Streetspace, Inc v. Google, Inc. et al

Filing 31

RESPONSE in Opposition re 29 MOTION to Disqualify Counsel for Millennial Media (Cooley LLP) MOTION to Disqualify Counsel for Millennial Media (Cooley LLP) filed by Millennial Media, Inc. (Attachments: # 1 Declaration of Chris C. Campbell, # 2 Exhibit 1 to Campbell Declaration, # 3 Declaration of Patrick A. Doody, # 4 Declaration of Kevin Todd Duncan, # 5 Declaration of Nelson Kuan, # 6 Exhibit A to Kuan Declaration, # 7 Exhibit B to Kuan Declaration, # 8 Exhibit C to Kuan Declaration, # 9 Exhibit D to Kuan Declaration, # 10 Exhibit E to Kuan Declaration, # 11 Exhibit F to Kuan Declaration, # 12 Exhibit G to Kuan Declaration, # 13 Exhibit H to Kuan Declaration, # 14 Exhibit I to Kuan Declaration, # 15 Exhibit J to Kuan Declaration, # 16 Exhibit K to Kuan Declaration, # 17 Exhibit L to Kuan Declaration, # 18 Exhibit M to Kuan Declaration, # 19 Exhibit N to Kuan Declaration, # 20 Exhibit O to Kuan Declaration, # 21 Exhibit P to Kuan Declaration)(Kyle, John) (kaj).

EXHIBIT G

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AIIome:y DochtNo. 63000.16

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IN THE UNrttl)TATES PATENI,hND TRADE~~ \RK OFFICE

In re Patent Application of:
Tom MATHAI, et at.
Serial No.:

09/959~

Filed: May 3, 2000
For:

(Formerly03J6J2.0041r)

METHOD AND SYS :; :.M FOR
PROVIDING PERSO:', \UZED
ONLINE SERVICES '\ >~D
ADVERTISEMENT\ : \1
PUBLIC SPACES

)
)
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Examiner: Jacques VEILLARD
Group Art Unit 2175

REPLY TO NON-FINAL OFFICE ACTION UNDER 37 C.F.R. i1JJ.l
U.S. Patent and Trademark Office
2011 South Clark Place
Customer Window
Crystal Plaza Two, Lobby, Room 1B03
Arlington, VA 22202

RECEIVED
MAR 0 3 2004

;hnoiogy Center 2100

Dear Sir:
In response to the non-final Office Action mailed August 28, 2003, Applicants
respectfully request entry of the following amendments and reconsideration of all

rejection~ in

view of these amendments and the following remarks. Concurrently submitted herewith is a
Request for a three-month extension of time, thereby extending the deadline for submitting a
timely reply up to and including March 1,2004.

Amendments to the Specificatjon begin on page 2 of this paper.
Amendments to the Claims are reflected in the listing of claims, which begins on page 3
of this paper.

In sum, claims 1,4,13,14,16,22, and 24 are currently amended.
Claims 2,3,5-12, 15, 17-21, 23, and 25-42 remain unchanged.
No claims have been added or cancelled by way of this Reply.
Accordingly, claims 1-42 are currently pending.

Remarks/Arguments begin on page 9 of this paper.

Page 1 of 13

ApPLICATION No.

09/959,654-

AMENDMENT DATED FEBRUARY 26,2004
REPLY TO OFFICE ACTION OF AUGUST 28,

2003

Amendments to the Specification:

Please add the following abstract at the appropriate location:

.~==--------------------------,..---. . --.". --". . --.-.
.
"

~ABSTRACT OF THE DISCLOSURE

A method and system for providing, personalized and integrated online services for
communications and commercial transactions both in private and public venues. The invention
provides personalized information that is conveniently accessible through a network of public
access stations (or terminals) which are enabled by a personal system access card (e.g., smart
card). The invention also provides advertisers the opportunity to directly engage action; and
'\0.
potential user-consumers with selected advertising or marketing content based on each user's
profile and usage history.

Page 2 of 13

'I( ,APJ>.ucRm>Nl~ ~,~

AMENDMmF l!)IA1ID)fUlw;MY 26, 200'4
REPLY TO OFFICE ACTION OF AUGUST 28, ~

Amendments to the Claims:
This listing of claims will replace all prior versions, and ;lstings, of claims in the
application:

I
I

Lk!sting of Claims:
1.

