Function Media, L.L.C. v. Google, Inc. et al

Filing 82

CLAIM CONSTRUCTION BRIEF filed by Function Media, L.L.C.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit B (continued), # 4 Exhibit C, # 5 Exhibit C (continued), # 6 Exhibit D, # 7 Exhibit E, # 8 Exhibit E (continued), # 9 Exhibit F, # 10 Exhibit G, # 11 Exhibit G (continued), # 12 Exhibit H, # 13 Exhibit I, # 14 Exhibit J, # 15 Exhibit K, # 16 Exhibit L, # 17 Exhibit M, # 18 Exhibit N)(Tribble, Max)

EXHTBIT L

ñT

d/øaV
i,..
t 1'

IN TrrE UNITED srÄTFs

r4$ry

In re application

of:

stone et

No: Filed: Entitled:
Serial

àl 09/480,303
Jan 10' 2000

.

m.u TRADEMARK oFFIcE

RECENED
çEg
O 6 Zg0Z

Ïec¡nolu$l
A METIIOD FOR USING COMPUTERS TO

^,^^,C.entgl2100

-*

FACILITATE AND CONTROL TIIE CN¡ETNC OT N
PLUARLTTY OF FUNCTIONS.

GroupArtUnit: Examiners:

2167 B. Jaketic R. P. Olszewski

Assistant Commissioner of Pâtents Washington, D. C. 20231

Amendment
Gentlemen:

Nov' 8' 2001 This amendrrent is being filed in response to the office action' mailed on
wherein all claims of record, claims

I

through 23 were rejected.

of

the original claims

I

thfough

under verbal resFiction 31, claims 24 through 31 had been withd¡awn from consideration

requirement. Applicants' attomey verbally elected claims
ApplicanLs hereby affirms said election'

I

tkough 23 with the

tr¿verse'

D064755

This amendment is further in response to the courteous interview extended to
invenûors on Dec.

the

i3,2001.

Please amend thé above-identified application æ set fofth below.

In The Speciflrcation
should be Respontlíng to the examiner's objection to the disclosure, on page 10 line 6 the "4g"

...4h.... This
anc
,/:

10 lines 6 amended shall be made by substituting the following paragraph on page

"Fig. 4a through 4h is a block diagram showing the Seller's use of the invention. This Examplê Embodiment is configured for delivery of
tickets or reservation confirmation."

Thisamendedline6andTisinreplacementoftheerroneouslinas6andT,pagel0.

.

I¡

24 through response to the restriction requirement; apPlicants formally cancel claims

31 \ryithout prejudice.
Pl.ease substitute the

following amended claims for the pending claims with the same

numbers.

I

(Amended) A method of using a network of computers to contlact for, fâcilitate and control media venues owned the creating and públishing of piesentatioris, by a seller, tó a Plurality of
or contolled by other than the seller, cornprising:
a) providing a media database having a

list of available media venues;

b) providing means for'applying conesponding guicleliriæ of the media venues:

t+
D064756

c) providing means for transmitting said Presentations to
media venues;

a selected media Yenue of the

d) proyiding means for a seller to select the media venues; and

e)

providing means for the seller to inpui information; whereby the seller may select one or more of tåe media venues, create
a Presentation

the that complies with said guidelines of the media venues selected, and transmit

presentation to the selected media venues for publication'

2) (Amended) The method of claim

t

further providing a seller database having a list of sellers'
a means

))

(Amendçd) The method of claim

I further providing

fo¡ creating sructured

presentâtions from thê sellers information.

4) (Amended) The method of claim 3 fufher providing
presentations to the media venues for publishing.

a means

fol transferring said created

(Amended) The method of claim
said guidelines and infonnation.

t

fu¡tber providing a means for said media venues to input

6) (Amended) The method of claim
the sellers prcsentations.

I firther providing

mea¡s for said media venues to receive

7) (Amenderl) The method ôf claim
media buyers.

I further providing

a

media buyefs database having a list

of

g)

a (Amended) The method of claim 1 further providiíg a media transactions database having

list of media transacÉons.

q\ (Amended) The method of claim
of media inventory.

