iLOR, LLC v. Google, Inc.

Filing 12

MOTION for Preliminary Injunction by iLOR, LLC (Attachments: # 1 Memorandum in Support Part 1# 2 Memorandum in Support Part 2# 3 Proposed Order # 4 Exhibit A# 5 Exhibit B# 6 Exhibit C# 7 Exhibit D# 8 Exhibit E# 9 Exhibit F# 10 Exhibit G# 11 Exhibit H# 12 Exhibit I# 13 Exhibit J# 14 Exhibit K# 15 Exhibit L# 16 Exhibit M# 17 Exhibit N# 18 Exhibit O# 19 Exhibit P# 20 Exhibit Q# 21 Exhibit R# 22 Exhibit S# 23 Exhibit T# 24 Exhibit U# 25 Exhibit V# 26 Exhibit W# 27 Exhibit X# 28 Exhibit Y# 29 Exhibit Z# 30 Exhibit AA# 31 Exhibit BB# 32 Exhibit CC# 33 Exhibit DD# 34 Exhibit EE# 35 Exhibit FF# 36 Exhibit GG# 37 Exhibit HH# 38 Exhibit II# 39 Exhibit JJ# 40 Exhibit KK# 41 Exhibit LL# 42 Exhibit MM# 43 Exhibit NN# 44 Exhibit OO# 45 Exhibit PP# 46 Exhibit QQ# 47 Exhibit RR# 48 Exhibit SS# 49 Exhibit TT# 50 Exhibit UU)(Faller, Susan)

iLOR, LLC v. Google, Inc.

Doc. 12 Att. 32

Case 5:07-cv-00109-JMH

Document 12

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e
UNITED STATES PATENT AND TRADEMARK OFFICE
APPUCA TION NO.

"
UNITED STATES DEPARTMENT OF COMMERCE

U.llrd Slales PlIcal and TrUemark Offce
.._, COMMISSIONER FOR PATENS
AIe..nd~ Viii.22313.14SO
\iWYMi:iplo.SOY P.O. Bo. 1410

FILING DATE

FJRSNAMED INVENOR
Gerald W. Ingr

ATTORNEY DOET NO. CONFRMATION NO.
023460.00001
EXAMINER TRA, PHIUP B
ART UNIT

091594,786
24256
7l9O

06116/2000

1228

01128100

DINSMORE & SHOHL, LLP
1900 CHEMED CENTER 255 EASTFIFTR STREET

J
iiss

PAPER NUMBER I

CINCINATI, OR 45202.

DATE MAILED: 01/28/2004

'3i D

Please find below and/or attched an Offce communication concerning ths application or proceeding.

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PTO-90C (Rev.

10/03)

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EXHIBIT
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cc.
Dockets.Justia.com

Case 5:07-cv-00109-JMH

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Document 12
Application No.

Filed 08/27/2007
Appllcant(s)
INGRAM ET AL.
Art Unit

Page 2 of 10

09/594,786

Office Action Summary

Examiner

Philp B Tran 2155
Period for Reply
A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE J MONTH(S) FROM THE MAILING DATE OF THIS COMMUNICATION.
- Extensions of lime may be available under the provisions of 37 CFR 1.136(a). In no event, howver, may a reply be timely fied

I

.. The MAILING DA TE of this communication appears on the cover sheet with the correspondence addre ..

after SiX (6) MONTHS from the maning dale of this communieation, - ~ the period for reply specined above is less than thirt (30) days, a reply wihin the statutory minimum of thirt (30) days will be considered timely. - ~ NO period for reply is specifed above, the maKimum statutory period will apply and will eKpire SiX (6) MONTHS from the mailing dale of this communication. . Failure to reply wilhln the set or extended period for reply wil, by slatue, cause the application to become ABANDONED (35 U.S,C, § 133). - Any reply received by the Ofee later than three monlhs after the mailing date of this communiction. even if limely fied, may reduce any earned palent term adjustment. See 37 CFR 1.704(b),

Status
1)18 Responsive to communication(s) filed on 03 November 2003.

2a)18 This action is FINAL. 2b)0 This action is non-finaL.
3)0 Since this application is in condition for allowance except for fonnal matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.

Disposition of Claims
4)l8 Claim(s) 173-177 is/are pending in the application.
4a) Of the above c1aim(s) _ islare withdrawn from consideration.

5)0 Claim(s) _ is/are allowed.
6)¡g Claim(s) 173-177 is/are rejected.

7)0 Claim(s) _ is/are objected to.
B)O Claim(s) _ are subject to res1iiction and/or electon requirement.
Application Papers
9)0 The specification is objected to by the Examiner.
10)0 The drawing(s) filed on _ is/are: a)O accepted or b)O objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.5(a).
Replacement dfawing sheet(s) including the correction is required if

the drawing(s) is objected to. See 37 CFR 1.121(d).