(currently amended) A system, comprising:
a terminal, wherein said terminal has an identification code for detemlining an exact

physical location of said terminal;
a database having a profile for a user; and
a program for displaying personalized information, wherein s; '. personalized
information is selected for display based upon said profile.

Iz.

(origin

~rmation for s
v
)'.

(original)

.The system of claim 1, wherein said database Hlcludes usage history
user.

The system of claim,2, wherein said personalized information is also

selected for display based upon said usage history information.

(currently amended) The system of claim 1, wherein said personalized information is
also selected for display based upon the exact physical location of said ternlinal.

(original)

The system of claim 1 , wherein said personalized information includes an

advertisement.

(original)

The system of claim 1 , wherein said personalized information includes an

online service.

l.Q

11

(original)

The system of claim 1, wherein the system records the time said user logs

on to and logs off of the system, and wherein said personalized information is also selected for
display based upon the time s~d user logs on to the system.
Page 3 of 13

4(

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"t/
.

-

(,)~Y9~';654!

ApPLICATION No.
AMENDMENT DATED FEBRUARY 26,

-\

[

'.

200;;

REPLY TO OFFICE ACTION OF AUGUST 2)\,

f

(original)

2003

The systetn of claim I, wherein said profile is pl. \gressively developed and

updated based upon said usage history information .
~.

./'

9.

The system of claim 1, wherein said usage history information comprises

informa' n selected fiom the grnup consisting of demographic information, personal interest
information, ehavior-tracking information, responses to other advertising cor.!.'t'lt,locations of
the user, and the time at which the user uses the system.

%..'7
(original)

The system of claimX,wherein said program displays advertising content

tailored to said user's interests and behavior.

(original)

The system of claim I, wherein said terminal comprises a keyboard an!·

touch sensitive screen.

(original)

The system of claim I, wherein said terminal comprises a credit card

swipe terminal for processing credit transactions.

,I

y-.

(currently amended) The system of claim I, wherein said terminal iHeludes an

ideHtifieatioH represeHtiHg the paysiealloeatioH of said term.iHal is publicly accessible.

1'V
If.

(currently amended) A system, comprising:
a plurality of terminals located in public spaces and accessible to a user,
each of said plurality of terminals having [[an]] a unique identification represefltiHg its

code for determining an exact physical location of said terminal;
a user access card for allowing said user access to said plurality of terminals, said card
having a unique user identification code corresponding to said user;
a database comprising a user profile for said user;
a program for recording the usage history information of said user; and
a program for displaying personalized information to s~d user, wherein said personalized
information is selected based upon said user profile.
Page 4 of 13

.

\~<~

. ApPLICATION No.

09/959,654

L
.

AMENDMENT DATED FEBRUARY 26,

2004

REPLY TO OFFICE ACTION OF AUGUST 28,

2003

. -,,"
It.
T~tem of claim JA, wherein said personalized information is also

(original)

.." selected for display based upon said usage history information.

(~

Ii

ys.

(currently amended) The system of claim

yr, wherein said personalized information is

also selected for display based upon the exact physical location 0 f said terminal.

6
1'.

Iv

(original)

The system of claim

yr, wherein said personalized information includes

an advertisement.

It
(original)

The system of claim ,J4, wherein said personal information mcludes an

online service~

I~

(original)

The system of claim

JA, wherein said program for recording records the

time said user logs on to and logs off of the system, and wherein said personalized information is
also selected for display based upon the time said user logs on to the system.

20.

The system of claim 14, wherein said usage history information comprises

information

lected from the group consisting of: demographic information, personal interest

information, be

vior-tracking information, responses to other advertising content, locations of

terminals used by t e user, and the time at which said user uses the system.

1'1-(original)

The system of claim )A', further comprising an email program for allowing

said user to send and receive emails.

\fl\

JZ

(currently amended) A method, comprising:
providing a terminal accessible by a consumer, wherein said terminal has an

identification code for determining an exact physical location of said terminal;
maintaining a database having a profile of said consumer;
recording usage history information of said consumer;
maintaining a plurality of advertisements and online services;

Page 5 of 13

, APPLICATION No. 09/959.654
AMENDMENT DATED FEBRUARY 26.2004
REPLY TO OFFICE ACTION OF AUGUST 28. 2003

selecting among said plurality of advertisements and online services based upon said
profile;
providing selected advertisements and online services to said consumer.

,"'/'
(original)

tq

n:.::thod of claim)Z, wherein said selecting step also uses said usage

~.

history information.

[q
The method of claim~, wherein said selecting step also uses the

-zl

,Ji.

