0F TIME IN PRIOR APPLICATION

- A conditional petition for extension of time is being filed in the pending prior application.

- A copy of the conditional petition for extension of time in the prior application is attached.
XVII. ABANDONMENT OF PRIQR APPLICATION

ea e-5 c9 43 en
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6

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ru

$2 34

Marc A. Sockol Carr, DeFilippo & Ferrell LLP 2225 East Bayshore Road, Suite 200 Palo Alto, CA 94303 TEL [phone] FAX [phone]

*
-

2 Please abandon the prior application at a time while the prior application is pending or when the petition for extension of time or to revive in that application is granted and when this application is granted a filing date so as to make this application copending with said prior application. At the same time please add the words "now abandoned" to the amendment to the specification set forth in XII above.
Marc A. Sockol

.

Signature

.

/

-

Inventor Assignee of complete interest Person authorized to sign on behalf of assignee

X

Attorney or agent of record Filed under Rule 34(a)

-

XIX. mFORMATION DISCLOSURE STATEMENT
Submitted herewith is an Information Disclosure Statement

Type Name of Assignee Address of Assignee
Title of person authorized to sign on behalf of assignee

Assignment recorded in PTO on Tanuarv 24,1997 Reel 8321 Frame 0817

9

APBU-0000061I

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 21 of 40

6 7 8 1 4 U.S.

~

PATENT APPLICATION SERIAL NO.

Iiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiii
07/18/97

081896721

PTO

U.S. DEPARTMENT OF COMMERCE PATENT A N D TRADEMARK OFFICE FEE RECORD SHEET

08/21/1997 01 FC:201 02 FC:202 03 FC:203

TWILLIRM 00000140 DR#:O$!~o
18.00 CH

0;8B96727

1566.00 OP

320.00 UP

PTO-1556 (5/87)

APBU-00000612

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 22 of 40

IN THE UNITED STATES NT AND TRADEMARK OFFICE
Parent application: APPLICANT: SERIAL NO.: FILING DATE: TITLE: EXAMINER: ART UNIT: ATTY. DKT. NO: Richard Lang 081624,958 3/28/96 Burst Transmission Apparatus and Method for AudioNideo Information Huy Nguyen 2604 639

Continuation Application: APPLICANT: Richard Lang TITLE: Burst Transmission Apparatus and Method for AudioNideo Information FILING DATE: July 18,1997 ATTY. DKT. NO: 816

CERTIFICATE OF MAILTNG I hereby certify that this paper is being deposited with the United States Postal Service a s firsfclass mairinan envelope ddressed to: Assistant Commissioner for Patents, Washington, Q.C. 202311, oktheharnrinted below:
Date:

b-I-7 7

Marc A. Sockol

ASSISTANT COMMISSIONER FOR PATENTS WASHINGTON, D.C:. 2023 1

PRELIMINARY AMENDMENT Applicant respectfully requests that the Examiner enter the following amendments and consider the following remarks before examining the application. Most importantly, Applicant would like to thank the Examiner for his time and consideration during the numerous telephone conversations with' Applicant's attorney. This preliminary amendment and response is being submitted to address the rejections made in the Office Action mailed 2/20/97.

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APBU-00000613

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 23 of 40

IN THE CLAIMS: 27.
(three times amended) An audiohideo transceiver apparatus

information comprising a multiplicity of video frames in the form of motion video programs;

compressed representation having an associated burst time information;

at is shorter than a

output means, coupled to representation of said audiohide for [serially] transmitting said time co information away from said audiohide

stored in said storage means and] entation of said audiohide0 source apparatus in said burst time period

in said storage means; operative for receiving the edited time compressed o source information stored in said storage means for audiohide0 transceiver apparatus in a burst time period that

transmission away is shorter than a tim

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43.

