Goodard v. Google, Inc.

Filing 178

Goodard v. Google, Inc.

Doc. 178 Att. 3

Exhibit 4

Exhibit to the Supplemental Declaration of Aaron R. Fahrenkrog in Support of Plaintiffs' Reply Claim Construction Brief
Dockets.Justia.com

UNITED STATES PATENT AND Th%DEMARK OMCiE
UITTD STATES DEPA1ITEN OP COMMIR{RROE U.Nte StAto. P.1o1it nd 'ra.domak OCR..e
"&ftess: OOL4IiISSONIR OF PATENTS AND TRABEUMS Washzn, DO 20=3

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APPLICATION NO. 08Y892,472 24228 7590

FILING DATE

FIRST NAMED INVENTOR STEPHEN JONATHAN ORR

ATTORNEY DOCKET NO. AT197061 1I-1

CONFIRMATION NO. 6939

07/1411997 09AY32002

MARKISON & RECKAMP, PC P0 BOX 06229 WACKER DR CHICAGO, IL 60606-0229

F

ART UNIT 2673

EXAMINER

i

SHANKAR, VIJAY
PAPER NUMBER 7

DATE MAILED: 09/13/2002

*1 1

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 07-0al)

I

Application No.

Applicant(s) Stephen Orr
Art Unit

Office Action Summary
--

08/892,47 2 Examiner I VIJAY SHANKCAR

2673

The MAILING DATE of this communicartion appears on the cover sheet with the correspondence address -

Period for Reply A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE THE MAILING DATE OF THIS COMMUNICATION.
-Extensions

3

MONTH(S) FROM

of tine may be available under the provisions of 37 CFR 1.136 (a). In no event, however, may a reply be timely filed after Six (61 MONTHS from the mailing date of this conmmunication. *If the period for reply specified above is loss then thirty (30) days, a reply within the statutory minimunm of thirty (30) days will be considered timely. If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (0) MONTHS from the mailing date of this consiunication. -Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133). -Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earnd patent tern, adjustment. See 37 CFR 1.7041b)1.

Status 1)(kI Responsive to communication(s) filed on Jul21, 2000 2a) E This action is FINAL. 2b)5d This action is non-final. 3) El Since this application is in condition for allowance except for formal matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quoayle, 1935 C.D. 11; 453 0.G. 213. Disposition of Claims 4)5l Claim(s) 1-28 is/are pending in the application.
4a) Of the above, claim(s)
______________________

is/are withdrawn from consideration.

S)D

Claim(s) ________________________

_____

is/are allowed. is/are rejected. objected to.

6)5d Claim(s) 1-28

7)E11 Claim(s) ___________________________is/are
BILD Claims _________________________ Application Papers 9)131 The specification is objected to by the Examiner.
11O)LI

are subject to restriction and/or election requirement.

The drawing(s) fileBlon

__________is/are

a) El accepted or b)E3 objected to by the Examiner.

11) E .12)EI1

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a). The proposed drawing correction filed on a)ED approved b)EI disapproved by the Examiner. e If approved, corrected drawings are required in reply to this Office action. The oath or declaration is objected to by the Examiner.
__________is:

Priority under 35 U.S.C. §§1119 and 120 13)[1. Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f). a)LI All b)EJ . Some* CIEli None of: 1.DL Certified copies of the priority documents have been received. 2. El Certifipd copies of the priority documents have been received in Application No. .3. 0 Copies of the certified copies of the priority documents have been received in this National Stage te application from the International Bureau (PCT Rule 17.2(a)). *See teattached detailed Office action for a list of the certified copies not received. 14)01 Acknowledgement is made of a claim for domestic priority under 35 U.S.C. §*119(e). a)DE The translation of thefdoreign language provisional application has been received. 15)111 Acknowledgement is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
__________

Attachment(s)
1) [Notice of Reference. Cited PTO-892) 21 3) Notice of Draftspersoni's Patent Drawing Review (PTO-948)

4) [:3

Interview Summasry (PTO-413) Paper No(s).

____

5) El Not!.e of Informal Patent Application WPTO152) 81___ Other: [I 1

L] Information

Disclosure Stateamenit(s) (PTO-1 4491 Paper No(s).

U. S. parent and Trademark, Office

PTO-326 (Rev. 04-01)

Office Action Summary Office Action Summary

Part of Paper No. 12 Part of Paper No. 12

Application/Control Number: 08/892,472 Art Unit: 2673

Page 2

DETAILED ACTION I. Applicant's request for reconsideration of the finality of the rejection of the

last Office action is persuasive and, therefore, the finality of that action is withdrawn.

Drawings 2. This application has been filed with informal drawings which are acceptable

for examination purposes only. Formal drawings will be required when the application is allowed.

-

Claim Rejections -35 USC § 102

3.