(currently amended)
exact physical location of said terminal.

z1/

75.

t~

(original)

The method of
said consumer on a rolling basis.

tz" wherein said selected advertisements are displayed to

t-~
~.

27.

(original)

/1

(original)

The method of claim)2, wherein said selecting step also uses the time
said consumer logs on to said terminal.

A system, comprising:

a plurality of terminals located in public spaces; and
a

rver operably connected with said plurality of terminals and having content;

whel1 .n the system displays at least a portion of said content on each of said plurality of
on the physical location of said each of said plurality of terminals.

'\.
28.

(original)

e system of claim 27, wherein said content includes an advertisement.

29.

(original)

The sys m of claim 2, wherein said content includes a service.

30.

(original)

The system 0

laim 27, wherein each of said terminals is accessible free

of charge to users.

31.

(original)

wherein said network is a private network.

Page 6 of 13

l

~ ,fI." "~

.

A:UCATION DATED FEBRUARY 26, 20tJ1
No. 091959,65'
AMENDMENT
REPLYTOOFFICEAcTIONOFAuGUST2~.

3 .

(original)

2003

The system of claim 27, wherein said network' 'lcludes broadband

33 .

~s~em of claim 27, wherein said network; ncludes wireless

34.

The system of claim 33, wherein said wireless communications include

35.

The system of claim 27, wherein said server is operably coupled to said

.•"'

by wireless and wired communications.

(original)

e system of claim 27, wherein said wireless communications include

communication via satelli

for downloading said content and said wired communications

36.

includes communication via: telephone lines for uploading information from eal'il of "aid
plurality of terminals to said s rver.

37.

(original)

The system of claim 27, further comprising an email program for allowing

users to send and receive emails.

38.

(original)

The system of cl .m 27, wherein each of said plurality of terminals

includes cache memory for accessing sai content.

39.

(original)

A method, comprisin .

providing a plurality of terminals locat d in public spaces which are operably connected
by a network;
maintaining advertisements and services;
providing at least a portion of said advertis

ents and services to each of said plurality of

terminals based upon the physical location of said e h of said plurality of terminals.

Page 7 of 13

ApPLICATION No.

091959,654

AMENDMENT DATED FEBRUARY 26, 2004
REPLY TO OFFICE ACTION OF AUGUST 28,

40.

2003

The method of claim 39, wherein use of said plurality of terminals is
cess free of charge.

41.

The tn~jhod of claim 39, wherein sponsors provide for the expense of said

s

A2.

(original)

~ operating cost of said maintaining and said providing

Tn method of claim 39, wherein said public sp<lt:CS include retail stores

and restaurants.

Page 8 of 13

APPLI€ATION N(i)! (l)lJY~654'
AMENDMENT DATED FEBRUARY 26. 2()()4
REPLY TO OFFICE ACTION OF AUGUST 2a,

2003

REMARKS
Claims 1-42 are currently pending. Applicants respectful i y request that the Examiner
reconsider all rejections in the outstanding Office Action in view of the foregoing amendments
and the following rem~><'

.'

~,

Applicants are submitting an abstract to satisfy the EX;1miner'srequest.

However,

Applicants note that an abstract was submitted in the specification ,Is-filed, i.e., the copy of the
International Application PCTIUSOO/11840, which is presented by way of Publication No. WO
. 00/67092, submitted under 35 U.S.C. § 371.

I.

Rejection under 35 U.S.C. § l02(b)
Claims l-lO and 22-26 stand rejected under 35 U.S.C. lO2(b), as alleg 1Jy anticipated by

Sara Hedberg, "Agents for Sale: First Wave of Intelligent Agents Go Cot. imercial," IEEE
Expert, Vol. 11, Issue 6, pages 16-19 ("Hedberg"). Applicants contend that the inSL"lt rejection
is unsustainable.
In order for there to be anticipatiqn, the identical invention must be shown

III

as

complete detail as is contained in the patent claim. See Richardson v. Suzuki Motor Co., 868
F.2d 1226, 1236 (Fed. Cir. 1989)
Although Applicants conclude that the grounds for the instant rejection are unsoundly
based, independent claim 1 has nonetheless been amended to better describe the claimed
invention. Claim 1 as amended is repeated as follows:
1. A system, comprising:
a terminal, wherein said terminal has an identification code for
determining an exact physical location of said terminal;
a database having a profile for a user; and
a program for displaying personalized information, wherein said
personalized information is selected for display based upon said profile.
(Emphasis added.).