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(three times amended) An

associated burst time

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APBU-00000614

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 24 of 40

representation of said audiolvideo source for [serially] transmitting said time comp information away from said audiohide0 tr said input means being coupled, via a video library, said video library storing a multi

red in said storage means and]

f programs, each of said programs

r more communications

having an associated burst time storage means, coupled to sai compressed representation of said au more communications links, [for receivi ime compressed representation of

\

APBU-00000615

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 25 of 40

information;

information; information received at said input representation of said digital or corre said time compressed representation than a time period associated with real t means being further operative for decomp audiohide0 source information; . rresponding digital audiohide0 source video source information, bv a receiver of said digital or said time compressed representation

,

cornpressor/decompressormeans;
corresponding digital audiohide0 source informatio real time representation of said digital or correspon information;

r storing said decompressed

means; and

audiohide0 transceiver apparatus in said burst time period.
\

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1 15. (twice amended) A metho method comprising the steps of: receiving audiohideo sou compressing the received representation thereoc storing the time compress information;

APBU-00000616

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 26 of 40

\
[serially] transmitting said stored audiohide0 source information in a burst

information; information; and

method comprising:

of said audiohide0 source information being said audiohide0 source information; received by said input means; and audiohide0 source information away from said audi transceiver apparatus;

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user].

retrieval, in said associated burst time period, over
.

--

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method comprising:

-5-

APBU-00000617

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 27 of 40

received by said input mean [serially] transmitting sai said audiohide0 source video library, said video library
g information received from a

f programs, each of said programs

f audiohide0 transceivers, coupled receiving audiohide0 so r more of said plurality of

-

representation thereof having an asso period associated with real time viewin information; storing the time compressed re information; and [serially] transmitting said sto audiohide0 source information in sai of audiohide0 transceivers.

into a time compressed eriod that is shorter than a time iver of said audiohide0 source

of said audiohideo source
ssed representation of said od to another one of said plurality

(three times amended) A met source information, the method comprising the steps of: receiving audiohide0 into a time compressed compressing the representation thereof; storing the time compressed information; [serially] transmitting said stored time com ressed representation of said

162.

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APBU-00000618

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 28 of 40

audiohideo source information associated with real time viewing [selectively] decompressin representation of said audiohide0 recording the [selectively] representation of said audiohide0 medium.

nod that is shorter than a time period said audiohideo source information; the stored time compressed d decompressed time compressed ation onto a removable recording

\ 173. (once amended) A methd# for handling analog and/or digital audiohideo source

prising a multiplicity of video frames in the converting received analog digital audiohide0 source informatio analog audiolvideo source information;

representation having an assoc associated with real time viewing audiohide0 source information; representation of said digital digital audiohide0 source information; and [serially] transmittin audiohideo transceiver apparatus to a selected destinatib in said burst time period.
\
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b

(once amended) A metho method comprising: providing a network that via one or more communications links; receiving, at one or more of said information, said audiohide0 source frames in the form of one or more
194.

audiolvideo source

-7-

\
APBU-00000619

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 29 of 40

information being received as a time associated burst time period that is

thereof having an with real time

information; and

of audiohide0 transceivers.

I

REMARKS Claims 27-41,43-68,70-113, 115-129 and 131-194 were examined and rejected in the parent case. Reconsideration of the application in view of the above amendments and the following remarks is respectfully requested.

,
Applicant would like to thrink the Examiner for providing time on June 18,1997, on June 25, 1997 and on June 30, 1997 to discuss the claimed invention. During these discussions, Applicant and the Examiner reach an agreement which addressed both Applicant's and the Examiner's concerns. The agreement consisted of amendments to claim 27 for the purposes of clarification, which acknowledgethat the time compressed representation of the audiolvideo source information could be received and viewed by a receiver. The Examiner indicated in the interview summary of June 30,1997 (a copy of which is attached hereto) that these amendments overcame the applied art but that a new search would be required. Accordingly, Applicant has incorporated these amendments into all the independent claims, namely, into claims 27,43,55, 85, 115, 131, 132, 143, 162,173 and 194. The following is a summary of the art discussed with the Examiner during the discussions. II..ekiteaches a compression technique without transmission. &gars teaches a transmission system for sending analog signals in real time to a client. Hooks teaches a compression system for converting a continuous analog audiohide0 signal to the NTSC standard, and transmitting the converted signal in real time. Haskell and Hamilton teach a system for time compression multiplexing so that multiple clients can receive audiolvideo information in real time. As noted by the Examiner, the specification admits that compression alone is not new. However, the subject invention relates to a delivery technique that uses compression to transmit a time compressed representation in a burst time period which is shorter than a period associated with real time viewing by a receiver.
-8-