11)0 'The oath or declaration is objected to by the Examiner. Note the attached Offce Action or fonn PTO-152,

Priority under 35 U.S.C. §§ 119 and 120
12)0 Acknowledgment is made of a claim for foreign prioiity under 35 U.S.C. § 119(a)-(d) or (t).
a)O All b)O Some * c)O None of:
1.0 Certifed copies of the priority documents have been received.

2.0 Certified copies of the priority documents have been received in Application No. _'
3.0 Copies of the certifed copies of the prioriy documents have been received in this National stage application from the International Bureau (PCT Rule 17.2(a)). * See the attached detailed Offce action for a list of the certified copies not received.

13)0 Acknowledgment is made of a claim for domestic prioriy under 35 U.S.C. § 119(e) (to a provisional application)
since a specific reference was included in the firs sentence of the specification or in an Application Data Sheet.
37 CFR 1.8.
a) 0 The translation of the foreign language provisional application has been received. 14)0 Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121 since a specific reference was included in the first sentence of the specification or in an Application Data Sheet. 37 CFR 1.78.

Attachment(s)
1) f2 Notice of References Cited (PT0-892)

4) 0 Interview Summary (PT0413) Paper No(s). _'
5) 0 Notice of Informal Patent Application (PT0-152)

2) 0 Notice of Draftsperson's Patent Drawing Review (PTO-948)

3) 0 Inrormation Disclosure Statement's) (PTO-144) Paper No(s) _,

6) 0 Other.

u.s. Pal"nl and Tr.demarl Of

PTOL-326 (Rev. 11-03)

Offce Action Summary

Part of Paper No, 30

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Response to Amendment

1, This offce action is in response to the amendments filed on 11/3/2003. Claim

177 has been newly added. Therefore, claims 173.177 are pending and are presented
for further examination.
2. Applicant's arguments have been fully considered but they are not persuasive

because of the following reasons:
In response to applicants' arguments, the law of anticipation requires that a
distinction be made between the invention described or taught and the invention claimed. It does not require that the reference "teach" what the subject patent teaches.

Assuming that a reference is properly "prior art," it is only necessary that the claims
under consideration "read on" something disclosed in the reference, Le., all

limitations

of the claim are found in the reference, or '~ully met" by it. See Colman v. Kimberly-

Clark Corp., 218 USPO 789.
Newfeld teaches a method of operating a computer comprising providing a
visual display, displaying digital content in a first window on the visual display, the digital

content including a hyperlink, providing a graphical interface on the visual display that is
operative to effectuate a designation of a hyperlink. For example, visually displaying a
window that contains hyperlinks (see Figs. 1-2). In addition, Newfield further teaches

visually generating a plurality of individually selectable user options (= buttons of Figs.

1.2) on the visual display in response to the designation of the hyperlink, including at least one option for performing the non-linking functionality of automatically copying the

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hyperlink to a second window in a manner that permits the copied hyperlink to be
independently activated and processed, and selecting the individually selectable user option of copying the hyperlink to a second window and automatically performing such non-linking functionality of automatically copying the hyperlink to a second window in

response to the selection. For example, storing the pending links in another window
(see Figs. 1-2 and Pages 4-6).

Newfield does suggest the non-linking functionality comprises copying any
associated graphical elements corresponding to the hyperlink to the second window,

For example, displaying pending links and some associated graphical elements such as

colors '" (see Page 6). Newfield does not explicitly teach the associated graphical
element comprises a graphical image corresponding to the hyper/ink. However, Jain, in

the same field of copying hyperlink with image to display on bookmark window
endeavor (see Jain, Abstract), discloses the use of copying any associated graphical

element such as graphical image corresponding to the hyperlink to the second window
(see Jain, Paragraph 0022). It would have been obvious to one of ordinary skill in the art

at the time of the invention was made to incorporate the use of copying a graphical
image corresponding to the hyperlink to the second window, disclosed by Jain, into the

method of visually generating, displaying and automatically selecting individually

selectable user options disclosed by Newfield, in order to improve the user friendly
aspect of being easier to recognize the hyperlink by viewing its associated graphical

image.

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Art Unit: 2155

In response to applicant's argument that the references fail to show certain

features of applicant's invention, it is noted that the features upon which applicant relies

(Le" (1) the program to visually generate user options in response the designation of a
hyperlink and (2) a plurality of individually selectable user options be presented to the
user in response to the designation of a hyperlink) are not recited in the rejected

claim(s). Although the claims are interpreted in light of the specification, limitations from

the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26
USPQ2d 1057 (Fed. Cir. 1993).
Therefore, the examiner asserts that the cited prior arts teach or suggest the
subject matter broadly recited in independent claims. Claims 174-175 are rejected at
least by virtue of their dependency on independent claims and by other reasons set
forth below. Accordingly, rejections for claims 173-177 are respectfully maintained.

Claim Rejections - 35 U.S.C. § 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 Offæ action:
A person shall be entied to a patent unless -

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United

States.
4. Claims 173-176 are rejected under 35 U.S.C. § 102(b) as being anticipated by

Newfield et al (Hereafter, Newfield), "Scratchpad : Mechanisms for Better Navigation in
Directed Web Searching ", ACM 1998.