1

ñuther providing

a media

inventory database having

a

ìist

ft
D064757

,lrherein" should presumably be ìomprising-." Applicants have amended claims 3 and 4 to
read "further providing" in place of "wherein" and in place of "cornprising" as suggested by the

examiner. The reason for not using "comprising"
as amended use the terrr

as suggested

by the exâminer is that the claims

"fufher providing".

Claim 5 was objectecl to be¿ause of the following informality: "in line

I of the claim'

,,inputs" should presumably be -input--." Applicants have amended claím 5 as suggested by the
examiner.

Claims Rejections

-

35 USC Section 112

.

Claim l 5 stands rejeckd for insufficient antecedent basis for phrase "the goods or services"

in line

1

ApplÍcants' amended claims now presents the amended claim 15 as dependent on

claim 13:
Claims Rejection 35 USC Section 102
The examinèn office action of November 8, 2001 made the following claim rejections under 35 USC Sectìon 102 which a¡e respecffully tfaversed for reasons subsequently set forth herein;

"Claims 1-6, 10, 13, 15, 16, 18-20 rejected under 35 U.S.C. 102(e)
Mandeberg et

as

being anticipated by

al."

The examiner maintains that Mandebefg disclosed a method

of ",,.cont¡ol

.

the creating anct publishing òf presentåtions to a plurality of media venues

...".

This is inco¡rect.

For example, Mandeberg et al do not contaìn a method for the creating and publishing of
presentations to
a

plurality of media venues. Mandeberg et al present only a¡
a

b@4!

Management Moclel while the present invention teaches
teach in different di¡ectioirs' Maadeberg et al

Business to Business Model, which

i¡

col. 5 lines 48-53 teach:

'

i.-:i ,

.:;: '-a

D064760

"As shown in Fiþ. 1, system 100 includes an apparatus and/or a step for
assembling at a central location, digital multimedia presentations for the

plurality of stores. This apparatus or step is indicated in Fig'

1 as

"content

development" 102. Digital multimedia presentations which are developed
are stored

in

a presentation database 104 at the cenÛal location' '

'"

The Mandeberg et al Mandeberg et al rliscuss venues i.e. as "wholesale or retail stores' reference does not use the term

"!B!4Yg4!9!."

as taught by the present invention'

I¡rtheSUMMARYoFTHEINVENTI0NofMandebergetal,incol.llines4T.52
Sultes:

"The present invention includes methods, systems a¡d computer prog¡am products for generatìng store displays for a plurality of stores'

for the Digital multimedia presentåtions are assembled at a central location plurality of storesj Start and end times are assigned to the digital multimedia presentations for the sto¡es'"
OF THE Further the Mandeberg el al reference continues in the SIIMMARY col, 2 lines 5?-60:

INVEMION' in

''Ihe

present invention is particularly applicable for generating

includes a menu boards for an eritérprise such as a restaurarit chain, which

plurality of'sites such as rstaurant sites"' TheincolTecteqì¡atingbytheexaminerofmediavenues(sites)iswellestablishedbythe
as found on page 16 of the reference itself. Please nöte the definition of 'Media Venues"

glossary of the Present invention'

t / 1t1-

::'.

D064761

Tuming now to the examiners' reference to Mandeberg et al. (col, 6 lines zl-.16), the 'þresenøtion database 104" contains completed presentations, this content is not the e4uivalent of the "presentation rules database" of the present invention.
The telm "Sellers" is not tâught direcdy or indirecdy by the Mandeberg et al reference.