APBU-00000620

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Document 79-7

Filed 12/09/2006

Page 30 of 40

I -

From the advent of compression techniques, system designers noted that a system implementing compression could service more clients in real time than a system without compression. In fact, system designers recognized that better compression enabled the system to service even more clients. However, system designers did not recognize that time compressed representations could be sent in a burst time period that is shorter than the time period needed for real time viewing by a receiver. Sending time compressed representations to a receiver can add a new variable, consumption rate, to the equation which indicates the maximum number of clients a system can service. That is, if several clients pause or rewind videos, less information may need to be sent to the clients thereby enabling the system to manage additional clients. Since the agreed upon amendments have been incorporated into all independent claims, Applicant respectfully submits that all independent and dependent claims 27-41, 43-68,70-100,102-113,115-129 and 131-194 are in condition for allowance. , Reconsideration and allowance of.the aforementioned claims are respecthlly requested. If the Examiner has questions regarding this case, he is invited to telephone the Applicant's undersigned representative at the number given below. Thanks again for all your assistance. Respectfully submitted, Richard Lang

??1C re", D^. LLLJ C ~ L

Carr, DeFilipI Dayshore Road, Suite 200 Palo Alto, CA 94303 [phone]

-9-

APBU-00000621

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 31 of 40

In re application of

Richard Lang
Atty. Docket No.: Case 816

Title:

BURST TRANSMISSION APPARATUS AND METHOD FOR AUDIOMDEO INFORMATION

(Col. 1) Claims Remaining After
Am&ent
'

(Col. 2) Highest

(COI. 3)
.

Small Entity Rate
.

or

Previously Paid For * minus **20 Total minus "*3 * Indep. [ ] First Presentation of Multiple Dependent Claims

Number

~

Number of Extra, Claims Present

Additional Fee or
$ $ $
$

Otxer Than a-Small Entity Rate Additional .Fee

IftheentryinCol. 1lslessthantheentryinCol.2,write"O"in61.3.'

= x $11 x$40= +$130= Total Fee

or
.:

x $22 = xBO=
+$260=

$ $

Total Fee

$ $

Dated:

f Tq-9 r?r

Marc A. Sockol, Reg. No. P-40,823 Carr, DeFilippo & Ferrell LLP 2225 East Bayshore Road, Suite 200 Palo Alto, California 94303 TEL: [phone] FAX: [phone]

APBU-00000622

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 32 of 40

In re application of:
Serial Filing Title:

RichardLang

03

1
Atty. Docket No.: Case 816
APPARATUS AND METHOD FOR AUDIOMDEO

(Col. 1)
Claims Remaining After

(Col. 2)

(Col. 3)

Small Entity Rate

or

Highest . Number of Extra Number Claims Present Previously AInt-dmElt Paid For x minus **20 Total * minus ***3 Indep. [ ] First Presentation of Multiple Dependent Claims
If the entry in Cal 1 is less than the entry in Col 2, m h e '0" Col 3 in

Additional Fee or
$ $ $ $

Other Than a Small Entity Rate Additional Fee
x$22 = ~$80+$260= Total Pee
$ $ $ $

x$11=

I +$130=
Total Pee

x$40=

or

Dated:

8-cf 4 7

Marc A. Sockol, Reg. No. P-40,823 Carr, DeFilippo & Ferrell LLP 2225 East Bayshore Road, Suite 200 Palo Alto, California 94303 TEL: [phone] FAX [phone]

L'yl:tm
APBU-00000623

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006
t

Page 33 - 40 of

UNITED STAl DEPARTMENT OF COMMERCE Patent and Trademark Office Address: COMMISSIONER OF PATENTS AND TRADEMARKS
Washington, D.C. 20231

APPUCATION NUMBER

FlUNGDATE

FlRST NAMEDAPPUCAKT

R
LM13/1125

I

A m . W C K E T NO.

689.US
EXAMINER

MARK A SDCKOL 2225 EAST BAYSHORE ROAD STE 200 PALO ALTO CA 94303

G IVFN H I
Am UNIT

PAPER NUMBER

2712
DATE MAILED: 13 /25/97

!

This 1s a communlcallonfrom (he examlner In charge of your appllcatlon.