Regarding claim 173, Newfield teaches a method of operating a computer,

comprising:

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providing a visual display, displaying digital content in a first window on the visual

display, the digital content including a hyperlink, providing a graphical interface on the
visual display that is operative to effectuate a designation of a hyperlink (Le., visual

display window containing hyperlinks) (see Figs. 1-21; and
visually generating a plurality of individually selectable user options on the visual

display in response to the designation of the hyperlink, including at least one option for
performing the non-linking functionality of automatically copying the hyperlink to a

second window in a manner that permits the copied hyperlink to be independently

activated and processed, and selecting the individually selectable user option of copying
the hyperlink to a second window and automatically performing such non-linking

functionality of automatically copying the hyperlink to a second window in response to
the selection (Le., storing pending links in another window) (see Figs. 1-2 and Pages 46).

Regarding claim 174, Newfield further teaches the method of claim 173 wherein

multiple hyperlinks are copied to a second window and where each of the copied hyperlinks can be independently activated and processed (i.e., each pending link can be

visited separately at a later time) (see Pages 6-7)

Regarding claim 175, Newfield further teaches the method of claim 173 where the non-linking functionality further comprises copying any associated graphical

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elements corresponding to the hyperlink to the second window (Le., displaying pending
links and some associated graphical elements such as colors ...) (see Page 6).

Claim 176 is rejected under the same rationale set forth above to claim 173.

Claim Rejections. 35 use § 103
5. The following is a quotation of 35 U.S.C. 1 03(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

fort in section 102 of this tille, 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 skil in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

This application currently names joint inventors. In considering patentability of
the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of

the various claims was commonly owned at the time any inventions covered therein
were made absent any evidence to the contrary. Applicant is advised of the obligation
under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to

consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g)

prior art under 35 U.S.C. 103(a).
6. Claim 177 is rejected under 35 U.S.C. 103(a) as being unpatentable over

Newfield et al (Hereafter, Newfield), "Scratchpad : Mechanisms for BeUer Navigation in

Directed Web Searching ", ACM 1998 in view of Jain, U.S. Patent Application
Publication No. 200310030679 A 1.

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Regarding claim 177, Newfield teaches a method of operating a computer,

comprising:
providing a visual display, displaying digital content in a first window on the visual

display, the digital content including a hyperlink, providing a graphical interface on the
visual display that is operative to effectuate a designation of a hyperlink (Le., visual

display window containing hyperlinks) (see Figs. 1-21; and
visually generating a plurality of individually selectable user options on the visual

display in response to the designation of the hyperlink, including at least one option for
performing the non-linking functionality of automatically copying the hyperlink to a

second window in a manner that permits the copied hyperlink to be independently
activated and processed, and selecting the individually selectable user option of copying

the hyperlink to a second window and automatically performing such non-linking

functionality of automatically copying the hyperlink to a second window in response to
the selection (i.e., storing pending links in another window) (see Figs. 1-2 and Pages 46).

Newfield does suggest the non-linking functionality comprises copying any

associated graphical elements corresponding to the hyperlink to the second window
(i.e., displaying pending links and some associated graphical elements such as colors
...) (see Page 6). Newfield does not explicitly teach the associated graphical element

comprises a graphical image corresponding to the hyperlink. However, Jain, in the

same field of copying hyperlink with image to display on bookmark window endeavor
(see Jain, AbstractJ, discloses the use of copying any associated graphical element

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such as graphical image corresponding to the hyperlink to the second window (see Jain,

Paragraph 0022). It would have been obvious to one of ordinary skil in the art at the
time of the invention was made to incorporate the use of copying a graphical image corresponding to the hyperlink to the second window, disclosed by Jain, into the method

of visually generating, displaying and automatically selecting individually selectable user
options disclosed by Newfield, in order to improve the user friendly aspect of being
easier to recognize the hyperlink by viewing its associated graphical image.

Conclusion
7. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
policy as set forth in 37 CAR 1.136(a).

A SHORTENED STATUTORY PERIOD FOR REPLY TO THIS FINAL ACTION IS SET TO EXPIRE THREE MONTHS FROM THE MAILING DATE OF THIS ACTION. IN THE EVENT A FIRST REPLY IS FILED 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, AND-ANY EXTENSION FEE PURSUANT TO 37 CAR 1.136(A) WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT, HOWEVER, WILL THE STATUTORY PERIOD FOR REPLY EXPIRE LATER THAN SiX MONTHS FROM THE MAILING DATE OF THIS FINAL ACTION.

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8. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Philip Tran whose telephone number is [phone],
The Group fax phone number is [phone].

If attempts to reach the examiner by telephone are unsuccessful, the examinets
supervisor, Hosain T. Alam, can be reached on [phone],

Any inquiry of a general nature or relating to the status of this application should
be directed to the Group receptionist whose telephone number is [phone].

~¡;r
Philip Tran Art Unit 2155 Jan 15, 2004

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HON AL
SUPERVISORY PA EXINER