Support for the amendments to this claim are found at least in claim 13 as originally filed and
page 8, lines 6-8 of Applicants' specification. Claim 1 as it is now presented captures the
concept of a terminal having an identification code for determining the exact physical location of
the terminal. Such an identifier is particular useful, for example, to enable presentation of
information based on the actual physical location of the terminal such as, but no limited to,
information pertaining to adjacent or neighborhood restaurants, shops, museums, etc. (i.e., the
"street space") near the terminal.

The Firefly agent disclosed by Hedberg merely makes
Page 9 of 13

ApPLICATION No. 09/959,654
AMENDMENT DATED FEBRUARY 26, 2004
REPLY TO OFFICE ACTION OF AUGUST 28, 2003

personal interest suggestions based on a user's profile or other users' recommendations (see page
16), and not on the physical location of a terminal. In fact, Hedberg is solely focused on
presenting an overview of

~~

Firefly agent and provides no specifics whatsoever about a

terminal or computer ~~d facilitate the agent. Thus, Hedberg fails to teach or suggest "a
...
~

terminal, wherein said terminal has an identification code for determining an exact physical
location of said terminal" as recited in independent claim 1.

Handel also fails to teach or

suggest this limitation. See remarks, infra.
With regard to dependent claims 2, 3, 8, and 9, Hedberg fails to teach or suggest the
recited "usage history" as the Examiner otherwise contends. Referri ng to page 8, line 24 to page
9, line 3 of Applicants' specification, a "usage history" includes information such as location or
time of terminal access, user responses to advertising, and types of content accessed by the user.
Firefly as described by Hedberg records a user profile based merely upon answers to preference
questions. Hedberg does not even identify the particular questions that Firefly purportedly asks
the user. Hedberg does not teach or suggest the tracking, storing or displaying of personalized
information associated with a user's "usage history."
Hedberg also fails to teach or suggest "personalized information ... selected for display
based upon the exact physical location of said terminal" as recited in dependent claim 4. See
remarks, supra.
With regard to dependent claims 5 and 10, Hedberg fails to explicitly disclose
"personalized ... advertisement" as recited. Hedberg discusses general advertising (see page
17), but it does not explicitly teach or suggest that the advertising is personalized according to,
for example, a user's interests and behavior.
Hedberg fails to teach or suggest "the system records the time said user logs on to and
logs off of the system, and wherein said personalized information is also selected for display
based upon the time said user logs on to the system" as recited in claim 7. Hedberg provides no
teaching or suggestion that supports anticipation of this claim. See remarks, supra.
Independent claim 22 has also been amended to better describe the claimed invention.
Claim 22 as amended is repeated as follows:
22. A method, comprising:
providing a terminal accessible by a consumer, wherein said terminal has
an identification code for determining an exact physical location of said terminal;
maintaining a database having a profile of said consumer;
Page 10 of 13

APPLICATION No.

09/959,654

AMENDMENT DATED FEBRUARY 26,2004
REPLY TO OFFICE ACTION OF AUGUST 28,2003

recording usage history information of said consumer;
maintaining a plurality of advertisements and online services;
selecting among said plurality of advertisements and online services based
upon said profile;
providing selecte.,d advertisements and online services to said consumer.
(Emphasis adde~·«
.. As with independent claim 1, claim 22 recites an identification code for determining the exact
physical location of the terminal. Hedberg fails to teach or suggest this limitation. See remarks,
supra.

Moreover, Hedberg fails to teach or suggest "usage history information" or

"advertisements ... based on [a user's] profile." See remarks, supra. Simply put, Hedberg does
not provide the specific details that are contained in this independent claim and all claims
dependent therefrom, e.g., claims 23-26.
For at least the reasons set forth above, Applicants respectfully submit that the instant
rejection is improper and unsustainable, and request that the Examiner withdraw the rejection of
claims 1-10 and 22-26.

II.

Rejection under 35 U.S.C. § 103(a)
Dependent claims 11-13 stand rejected under 35 U.S.c. 103(a), as allegedly rendered

unpatentable over Hedberg in view of U.S. Patent No. 6,195,651 to Handel et al. ("Handel").
Applicants contend that this rejection is unsustainable at least because Handel fails to provide the
teachings missing from Hedberg noted with respect to independent claim 1.