COMMISSIONER OF PATENTSAND TRADEMARKS

OFFICE ACTION SUMMARY

@ Responsiveto communication(s)filed on A!?& f,,f 7 /? ' 0 mis action IS FINAL. 0 Since thls application is in conditionfor allowance except for formal matters, prosecutlon as to the merlts I closed in s
accordance with the practice under &parte Ouay/e, 1935 D.C. 11; 453 O.G. 213.

s month(s), or thlrty days, A shortened statutory period for response to this action I set to expire e + whichever Is longer, from the malllng date of thls communicatlon. Failure to respond within the period for response will cause the application to become abandoned. (35U.S.C. 5 133). Extenslons oftime may be obtained under the provisions of 37 CFR 1.136(a).
Dlspositlon of Claims

rg5

8 0
0
0

0

cialm(s) 27- 4 /,. c/ O the above, claim(s) f Claim(s) Cialm(s) cialm(s)27 ciaim(s)

6 -6 8. L J-//4/ 15 - 7 ~ . /&
.

6

I

-

I

Ware withdrawn from conslderatlon. ,Islare allowed. islare rejected. Ware objected to. are subject to restriction or election requirement.

/ 3 / -/qdis/are pending in the appiicatlon. .

-

Applicatlon Papers

0 See the attached Notice of Draftsperson'sPatent Drawing Review, PTO-948.
[7 The drawing@)flied on
The proposed drawing correction, filed on The speclflcation is objected to by the Examiner. The oath or declaration Is objected to by the Examiner.

Ware objected to by the Examlner. is 0 approved

0

disapproved.

Priority under 35 U.S.C. I l l 9

0 AcknowledgmentIs made of a claim for foreign priority under 35 U.S.C. 119(a)-(d). 5
All

0 Some* 0 None

'

of the CERTIFIED copies of the priority documents have been

0 received In Application No. (Series CodeEerial Number) 0 received in this national stage applicationfrom the internationalBureau (PCT Rule 17.2(a)).
*Certified coples not received:

received.

0 Acknowledgmentis made oi a claim for domestic priority under 35 U.S.C. 5 119(e).
Attachment(s)

0

E

Notice of Reference Cited, PTO-892 information Disclosure Statement(s), PTO-1449, Paper No($). lntervlew Summary, PTO-413 Notice of informal Patent Application, PTO-152
'

0 Notice of Draftperson's Patent Drawing Review, PTO-948
.

'-SEE OFFICE ACTION ON THE FOLLOWING PAGES-.
> ,
A -

PTOL.SZB (AW a m

.

..

--, .a'

'

"

--I

-

*us

__-_ _-_ .

GPO 1 8 8 n ~ ~ i ~ ~ z 1 ~ 0 ~ 0 8

APBU-00000624

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 34 of 40

Serial Number:' 08/896,727 Art Unit: 2712

Page 2

DETAILED ACTION

Chim Rejections - 35 U.S.C. 8 I03

1.

The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness

rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and thc prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertziins. Patentability shall not be negatived by the manner in which the invention was made.

2.

Claims 27-41,43-68,70-100, 102-113,115-129 and 131-194 are rejectedunder 35

U.S.C. 103(a) as being unpatentable over Izeki et a1 in view of the admitted prior art in the specification at pages 7-8 and Hamilton et a1 (4,897,717). Regarding claims 27,43,85, 105, 115, 131, 132, 143, 158-161, 162, 169, 170, 172, 173, 176, 186, 189, 192, and 194, Izeki et a1 discloses a video and audio recording apparatus, Figs 1-5, for receiving audiohide0 information, compressing the audio / video information, and storing the compressed audiohide0 information in a storage means for later selectively retrieving and transmitting the audiohide0 information to another audiohide0 apparatus. The apparatus comprises input means (43 and 44) for receiving audio and video information to produce the compressed video and audio information; means (53,52,110) for storing the compressed audio and video information; means for receiving the compressed audio and video information; and editing means (47) for editing the compressed audiohide0 information and for storing the edited audio or video information in the storage means; and output means (80) for outputting the edited audiohide0 information away from the audio and video apparafus.

APBU-00000625

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 35 of 40

Serial Number: 08/896,727 Art Unit: 2712

Page 3

Izeki et al fails to specifically teach that the compressed audiohideo information are the time-compressed audiolvideo information as recited in claims 27,43, 55, 85, 105, 115, 131, 132,
143,162,173, and 194.