The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102

that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless
-

-

(e) the invention was described in a patent granted on an application for patent by another filed in the lUnited States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4)of section 371 (c) of this title before the invention thereof by the applicant for patent. The changes made to 35 U.S.C. 102(e) by the American Inventors

Protection Act of 1999 (AIPA) do not apply to the examination of this application as the

application being examined was not (1) filed on or after November 29, 2000, or (2)

Application/Control Number: 08/892,472 Art Unit: 2673

Page 3

voluntarily published under 35 U.S.C. 122(b). Therefore, this application is examined under 35 U.S.C. 102(e) prior to the amendment by the AIPA (pre-AIPA 35 U.S.C. 102(e)). 4. Claims 1 and 7 are rejected under 35 U.S.C. 102(e) as being anticipated by

over Pai et al (5,668,571) . As to claims I and 7 Pal et al disclose a method for providing control of background video, the method comprises providing a video control icon that is visible on the display, wherein the video control icon relates to live video that is being presented as a background on a display (see figs. 1-5; col.1, lines 14-67; col. 2; lines 2 - 63; col. 3, lines 1-55; col.4, line 28- col.6, line 61); detecting 'selection of the video control icon (see figs.1-5; col.2; lines 54-59); when the video control icon has been selected, providing a control panel while the live video remains in the background and an application that was in focus remains focus (see summary; background; col.4, line 28- col. 6, line 61; col.13; lines 2-23).

Claim Rejections - 35 5.

USC § 103

The following is aquotation of 35 U.S.C. 103(a) which forms the basis for all 4
(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 fhe 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

obviousness rejections set forth in this Office action:

Sr

4

Application/Control Number: 08/892,472 Art Unit: 2673

Page 4

mailer pertains. Patentability shall not be negatived by the manner in which the invention was made.

6.

Claims 2-6 and 8-28 are rejected under 35 U.S.C. 103(a) as being Henley et al. ( 5,761,417).

unpatentable over Pai et al (5,668,571) in view of

As to claims 2-3, 8, 9, 15 and 23, Pal et al fail to disclose that the method further comprises as the control panel, at least one of: volume adjust icon, mute icon, pause icon, rewind icon, and fast-forward icon . However, Henley et al disclose that the method further comprises as the control panel, at least one of: volume adjust icon, mute icqn, pause icon, rewind icon, and fast-forward icon (see flgs.1 ,2,8; col.9, line 38- col.1 1, line 31; col.19; lines 51-56).It would have been obvious to one of ordinary skill in the art at the time the invention Was made to have used the teachings of Henley into Pai et al for

providing a cbst effective system for recording, because such modification would eliminate the disadvantages of video tape while providing a VTR (video tape recorder) metaphor for system control (see col.2; lines 61-62).

Application/Control Number: 08/892,472 Art Unit: 2673

Page 5

As to claims 4, 10, 16, 20, 24, and 28 Henley et al disclose the interface resembles the control panel of a video cassette recorder, which has control buttons such as Play, Pause, Rewind, and Stop
.

In addition, it also provides selection

panels when an operation involves a selection by the user (for example, load requires the user to select a video presentation to be loaded. The graphical user interface is especially useful for direct user interactions (see figs.1,2; col.9, line 38col.1 1, line 31; col.1 9; lines 12-19). As to claims 5-6, and 11-12, Hanley et al disclose broadcast methods( including motion picture, cable, television network, and record industries ) generally provide storage in the form of analog or digitally recorded tape. The playing of tapes causes isochronous data streams to be generated which are then moved through broadcasl6ndustry equipment to the end user (see flgs.1,12; col.9, line 38- col.1 1, line 31; col.1; lines 60-66).

Regarding Claims 13, 17, 21 and 25, Psi et al teaches all the subject matters claimed (see paragraph no.4 of office action) except first, second, and third storage means for storing progamming instructions.

Application/Control Number: 08/892,472 Art Unit: 2673

Page 6

Hanley at al teaches that first, second, and third storage means for storing progamming instructions (figs. 12-14,17; col.29, line 29- col.32, line 27; and figs.1,2,7-8; col.9, line 38- col.1 1, line 31; col.21; lines 1-4). Thus, it would have been obvious to the person of ordinary skill in the art at the time of invention to incorporate the teaching of Henley et al into Pai at al for providing a system in which video data can be stored in a cost effective manner.

As to claims 14,18-19,22,26, and 27, Hanley et al disclose a media streamer 10 provides a set of VCR-like play controls. The media streamer graphicai user interface in Fig8 shows that the following functions are available: Load, Eject, Play, Slow, Pause, Stop, Rewind, Fast Forward and Mute. These functions are activated by clicking on the corresponding soft buttons on the graphical user interface (see figs.1,2,8; cot.9, line 38- col.1 1, line 31; col.1 9; lines 51-56).

7.

Applicanfs arguments with respect to claims 1-28 have been considered but are moot

in view of the new wround(s) of rejection.

Application/Control Number: Art Unit:

Page 2

8.

Any inquiry concerning this communication or earlier communications from the

examiner should be directed to VIJAY SHANKAR whose telephone number is [phone]. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bipin Shaiwala, can be reached on [phone]. Any response to this action should be mailed to: Commissioner of Patents and Trademarks Washington, D.C. 20231 or faxed to: [phone]

Hand-delivered responses should be brought to Crystal Park 11, 2121 Crystal Drive, Arlington. VA., Sixth Floor (Receptionist). Any' inquiry of a general nature or relating to the status of this application or proceeding shpuld be directed to the Technology Center 2600 Customer Service Office whose telephone number is [phone]

VIJAY SHANKAR PRIMARY EXAMINER ART UNIT 2673