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. 33

Case 5:07-cv-00109-JMH

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PATENT -EXPEDITED PROCESSING UNDER 37 C.F.R.
1.116--

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FICATE OF MAILING ereby certify that this paper is being dCpsited with the United States Postal Service with suffcient postage as first class mail in an envelope addressed to: Mail Stop AF, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450 on

~~~t~Gy~ ~ .
...

IN THE UNITED STATES PATENT & TRAEMARK OFFICE
Applicant:
Serial No.:

Gerald W. Ingr et aL.
09/594,786
June i 6, 2000

Group Ar Unit: 2 i 55
Examiner:

Filed:

Tra, Philip B.

For: Method for Adding a User Selectable

Function to a Hyperlink
Mail Stop AF
Commissioner for Patents
P.O. Box 1450

RECEIVED
MAY 0 5 2004

Alexandria, VA 22313-1450

Technology Center 2100

Dear Sir:

Tramitted herewith is a Request for Reconsidertion in the above-identified application.
( 1 additional fee is requird.
( X J also attched: return postcard

The fee ha been calculated as shown below:
NO. OF

CLAIMS
Total Claims
4
4

HIGHEST PREVIOUS PAID FOR
63
14
TOTAL FEE DUE

EXTRA CLAIMS
0 0

RATE
x $18=
x $84 =

FEE $.00
$.00

Independent Claim

$0.00

( ) A check in the amount of $ is enclosed.
( ) Please charge the amount of $0.00 to our Visa credit card account. Fonn PTO-2038 is attched.

(xl The Conuissioner is hereby authorid to charge payment of any additional fees associated with ùiis
communication or credit any overpayment, to Deposit Account No. 04-1 133, including any fiing fees under 37 CFR 1. i 6 for presentation of extr claims and any patent application processing fees under 37 CFR 1. 17.

Respectfii~b"d,

By: ~:i oLGeoffey L. Oberhaus

Registrtion No. 42,955
DINSMORE & SHOHL, LLP 1900 Chemed Center
255 East Fift Street

Date:t1f2~ 21. .2(JO"l

Cincinnati, Ohio 45202 [phone]

IOlO6J6-iDOC

i -EXHIBIT

j

Dockets.Justia.com

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REMARKS

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The Offcial Action dated January 2&,2004, has been carefully considered.

Accordingly, it is believed the following remarks demonstrate the patentabilty of claims 173177, and places the present application in condition for allowance. Reconsideration and
allowance of

the claims is respectfully requested.

In the Offcial Action, claims 173-176 were rejected under 3S V.S.C. § 102(b) as
being anticipated by Newfield et aI., "Scratchpad: Mechanisms for Better Navigation in

Directed Web Searching", ACM 1998 (hereafter "Newfield"). The Examiner asserted that
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 intedace on the visual display that is operative to
effectuate a designation ofa hyperlink; and visually generating a plurality of

individually
the hyperlink,

selectable user options on the visual display in response to the designation of

including at least one option for perfonning the non-linkng fuctionality of automatically
copyig the hyperlink to a second window in a manner that pennits the copied hyperlink to
be independently activated and processed, and selecting the individually selectable user

option of copying the hyperlink to a secnd window and automatically perfonning such nonlinking fuctionality of automatically copying the hyperlink to a second window in response
to the selection.

However, as wil be set fort in detail below, it is submitted that the methods of
claims 173-176 are not anticipated by Newfeld. Accordingly, this rejection is traversed and
reconsideration is respectfully requested.
As defined by claim 173, the present invention is directed to a method of operating a
computer. The method comprises providing a visual display; displaying digital content in a

first window on the visual display, the digital content including a hyperlink; providing a
graphical interace on the visual display that is operative to effectuate a designation of a

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visual display in response to the designation of

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hyperlink; visually generating a plurality of individually selectable user options on the

the hyperlink, including at least one option for

performing the non-linking functionality of automatically copying the hyperlink to a second

window in a maner that permits the copied hyperlin 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.