An Internal Manasement Model does not include a second pattv seller or sellers

as does the

Business To Business model presented bv the p¡esent invention. In the claims as amended the

term seller is propêrly used as supported by the specification. In addition the term "contract for" that is now found in the amended claim
1

prearnble clearly supports a Business to Business

model i.e:, by definition, contrâct for, is between two or more parties. Such a concePt is not contemplated by the Mandeberg et al refe¡ence. As defined by lvebester's Third New

Intemationai Dictionary, copyright 1971 by G, & C. Merria¡n Co. the tefm contract means:
"ân agreement bètween two or more persons or parties to do or not to do

something"

I¡l addition the exa¡niner states'!...create
Mandeberg et al does not contain
a

a presentation that apply

with tìe guidelines.'."

metl¡od to crcate the presentations. Note Mandeberg et al
¿14-46,

first senteirce of the ABSTRACT and col, 7 lines

which states:

" These digital.multimedia presentations are generally developed by
'creative professionals at advertising agencies or clients." The examiner's attention is also directed to col. 10 lines 2l-26 of Mandeberg et al which stats:

"Accordingly, in.order to assemble

a

package of digital multimedia

presentations for the plurality of storés, an óperator at the control and

'

monitoring stati'on 108 selects one or more programs from the presentation

E

D064762

Applicãtlon No.

Appl¡cant{s)
AÍ
STONE ET AL.
UN¡t

t'/l

Not¡ce of Allowabil¡ty

09/480.303

Examiner Bryan Jêketic

2167

|

(or previously mailed), a Not¡ce of Allowance (PToL-85) or other appropriate communìcation will be mailed ¡n due clurse. Tflls lrrO¡Ce Of nLLOWnelLlTY lS NOT A GRANT OF PATENT RIGHTS. This appl¡cation is subject to withdrawal from lsslre at the initlat¡ve or upon petilion by the apd¡canl. See 37 cFR '1.3'13 and MPEP 1308. lof ttre Offce

l;;with

lr| ddms be¡ng dlowable. PROSECUTION ON fHE MERITS lS (OR REMAINS) CLOSED in th¡s applicatlon. lf not included

-.

Thê MAILINê DATE of this communlcatlon appèars on thø cover shêêt w¡th láe oorlspondeacê addñtss-.

I | | I I I

I

lt.fl

l¡ølÍ this cpmmunicalionisrcspondve lo AMfu!fuLIlgLAbry?LW. lr lZ. E The allowed dalm(s) ¡s/are l!æ. 13. lf TtE drawingE l¡led on 1p1hru429@de accepted by the Exãm¡ner.
Acknowledgme¡¡t ¡s made of a daim for forelgn prlority under 35 U.S.c. S 119(a)-(d) or (f).

I

")tr I . El crffied cop¡es of the priortty da@ments have been received. cop¡es of the pr¡ority dodments have been rece¡ved ¡n Appl¡cation No. ,, n
3.

rut

b)E some' c)E None

of

th;:

".nified E copies of the certifled coples of u-re prio¡-ity doo.¡ments ha/e been receive!
lntemat¡onal Bureau (PCT Rule 17.2(a)).
not received:

in this national stage apdicáion frorn the

-.

,' Cenfied copies

15.

!
E

nctnowleagment ¡s made of a cla¡m for domestic priority under 35 U.s.c, S 119(e) (to a prÞvisional application). (a)E f¡e tranSation of the forelgn language provlslonal apdlcatlon has been rece¡ved. AcknowledSment ¡s made of a clalm for domeslic priority under 35 U.s.c. SS 120 and/o|l21.

-.

ü6.
lf

FRoM THË 'MAILING DATE of th¡s communlcatlon to file a reply comply¡ng wÌth the requirements noted bdow. Fallure to timdy cqmdy will result ¡n ABANDONMENT of this apdìcation. THIS THREE-MONTH PER¡OD lS NOT EXTENDABLE
ApplÌcant has THREE MoNTHS

ll ll

suesrrrUie oATH oR DECLARATIoN musl be submitted. Note the atbched EXAMINER'S AMENDMENT or ¡, j TNFORI4AL PATENT APPLICATION (PTO-152)wh¡ch glves reason(s) why the oath or declaration ¡s dencient.
I

E¡
(a)

NoTlcE oF

I

g.

E conREcreo

| | |

E

oRAWINGS musl be submitled. includins óanges requlred by the Not¡ce of DrafrspeFon's Palenl Drawing Review ( PTO-948) altached
1)

E

hereto or 2)

!

to Paper No.