For example,

Hedberg fails to teach or suggest "a terminal, wherein said terminal has an identification code for
determining an exact physical location of said terminal" as recited in claim 1. See remarks,
supra. Handel provides a web-based interface that employs a user profile. See Handel abstract.

The closest Handel touches upon location information is a "location the user indicates as the
meeting place" as the Examiner has pointed to in Handel col. 28, 11. 14-26. However, Handel's
(

meeting location is just that, a location specified for a meeting, and clearly not an identification
code pertaining to an actual physical location of a terminal. Thus, Hedberg taken alone, or in
combination with Handel, fails to teach or suggest all of the limitations recited in claims 11-13.
For at least the reasons set forth above, Applicants respectfully submit that the instant
rejection is improper and unsustainable, and request that the Examiner withdraw the rejection of
claims 11-13.

Page 11 of 13

APPLICATION No. 09/959,654
AMENDMENT DATED FEBRUARY 26,

2004

REPLY TO OFFICE ACTION OF AUGUST 28,

2003

Claims 14-21 and 27-42 stand rejected under 35 U.S.C. 103(a), as allegedly rendered
unpatentable over Hedberg in view of HandeL

Applicants contend that this rejection is

unsustainable.
.<

Independent clai~~s been amended to better describe the claimed invention. Claim
14 as amended is repeated as follows:
14. A system, comprising:
a plurality of terminals located in public spaces and accessible to a user,
each of said plurality of terminals having a unique identification
representing its code for determining an exact physical location of said terminal;
a user access card for allowing said user access to said plurality of
terminals, said card having a unique user identification code corresponding to said
user;
a database comprising a user profile for said user;
a program for recording the usage history information of said user; and
a program for displaying personalized information to said user, wilerein
said personalized information is selected based upon said user profile. (r:mphasis
added.).
The system of independent claim 14 recites ~a plurality of terminals, wherein each one has a
unique identification code for determining the exact physical location of the terminal like set
forth in independent claim 1. Neither Hedberg nor Handel teach or suggest a plurality of
terminals, each of which has the recited unique identification code pertaining to an exact
physical location of the terminal.

See remarks, supra.

Thus, Hedberg taken alone, or in

combination with Handel, fails to teach all of the limitations recited in independent claim 14 and
all claims dependent therefrom, i.e., claims 15-21.
Independent claim 27 is presented as originally filed and is repeated as follows:
27. A system, comprising:
a plurality of terminals located in public spaces; and
a server operably connected with said plurality of terminals and having
content;
wherein the system displays at least a portion of said content on each of
said plurality of terminals based upon the physical location of said each of said
plurality ofterminals. (Emphasis added.).
The system of i,ndependent claim 27 recites a display of content "based upon the physical
location of said each of said plurality of terminals." Independent claim 39 similarly recites this
limitation. Neither Hedberg nor Handel teach or suggest the display of information based upon
the physical location of a t~rminal. See remarks, supra. Thus, Hedberg taken alone, or in

Page 12 of 13

;

.

ApPLICATION No.

09/959,654

AMENDMENT DATED FEBRUARY 26,2004
REPLY TO OFFICE ACTION OF AUGUST 28,2003

combination with Handel, fails to teach all of the limitations recite! I in independent claim 27 or
39, and all claims dependent tl}erefrom. i.e., claims 28'-38 or claim 40-42, res;'ectivcly.
For at least

~~~s set forth above: Applicants respectfully subnit that the instant

rejection is improper and unsustainable, and request that the Examiner withdr aw the rejection of
claims 14-21 and 27-42.

CONCLUSION
Applicants respectfully submit that this application is in condition t 'r allowance, and
such disposition is earnestly solicited.

Should the Examiner believe ;;my patentability issues

remain upon considering this Reply, the Examiner is invited to contact the Applicants'
undersigned representative to discuss a resolution of such.
Applicants are submitting herewith a Petition for a Three-Month Extt.m of Tllllt' and
requisite fees totaling $465.00. In the event that a variance exists betwet:! the fee al;:nt
submitted by Applicants and that deemed necessary by the United States Pate!;:

,10(\

Trademark

Office in order to enter and consider this Reply, or to maintain the present appLration pending,
please charge or credit such variance to the undersigned's Deposit Account No. 50-0206.
Respectfully submitted,
ON & WILLIAMS LLP

Dated: February 26, 2004

By.
Trevor Coddington, Ph.D.
Patent Agent
Registration No. 46,633

TC:cdh

Page 13 of 13
63000.000016 WASHINGTON 403311 vI