However, it is noted that employing means for time-compressed audiohide0 information
so that the compressed audiohideo information can transmitted at high speed (in flash or burst

period) and so that to increase the capacity of a storage means is well known in the art and available in market at the time the invention was made as admitted by applicant in the specification, page 7 and 8. Therefore, it would have been obvious to one of ordinad skill in the a art to employ means for time- compressing audiolvideo information as an alternative compressing device for the compressing means of Izeki et a1 to time-compress the audiohideo information of Izeki et al in order to increase the transmission speed of the audiohide0 information as well as to increase the capacity of storing the audiolvideo information of the storage means. Izeki as modified with the admitted prior art fails to teach that the audiohide0 a transmitted in a burst time period that is shorter than the real time as recited in claims . Hamilton et al discloses a fast transfer means (Fig. 1) for transferring compressed audiohide0 data in a period that is shorter than the real time period as recited in claims. It would have been obvious to one of ordinary skill in the art to modify Izeki as modified with the admitted prior art above with Hamilton by providing a fast transfer means as taught by Hamilton in the apparatus of the modified Izeki with the admitted prior art above for transferring

APBU-00000626

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 36 of 40

Serial Number:.08/896,727
Art Unit: 2712

Page 4

the compressed audiohideo data at a period that is shorter than the real time period thereby allowing the audiohide0 data transferred with high speed, Further for claims 43,44, 55,60, 131, 132 and 148, Izeki et al fails to teach that the audiohide0 information are compressed video motion programs from library. However, it is noted that audiohide0 information comprising compressed video motion programs from a video library (Video on demand) or from a broadcast via a tuner and that compressing motion video program are well known in the art . Therefore Official Notice is taken and it would have been
/

obvious to one of ordinary skill irithe art to use the audiohide0 apparatus of Izeki et a1 to receive the compressed motion programs as an alternative video information source to process and store the motion video programs for later viewing. Regarding claims 48, 50, 51,62, 83, 105, 133, 138, 134, 135, and 136,'Izeki et a1 fails to specifically teach a decompressing means for decompressing the compressed audiohide0 information. However, it is noted that using a decompressing means to reverse the compressed audiohideo information is well known in the art and as admitted by the applicant in the specification. Therefore, it would have been obvious to one of ordinary skill in the art to employ decompressing means into Izeki et a1 apparatus to reverse the compressed audiohide0 information to original audiohideo information to accommodate with receiving devices such as a television monitor or recorder device. Regarding claims 28,49,53,71,75, 116, 135, 137,138,140, and 141, Izeki et a1 further teaches a monitor (48) for monitoring the editing of the stored audiohideo information.

APBU-00000627

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 37 of 40

-.

Serial Number: .08/896,727 Art Unit: 2712

Page 5

Regarding claims 29,30,37,38,39,41,56,57,77-78,95,96,97,98, 117, 118, 124, 126, 127, 129,142, 144, 145, 166, 183-185, and 187, Izeki et a1 fails to teach the use of fiber optic, telephone and microwave to couple to the input port or output port for receiving the audiokideo information from a tuner or cable and for transmitting the audiohide0 information is well known in the art . Therefore, it would have been obvious to one of ordinary skill in the art to use a fiber optic, telephone and microwave line for receiving the audio/video information at the input port and for transmitting the audio /video information from the output port. Regarding claims 31,32,59;-65,67,68,91,92,93, 102, 103, 104, 106, 107, 108, 109, 110, 112, 119, 120,146,147, 154, 155, 156, 164, 165, 179, 180, 188, 190, 191, and 193, Izekiet al fails to specifically teach that the storage means comprises an optical disk, or a WORM memory, or a semiconductor memory, or a bubble memory, or a erasable optical disk, or a CD
/

ROM, or a digital paper. However, employing an optical disk, erasable optical disk, a
semiconductor, bubble memory, CD ROM or a digital paper for storing information is well known in the art (See Izeki et al column 7, lines 23-31) and as admitted by the applicant in the specification. Therefore, it would have been obvious to one of ordinary skill in the art to use an optical disk, erasable optical disk, a bubble memory, digital paper, CD ROM, or WORM memory
as an alternative storage means of Izeki et al for storing the audiohide0 information of Izeki et al.