ú . {c) E |
(b)

lrEluding cf¡anges required by the proposed draw¡ng coreÇtion filed

lnctuoing changes requ¡red by the attached Exañ¡neis Amendment / comnent or in the off¡ce aclion of Paper No

-.

_,

which has boen approved by lhe Exam¡ner.

ldôhtlfylhg lhd¡d. such !s tho lpÞllcadoh nulhbor (sôo 37 cFR 1.04(c)) should bê w.ltt6n on the dråw¡hgs lh tho top mlrgln (hol ltto b!ck) of .ach shoot. The dr¡wlngs should b6 l¡l.d ¡s å s6p.ratô plpoa wlth a f!ñsñ¡ttúl lottôr addaossed lo lh Ofllchl or.frsporson.
0.

-

attached Þ@m¡neis

E

DEPOSIT OF and/or INFORMAî|ON about the deposit of BIOLOGICAL

MAÏERnL must be submitted. Note the commer regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.

AtóÊclimoñt(s)

lE
5E

Notice ofRefer.ences c¡ted (PIo-692)
Drai.¿¡ng Retr'iew

2E
(PTo948)

Notlce of lnformal Patent Application (PTO-152)

3E Notlce of Draftpersôn's Patent

4EI lnûervlew summary (PTo-413), PapërNo.q.

E

lnformation Disdoslre Slatements (PTO-1rt49), Pâper No. Exafilinê/s comment Regardlng Requlrement for Deposlt of Blologlcal Material

6E Examlne/s AmendmenVComment

-.

6EI Examiner's Statement of Reasons for Allowance

gfl oths

Plo-37 (Rev.04-01).

Noüco

ofAllowablllty

Pst of Paper No. 6

D064770

----'t

Applicatíon/Control Number: 09/480,303

Page 2

Art Unit:2167
REASONS FOR ALLOWANCE
1.

The following is an examine/s statement of reasons for allowance:

The present invention comprises a method for using a network of computers to
contract for, facilitate and control the creating and publishing of presentations, by a seller, to a plurality of media venues owned or controlled by other than the seller comprising the òteps of providing a database of available medla venues, providing means for applying conesponding guidelines, and prov¡ding means for the seller to select one or more media venues. The closest prior art, Mandeberg et al. (US 6,038,545) shows a system for central location to develop multimedia displays and
t'ransmit the displays to store locations. Mandeberg et al discloses an "in-house"

system, and do not disclose a system for selecting media venues owned by other than

the séllêr and creating a presentation that compl¡es with proper guidelines. This distinct and non-obvious feature is included in the sole independent claim and renders it
allowablé. Any comments considered necessary by applicant must be submitted no later ihan the payment ofthe issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled "Comments on

$tatementof Reasons for'Allowance.'

Conclusíon

2.

The prior art made of record and not relied upon is considered pertihent to

applicant's d¡sclosure. Eldering discloses an advert¡sement auct¡on system that

D064771

ApplicationiControl Number: 09/480,303 Art Unit: 2167
determ¡nes demographics. Daimon discloses a system for generat¡ng different

Page 3

publications. Adveñisîng Agedescribes recommended banner ad sizes. /Vews/nc
describes an ad agency that creates a plan, selects a newspaper, and sends the ad. Hamblen describes an ad agency that selects the conect print size for advertisernents based on the type of media venue. Any inquiry conceming thls communicltion or earl¡er communications ftom the examiner should be directed to Bryan Jaketic whose telephone number is (703) 308-

0134. The examiner can nornnlly be reâched on Monday through Friday (9:00-5:30).
lf attempts to reach the examiner by telephone are unsuccessful, the exam¡ne/s supervisor, Robert Olszewski can be reached on [phone]. The fax phone humbers for the organization where this application or proceeding ¡s assigned are [phone] for regular communications and (703) 306-'1396 for After F¡nal 'communrcalrons. Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone numbêr ¡s (703) 3053800.

