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 K

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Altclmey Docket No. 63000.16
(Formerly 031612.0041)

IN THE UNITED STATES PATENT ANP TRADEM:I}{K OFFICE

AUG 182004..
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'~pa1ent Application of:
Tom MATHAI, et al.

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Serial No.:

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Filed: May 3, 2000

Jacqlies ~ILLARD

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For:

METHOD AND SYSTEM FOR
PROVIDING PERSONALIZED
ONLINE SERVICES AND
ADVERTISEMENTS IN
PUBLIC SPACES

Group Art Unit' 2175

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)
)

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AMENDMENT AFTER ALLOWANCE UNDER 37 CFR § 1.312
U.S. Patent and Trademark Office
2011 South Clark Place
Customer Window
Crystal Plaza Two, Lobby, Room IB03
Arlington, VA 22202
Dear Sir:
In response to the Notice of Allowance and Examiner's Amendment of May 19, 2004,

Applicants hereby respectfully submit and request entry of the following amendments.
Amendments to the Claims are reflected in the listing of claims, which begins on page 2
of this paper.

In sum, claims 1, 14, and 22 are currently amended.
Claims 3-8, 10-13, 15-19,21, and 23-26 remain unchanged.
Claims 2, 9, 20, and 27-42 have been canceled.
Accordingly, claims 1,3-8, 10-19, and 21-26 are currently pending.
Remarks begin on page 6 of this paper.

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Page 1 of6

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APPLICATION No. 69/959,654
AMENDMENT AFTER ALLOWANCE \!'IOER 37 CFR § 1.312 DATED AUOUST 18,2004

Amendments to the Claims:
This listing of clrun'" will replace all prior versions, and iistings, of claims in the
application:
Listing or Claims:
1.

(currently amended) 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, wherein said database includes US,li'e history
infonnation for said user, said usage history information comprises information

',l: leeted

from the

group consisting of: demographic information. personal interest information. behavior-tracking
infonnation, responses to ethef advertising content, locations of terminals used by the said user,
and the time at which the said user uses the system. and any combination thereof; and
a program for displaying personalized infonnation, wherein said personalized
infonnation is selected for display based upon said profile.
2.

(canceled)

3.

(previously presented)

The system of claim I, wherein said personalized

infonnation is also selected for display based upon said usage history infonnation.
4.

(previously presented)

The system of claim 1, wherein said personalized

infonnation is also selected for display based upon the exact physical location of said terminal.

5.

(original)

The system of claim 1. wherem said personalized information includes an

advertisement.

6.

(original)

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

online service.

Page 2 of6

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to

ApPLICATION No. 09/959.654
AMENDMENT AFTER ALLOWANCE UNDER 37 CFR §

7.

(original)

1.312 DATED AUGUST 18, 2004

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 ~",said user logs on to the system.
8.

(original)

The system of claim 1, wherein said profile is progressively developed and

updated based upon said usage history information.
9.

(canceled)

10.

(previously presented)

The system of claim 1, wherein said program displays

advertising content tailored to said user's interests and behavior.
11.

(original)

12.

(original)

The system of claim 1, wherein said terminal comprises a keyboard and a
touch sensitive screen.
The system ofciaim 1, wherein said terminal comprises a credit card

swipe terminal for processing credit transactions.

13.

(previously presented)

The system of claim 1, wherein said terminal is publicly

accessible.

J

14

(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 a unique identification 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, wherein said usage
history information comprises information selected from the group consisting of: demographic
information, personal interest information, behavior-tracking information, responses to etbef
Page 3 of6

ApPLICATION No. 091959.65'4
AMENDMENT AFTER ALLOWANCE UNDER 37 CFR §

1.312 DATED AUOUST 18. 2004

advertising content,locations of terminals used by ~ said user, ane tRt>-tlme at which said user
uses the system. and any combination thereof; and
a program for displayi9g personalized infonnation to said user. wherein said personalized
information is select4'iupon said user profile.
15.

(original)

The system of claim 14, wherein said personalized infonnation is also

selected for display based upon said usage history information.
16.

(previously presented)

The system of claim 14, wherein said personalized

information is also selected for display based upon the exact physical location of said terminal.

17.

(original)

The system of claim 14, wherein said personalized information includes

an advertisement.
18.

(original)

The system of claim 14, wherein said personal infonnation includes an

online service.
19.

(original)

The system of claim 14. 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.

(canceled)

21.

(original)

The system of claim 14, further comprising an email program for allowing

said user to send and receive emails.
22.

(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;

Page 4 of6

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ApPLICATION No. 09/959,614
AMENDMENT AfTER All.OWANCEl U~DBR 37 CFR

§ 1.312 DATBDAuOUST 18.2004

recording usage history information of said consumer, where 11 , said usage history
information comprises information selected from the group consistinf~ "If: demographic
information, person~t information. behavior-tracking information, responses to etftef:
advertising content, locations of terminals used by the consumer, anel ~e time at which the
consumer uses the system. and any combination thereof;
maintaining a plurality of advertisements and online services;
selecting among said plurality of advertisements and online services ba.c;,ed upon said
profile;
providing selected advertisements and online services to said consumer.
23.

(original)

The method of claim 22, wherein said selecting step also uses said usage

history information.
24.

(previously presented)

The method of claim 22, wherein said selecting ~tep also
uses the exact physical location of said tenninal.
25.

The method of 22, wherein said selected advertisements are displayed to

said consu er on a rolling basis.
26.

The method of claim 22, wherein said selecting step also uses the time

said consu er logs on to said terminal.
27-42. (canceled)

Page 5 of6

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ApPLICATION No. '091959,654
AMENDMENT AfTER AlJ.OWANCE UNDER 37 CPR §

1.312 DATED AUOUST 18, 2004

REMARKS
Applicants thank the Examiner for the Examiner's Amendment on May 19,2004, placing
the instant application in condition for allowance. By way of the present paper, Applicants wish
to minimally amen~endent claims to better describe the claimed invention. Applicants
believe that these amen(Jments in no way affect the Examiner's determination that the claims are
patentable in view of the cited prior art.
No fee is believed to be necessary for the entry and consideration of this Amendment.
Nonetheless, in the event that a fee is deemed necessary by the United States Patent and
Trademark Office in order to enter and consider this Amendment, please c~arge or credit such
variance to the undersigned's Deposit Account No. 50-0206.
Respectfully submitted,
HUNTON & Wll.LIAMS LLP

~f:t!t

Dated: August 18, 2004
Hunton & Williams LLP
Intellectual Property Group
1900 K Street, NW, Suite 1200
Washington, DC 20006
phone: [phone]
fax: [phone]

Registration No. 46,633

Page 6 of6
63000.000016 WASHINGTON 429257vl