Goodard v. Google, Inc.

Filing 178

Goodard v. Google, Inc.

Doc. 178 Att. 4

Exhibit 5

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

UNITED STATES PATENT AND MRADEMARK OMCE
UNTED STATES DEPARTMENT OF COMMERCE

,I*MF
APPLICATION NO. 08/892,472 24228 7590 FILING DATE 07/14/1997 03/27/2003

Unit-I St Patent and Trado,nrk Office Ada...s: COMMISSIONER OF~ PATEMTS AID TRAflaAAX W-hm..t.n, D C 2023

FIRST NAMED INVENTOR
STEPHEN JONATHAN ORR

ATTORNEY DOCKET NO. ICONFIMTO
AT197061 1-1 6939

O

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

EART UNIT 2673I.

EXAMINER

SH-ANKAR, VIJAY
PAPER NUMBER7

DATE MAILED: 03/27/2003

Please fmnd below and/or attached an Office conmmunication concerning this application or proceeding.

PTO-90C (Rev. 07-01)

Office Action Summary
--

0/9,7

tpe

r

The MAILING DATE of this communicaton appears on the over sheet with the orrespondence 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 tim. may be available under the provisions of 37 CFR 1.136 (a),. In no event however, may, a reply be timel filed after SIX (6) MONTHS from the mailing date of this communication. -If the Period for reply specified above is less then thirty ISO) days, a reply within the statutory mininmum of thirty (30) days will be considered timely. If NO period for reply is specified above, the maxknm statutory period will apply and will expire SIX (0) MONTHS from the meling date of this communication. *Failure to reply within the set or extended period for reply will, by sttue, cause the application to become ABANDONED (35 U.S.C. § 133). *Any reply received by the Office later then three months after the mailing data of this communication, even if timevly filed, may reduce anry earned patent tern adjustiment. See 37 CFR 1 .704(b).

Status 1)w~ ReSponSive tocommunication(s) filed on Jan 6, 2003 2a) 5d This action is FINAL. 2b)E1 This action is non-final.

closed in accordance with the practice under Ex parte Quayle~, 1935 C.D. 11; 453 0.G. 213. Disposition of Claims 4)k Claim(s) 1-28 is/are pending in the application.
4a) Of the above, claim(s)
________________________

3)111 Since this application is in condition f or allowance except for formal matters, prosecution as to the merits is

is/are withdrawn from consideration. is/are allowed.

5)EI Claim(s) _______________________________
65a~ Claim(s) 1-28

is/are rejected. objected to.
subject to restriction and/or election requirement.

7)01
8Ull

Claim(s) _____________________________islare
Claims
_______________________are

Application Papers 9)1: 10)1E2 The specification ig.objected to by the Examiner. The drawing(s) filed on
__________is/are

a) E2 accepted or b)E2 objected to by the Examiner. is: a)ED approved b)EI disapproved by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).

11)E11

The pr4?posedlur awing correction filed on

_

_______

If approved, corrected drawings are required in reply to this Office action.

12)02 The oath or declaration is objected to by the Examiner. Priority under 35 U.S.C. §119 and 120 13)1 Acknowledgement is made of a'clailm for foreign priority under 35 U.S.C. § 119(a)-(d) or If). a)E) All b)EI Some* c)D1 None of:

1. El Certified copies of the priority documents have been received.
2. E2 Certified copies of the priority documents have been received in Application No. 3.01 Copies of the certified copies of the priority documents have been received in this National Stage application from the International Bureau (PCT Rule 17.2(a)). *See the attached detailed Office action for a list of the certified copies not received.
__________

14)02 Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 11 9(e).
a)DL

15)1
ii1) 2) 3)

The translation of the foreign language provisional application has been received. Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 1120 and/or 121.
4)

Attachment(s)
Notice of Referenices Cited IPTO8921

1

Interview Summnary (PTO-41 3) Paper No(s).

____

12Notice of Drattsenson's Patent Drawing Review IPTO-948)
1
Information Disclosure Stataenel (PTO-1449) Paper NoWd.
____

5) Ll Notice of Infonnal Patent Application (PTO. 152)

)

12

Other

U. S. Patent and Trademark Office

PTO-326 (Rev. 04-01)

Office Action Summary

Part of Poaer p

0.

I

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

Page 2

DETAILED ACTION 1. 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.I

-

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 inthis Office action:
Apersorl shall be entitled to a patent unless (e)the invention was dIescribed in a patent granted on an application for patent by another filed in tfie,United 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. i102(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 1 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- aol. 6; Iine 61; col. 13; lines 2-23).

Claim Rejections -35 USC § 103 5. 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 the 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

Application/Control Numnber: 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 Pal et al (5,668,571) in view of

As to claims 2-3, 8, 9, 15 and 23, Psi 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 icon, pause icon, rewind icon, and fast-forward icon (see figs. 1,2,8; col.9, line 38- col. 11, 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 Psi et al for

providing a'cost effective system for recording, because such modification would eliminate th6 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.11, line 31; col11; 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 broacast industry equipment to the end user (see figs. 1,2; col.9, line 38- col. 1, line 31; coi.1; lines 60-66).

Regarding Claims 13, 17, 21 and 25, Pai 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 et 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; col21; 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 et 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 graphical user interface in Fig.8 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; dol.9, line 38- col.1 1, line 31; col.19; lines 51-56).

Response to Arguments

7. ,Applicant's persuasive.

arguments filed on 1-6-03 have been fully considered but they are not

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

Page 7

Applicant argues that Pal et al dose not teach 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; detecting selection of the video control icon; 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. However, Pai et al teaches 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. 3A-B, 4A-B; col.1, lines 14-67; col. 2; lines 2 - 63; col. 3, lines 1-55; col.4, line 28- col.6, line 61); detetting selection of the video control icon (see flgs.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; figs. 3B3,4B3; col.4, line 28- col. 6, line 61; col.1 3; lines 2-23).
8.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time

policy as set forth in 37 C.F.R. § 1.136(a).

A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS FINAL ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST RESPONSE IS FRLED WITHIN TWO MONTHS OF THE MAILING DATE OF THIS FINAL ACTION AND THE ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF THE THREE-MONTH SHORTENED STATUTORY PERIOD, THEN THE SHORTENED STATUTORY PERIOD WILL EXPIRE ON THE DATE THE ADVISORY ACTION IS MAILED,

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

Pgge 8 Pa

AND ANY EXTENSION FEE PURSUANT TO 37 C.F.R. § 1.136(a) WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR RESPONSE EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL ACTION.

ANY AMENDMENT OR REQUEST FOR RECONSIDERATION IN RESPONSE TO THIS FINAL OFFICE ACTION SHOULD BE DIRECTED TO:

Commissioner of Patent and Trademarks BOX AF Washington D.C. 20231
By following this practice it has been found that processing time

of the response is reduced,'thereby resulting in fewer potential requests for extension of timhe by applicant.

9. Any inquiryconcemning this communication or earlier communications from the examiner should be directed to VIJAY SHANIKAR whose telephone number is [phone]. t teAny inquiry of a general nature or relating to the status of this application should be directed toteGroup receptionist whiose telephone number is [phone]. The Group's new FAX number is (703) 872- 9314. This FAX number is to be used only for Group 2600 papers.

VIJAY SHANKAR PRIMARY EXAMINER GROUP ART UNIT 2673