bj

January 31,2002

GÆ4,1-1n/uROBEFÍ P OLSZEIjIISI(
SUPERVISOBY PA'IEMT EXAIIIINER

TECIINoLoGY CE{|ER 360Ê

a-{où

D064772

t\Ðe!.,ä@)9EdÈ-Ðf f @Èlsllt jurS¡J$rxjsEsisÆ!4{rr,_,@åÍJEl3
Un*ITED S IATES DEI'AlìTillÊN Uûited Ståtes Peacnt rùnd

f OF COMMËRCÈ 'lÌâde¡¡rark Oflicc

January 22, 2008

THIS IS TO CERTIFY THAT A.NNEXED IS A TRUE COPY FROM THE RECORDS OF THIS OFFICE OF THE FILE WRAPPER AND CONTENTS OF:

APPLICATION NUMBER: I 0/I 93,465 FILING DATE. July 11,2002 PATENT NUMBER:7249059 ISSUE DATE: "Izly 24,2007

D066080
Ccraificd bl

.-___)

Þ'v.- w- t:\'-L..
f\

N

Under Secrctar! of (ìonrnrercc

for Intcllectual I'Fopcrty
and l)ircctor of rhc U¡rited St¡fcs l'âtent and -liadcnrårk Office

01-06 -oþ
sEP 0 5
2006

Þzrl

No. l0/193,465 Amdt. Dated September 5, 2006 Response to Final Offrce Action mailed July 7, 2006 requiring a response by September 7, 2006 in order to comply wìththe *TWO MONTHS fiom mailing date'Ì of the Final Office Action.

IN THE T]NITED STATES PATENT AND TRADEMARK OFFICE

Appl. No. AFplicant Filed Title

10/193,46s Michael A. Dean et al. July 1 l, 2002

METHOD FORUSING COMPUTERS TO FACILITATE AND CONTROL THE CREATING OF A PLURALITY OF FTJNCTIONS

TC/A.U.

: :

Examiner
DocketNo.

362'l Ade, Oger Garcia
Stone CIP

:

Honorable Commissioner for Patents P.O. Box 1450 Alexand¡ia" V A 223 13 - I 450

Gentlemen:

This Request for Reconsideration is filed in response to the Final Office Action mailed on

*TWÔ July 7,2006 and requiring a response by September 7,2O06, in order to comply with the
MONTH$ from mailing date" of the Final OfTice Action.
Applicants wish to acknowledge and thank Alexander Kalinowski, Supervisory Patent Examiner, and Ga¡cia Ade, Examiner, for the courteous interview extended to Applicants a¡d their undersigned counsel on August 16, 2006. A copy of the Interview Summary is attached.

D066470

sparks' Fig. l,the "client" personal computer 12, and the menu-driven inte¡face detailed in the subsequent figures for the store to create the advertisement), Sparks does not
disclose the claimed "first interface" through which one or more intemet media venues "owned or controlled by other than the seller and the third party professionar,, (the

claimed "internet media venues") are prompted to enter their presentation rules so thal a
seller's advertisement can be automatically modified by the claimed intemet advertising
system for publication/display at each such intemet media venue in compliance with the

presentation rules fo¡ that intemet media venue. sparks does not disclose any such

"intemet media venues" and the print media venues that are disclosed (see Sparks' Fig.
commercial production facility o¡ vendor
¿14

l,

for publication ofads as inse¡ts in

"newspapers") have no interface prompting them to enter their presentation rules. Thus,

the "newspapers" disclosed in sparks for publishing the client-created advefisements
'

exercise no control over the advertisement's "look and feel" or other aspects ofthe

advertisement. The communication path from the advertising system,s ad server (image
server 28 in Fig.

l) for serving a client-created advertisement to production facility or

vendor 44 for inclusion in "newspapers" points only in one direction, that is, towa¡ds the

production facility for printing the ads for insertion in those "newspapers,' (and there is no disclosure otherwise). In addition, sparks does not disclose the claimed "third interface" that allows a third party professional (such as an advertising agency) to create
an advertisement on behalf of one or more sellers (the client/McDonald's store owner) and select one or mo¡e "intemet media venues" for publication of that advertisement.

l4

D066483