Regarding claims 33 and 34 and further for claims 85 and 172, Izeki et a1 teaches means for converting the input audiohide0 information into digital audiohide0 information and for

Case 3:06-cv-00019-MHP

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Serial Number:.08/896,727
Art Unit: 2712

Page 6

storing the digital audiohide0 information (column 3, lines 39-43) and means for converting the digital audiohide0 information into analog audiohideo information (column 5, lines 40-5 1). Regarding claims 36, 54,94, and 182, Izeki et a1 fails to teach that the audiohide0 information is taken from a tape recorder. However, it is noted a tape recorder which capable of reproducing audiohide0 information is well known in the art . Therefore ,it would have been obvious to one of ordinary skill in the art to use the input of Izeki et a1 to receive the audio/video information from a video tape recorder as being an alternative audiohide0 information source. et Regarding claims 35 and 123-,~Izeki a1 teaches that the input audiolvideo information . supplied from a video camera. Regarding claims 40 and 128, Izelti et a1 fails to specificallyteaches that the input audiohideo information received Tom computer. However, it is noted that audiohide0 information which are generated by a computer is well known in the art. Therefore, it would have been obvious to one of ordinary skill in the art to supply generated audiohide0 information from a computer as an alternative audiohide0 information source of Izeki et al. Regarding claims 61,63,70,73,75,79, 80, 82, 84, 87-88, 89,90, 149, 150, 151, 152, 157, 158, 159, 162, 163, 167, 168, 177, and 178, Izeki et a1 further teach aremovable recorder such as a tape recorder (54) for storing the audiolvideo information from the storage means. Regarding claim 86, Izeki et a1 further discloses a character generating means for generating title associated with the audiohide0 information by the user but fails to specifically teach that the title is indicating timing information. However, it would have been obvious to one
/

APBU-00000629

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 39 of 40

Serial Number: .08/896,727 Art Unit: 2712

Page 7

of ordinary skill in the art to use the character generating means of Izeki et a1 for generating the

character indicating the date or time, considered as the claimed timing information, of receiving the audiohide0 information of Izeki et a1 through the input by the user (key board)(column 2, lines 65-68). Regarding claims 99 and 100, Izeki et al further discloses a digital control unit means(41,56) for controlling editing h c t i o n including memory for storing instruction information to perform editing function but fails to specifically teach that the memory id a ROM However, it is noted that employing a ROM for storing necessary instruction information in a control device to control an apparatus is well known in the art . Therefore, it would have been obvious to one of ordinary skill in the art to use well known ROM as an alternative memory for the memory (56) of Izeki et al in order to accurately edit the audiohide0 information.

3.

Claim 101 is rejected under 35 U.S.C. 103(a) as being unpatentable over Izeki et al in

'

view of the admitted prior art in the specification ,papers 7-8, and Hamilton as applied to claim

98 above, and further in view of Muramoto et al.
Izeki et a1 fails to teach a RGB converter for converting the stored information to RGB format. However, it is noted that employing a RGB converter for converting information into RGB format is well known in the art. For example, Muramoto teaches a RGB converter for converting stored information to RGB format. Therefore it would have been obvious to one of

APBU-00000630

Case 3:06-cv-00019-MHP

Document 79-7

Filed 12/09/2006

Page 40 of 40

Serial Number: 081896,727 Art Unit: 2712

Page 8

ordinary skill in the art to employ the well known converter as taught by Muramoto with the apparatus of Izeki for converting the information to RGB format in order to reproduce the RGB format on an appropriate monitor.

4.

Any inquiry concerning this communication or earlier communications from the examiner

should be directed to Huy Nguyen whose telephone number is [phone]. The examiner can normally be reached on Monday to Friday from 6:30AM to 5:OOPM.

If attempts to reach the examiner by telephone are unsuccessful, the examiner%supervisor,
Andrew Faile, can be reached on [phone]. Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the Group receptionist whose telephone number is [phone].
i

5.

Any response to this action should be mailed to:

Commissioner of Patents and Trademarks Washington, D.C. 2023 1
or faxed to:

[phone], (for formal communications intended for entry)

Or:

APBU-00000631