As defined by claim 176, the present invention is directed to a method of operating a

computer. The method comprises: 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; visually generatig 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

perorming the non-lining functionality of automatically creating a hyperlink for the
displayed digital content, copying the created hyperlink for the displayed digital content to a

viewable list in a second window, and loading the digital content associated with the

designated hyperlink in the fit widow on the visual display; and selecting the individually
selectable user option of automaticalJy creating a hyperlink for the displayed digital content,

copying the created hyperlink for the displayed digital content to a viewable list in a second

window, and loading the digital content associated with the designated hyperlink in the first

window on the visual display and performing such non-linkng functionality in response to
the selection.

Newfield discloses activating a program or option in a browser and then upon
selection of a hyperlink copying the hyperlink to a list rather than opening the hyperlink.

When the program (Scratchpad) is activated, the user only has one option when selecting a

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.

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hyperlink. That option being the copying of the hyperlink to a list for later viewing.
Newfield does not disclose any visual generation of options presented to the user upon

designation of a hyperlink. In addition, Newfield does not disclose a plurality of individually
selectable user options presented to a user in response to designation of a hyperlink. Again,

Newfield only discloses a single option that copies the hyperlink to a list. In contrast, the
presently claimed invention requires the steps of

the method to include: I) visually

generating user options in response to the designation of a hyperlink; and 2) generating a
plurality of individually selectable user options be presented to the user in response to the

designation of a hyperlink.

Anticipation under 35 V.S.C. § I 02 requires the disclosure in a single prior ar
reference of each element of

the clais under consideration, A/co Standard Corp. v. TVA,

g08 F.2d 1490, I U.S.P.Q.2d 1337, 1341 (Fed. Cir. 1996). As Applicants find no teaching or
disclosure by Newfield of

visually generatig user options in response to the designation of

the hyperlink and no teaching or disclosure by Newfield of a plurality of individually

selectable user options presented to the user in response to the designation of the hyperlink
Newfield does not anticipate claims 173- 1 76 under 35 U.S.C. § 1 02.

Moreover, the Examiner asserts that Newfield teaches the limitations of dependent

claim 175. Claim 175, which depends on independent claim 173, requires the additional

limitation that the non-linking functionality fuer comprises copying any associated
graphical elements corresponding to the hyperlink to the second window. The Examiner
assered that page 6 of

Newfield taught this limitation by "displaying pending links and some

associated graphical elements such as colors". However, the Examiner's attention is directed
to page 5, column i, 5th paragraph of

Newfield: "The web page display has been modified to

include additional color hues. Links in the pending queue and links determined to be
uninteresting are marked in separate colors, chosen so as to not to be eye-catching. The

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purle color used in today's commercial browser to indicate visited links draws less attention than the blue color used for new links. In the same maiier, muted colors were selected for
the new link categories. Links in the pendig queue are color forest green. Links
previously indicated as uninteresting are drawn in brown." (emphasis added). As taught by

Newfield - the associated graphical element corresponding to the hyperlink is not copied to
the second window. Newfield teaches changing the color of

the link when it is copied to the

second window (i.e. change from blue to forest green, change from purple to forest green, or

change from brown to forest green). As such, Newfield fails to teach the additional limitation
of copying any associated graphical elements corresponding to the hyperlink to the second

window. Accordingly, Newfield does not anticipate claim 175 under 35 U.S.C. §L02.

It is therefore submitted that the presently claimed methods of operating a computer

are not anticipated by Newfield, whereby the rejection under 35 U.S.C. §I02(b) has been
overcome. Reconsideration is respectfully requested.

In the Offcial Action, claim 177 was rejected under 35 V.S.C. §103(a) as being
unpatentable over Newfield in view of Jain (U.S. Patent Application Publication No.

2003/0030679 AI). The Examiner conceded that Newfield does not teach copying any
associated graphical elements corresponding to the hyperlink to the second window, wherein
the associated graphical element comprises a graphical image corresponding to the hyperlink.

The Examiner asserted that Jain teaches copying any associated graphical element such as

graphical image corresponding to the hyperlink to the second window. The Examiner
asserted it would have been obvious to incorporate the teachings of Jain into the method of
Newfield.

However, as will be set forth in detail below, it is submitted that the presently claimed

method of claim 177 is nonobvious over and patentable distinguishable from Newfield in

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requested.

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view of Jain. Accordingly, this rejection is traversed and reconsideration is respectfully

As defined by claim 177, the present invention is directed to a method of operating a
computer. The method comprises: providing a visual display; displaying digital content in a

first window on the visual display, the digital content including a hyperlínk; providing a

graphical interface on the visual display that is operative to effectuate a designation of a
hyperlink; visually generating a plurality of individually selectable user options on the visual

display in response to the designtion of the hyperlink, including at least one option for
perfonning the non-linkng functionality of automatically copying the hyperlink to a second

window in a maner that pennits the copied hyperlink to be independently activated and
processed; and selecting the individually selectable user option of copying the hyperlínk to a

second window and automatically perfonning such non-linkng functionality of automatically
copying the hyperlink to a second window in response to the selection; wherein the nonlinking fuctionality fuher comprises copying any associated graphical elements

corresponding to the hyperlin to the second widow, and furter wherein the associated
graphical element comprises a graphical image corresponding to the hyperlink.
To establísh prima facie obviousness of the claimed invention, all the claim

limitations must be taught or suggested by the prior ar. In re Royka, 490 F.2d 98 i; 180
U.S.P.Q. 580 (CCPA 1974). Moreover, in order for references to be relíed upon to support a

rejection under 35 U.S.C. § 103 they must provide an enabling disclosure, i.e., they must
place the claimed invention in the possession of

the public. Glaxo Inc. v. Novopharm Ltd., 34

U.S.P.Q.2d, 1565 (Fed. Cir. 1995); In re Payne, 203 U.S.P.Q. 245 (CCPA 1979). Newfield
et al. in view of Jain fail to satisfy these requirements.
The teachings of Newfield are discussed above. The deficiencies of

Newfield are not

overcome with the combination of Jain. Moreover, Jain alone or in combination with

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Newfield, fail to teach or suggest a method of operating a computer, comprising, inter alia,

the act of: visually generating a plurality of individually selectable user options on the
visual display in response to the designation of the hyperlink; and wherein the non-linking

functionality comprises copying any associated graphical element corresponding to the

hyperlink to the second window, wherein the associated graphical element comprises a
graphical image corresponding to the hyperlink.
Moreover, when a rejection depends on the combination of prior ar references, there

must be some teaching, suggestion, or motivation to combine the references. In re Rouffet,
149 FJd 1350, 1355,47 U.S.P.Q.2d 1453, 1456 (Fed. Cir. 1998). The question is whether
there is something in the prior ar as a whole to suggest the desirabilty, and thus the
obviousness of

makng the combination. In re Beattie, 974 F.2d 1309, 1311-1312,24

U.S.P.Q.2d 1040,1042 (Fed. Cir. 1992). Applicants fid no teaching, suggestion or
motivation for the combination of

Newfield and Jain. In fact, Newfield teaches away from

the Examiner's suggested combination. The Examiner's attention is directed to colum 2, 2nd
paragraph of

Newfield, "Bookmarks, however, are often too persistent and place an

undesirable management burden on the user." Jain discloses a method and system for adding
a grphical image to bookmarks. "(R)eferences that teach away canot sere to create a
prima facie case of

obviousness. In re Gurley, 27 F.3d 551, 553, 31 U.S.P.Q.2d 1130, 1132

(Fed. Cir. i 994). The problems discussed in Newfield relating to bookmarks are stil relevant
in the bookmarks of Jain. Accordingly, Newfield teaches away from the combination of
Newfield with Jain. As such, Newfield, alone or in combination with Jain, do not render the

presently claimed method obvious under 35 U.S.C. §103(a). Recnsideration is respectfully
requested.

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allowance. Reconsideration and an early allowance are requested.

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It is believed that the above represents a complete response to the Examiner's
rejections under 35 V.S.C. §§102 and 103 and places the present application in condition for

Respectfully submitted,

By !:.~(!~
Registration No. 42,955 Attorney for Applicants DINSMORE & SHOHL LLP
1900 Chemed Center

255 East Fifth Street Cincinnati, OH 45202 [phone]
IOI0522_l.OO

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