Rockstar Consortium US LP et al v. Google Inc

Filing 18

MOTION to Change Venue by Google Inc. (Attachments: # 1 Text of Proposed Order Google Inc's Motion to Transfer Venue, # 2 Index, # 3 Declaration of Abeer Dubey, # 4 Declaration of Sam Stake, # 5 Exhibit 1, # 6 Exhibit 2, # 7 Exhibit 3, # 8 Exhibit 4, # 9 Exhibit 5, # 10 Exhibit 6, # 11 Exhibit 7, # 12 Exhibit 8, # 13 Exhibit 9, # 14 Exhibit 10, # 15 Exhibit 11, # 16 Exhibit 12, # 17 Exhibit 13, # 18 Exhibit 14, # 19 Exhibit 15, # 20 Exhibit 16, # 21 Exhibit 17, # 22 Exhibit 18, # 23 Exhibit 19, # 24 Exhibit 20, # 25 Exhibit 21, # 26 Exhibit 22, # 27 Exhibit 23, # 28 Exhibit 24)(Mann, James)

EXHIBIT 12

I

. .
c _

I..

,

.

UNITED STATES dPARTMENT OF COMMERCE
Patent and Trademark Office
Address:

APPLICATION NO.

FILING DATE

I

COMMISSIONER OF PATENTSAND TRADEMARKS
Washington, D.C. 20231

I

FIRST NAMED INVENTOR

AlTORNEY DOCKETNO.

1

EXAMINER

Please find below and/or attached an Office communlcatlonconcerning this application or
proceeding.
Commlssloner of Patents and Trademarks

-.
.
PTO-OOC (RW. 2/@5)

'US. GPO 1998-437838180022

....
.

..

1. Flle Copy

-

No.
aama.747

ApplicantM

Application

Office Action Summary

Skillen et el.

I

Group Art Unit

Examiner

Paul R. Lintz

_ _

2771

X icesuonsive to communication(s) filed on Oct 8, 1998

..

- 7 , : . _. C ! C,. I L I- I
,
.
~
~

IS

FINAL.

Slnce tnis application is in condition for allowance except for formal matters, prosecution as to the merits is closed
.:- ;.cr.nraance with the practice under f x parte Quayle, 1935 C.D. 11; 453 0.G.213.

srioi tenea statutory period for response t o this action is Set t o expire
month(s), or thirty days, whichever
3
ionger, trom the mailing date of this communication. Failure t o respond within the.period for response will cause the
application to become abandoned. ( 3 5 U.S.C. § 1 3 3 ) . Extensions of time may be obtained under the provisions of
A

IS

: j : : ;:FG,

1 . 13fjjia).

Di s 0 i)s it i 0n 0 f CIaim S
'

x

cia 1 in s 1 1 :6_8,a!!d..9-.___

is/are pending in the application.
idare withdrawn from consideration.

CIf the above, claii?(s)

X Claimis) 8

islare allowed.

). T!3i3-I;s) 7-6 ar)cj 9 ___
:
- - - ...

islare rejected.

Ciaimls!

!''

C' 3 ! s

idare objected to.
..

. .
.
.

are subject to restriction or election requirement.

___

A 1: 11 Iii: io n Pape r s
at

See Wie at!ached Notice of Draftsperson's Patent Drawing Review, PTO-948.
? h e br.awing(s) filed on .

islare objected t o by the Examiner.

The proposed drawing correction, filed on
.i n e

snecification

IS

is

rdpproved

Cbisapproved.

objected to by the Examiner.

The oath or declaration is objected to by the Examiner.
Pr!oriry under 35 U.S.C. 4 1 1 9
Acknowiedgement is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d).
Aii

Some'

of the CERTIFIED copies of the priority documents have been

None

received.
l

eceived in Application No. (Series Code/Serial Number)

iaceived in ttiis national stage application from the International Bureau (PCT Rule 1 7 . 2 ( a ) ) .
.'CeiTified copies not received:
:edgemen! is made of a claim for domestic priority under 35 U.S.C.

0 119(ej.

A ttactiirieilt(s)

X

W i L e of References Cited, PTO-892

' l~:f:?!!!:atiGri Disclosure Statement(s), PTO-1449, Paper No(s).
4
!::;e::.;:aw

3

Suinrnsry, PTO-413

Nutir;e a i Draftsperson's Patent Drawing Review, PTO-948

No:ir;e of lnfoirnal Patent Application, PTO-152

--- SEE OFFICE ACTION ON THE FOLLOWING PAGES

-.

---

-.

.

. .,:.. ' ..,.<: : ..r<:r:,r,n:, i ? ! , 1 6
.. . .$i;,>
:. : 3.y5j
~

,nf;'.,j,

Office Action Summary

._
.-...p of
art

Paper No.

6

ApplicatiodControl Number: 08/798,747
.Art L‘nit 277 I
I

Page 2
SKJLLEN 6- 16

Claims 1-6 and 8-9 are presented for examination. Claims 7 and 10 were canceled in

Applicant’s amendment of 8 October 1998 which has been entered as paper Number 5 .

Clainz Rejections - 35 USC $102
_.
7

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 Ofice action:
A pcrson shall be entitled lo a patent unless --

known or used by others in this country, or patented or described in a printed publication in
[his or a tbreign country, before the invention thereof by the applicant for a patent.

( a ) 1hc iii\tntion w a s

7

-)

Claims I and 9 are rejected under 35 U S C. 102(a) as being anticipated by Web Crawler,

Lvcos. or lnfoseek as disclosed by PR NEWS (“Make Sure Search Engines Find Your Site;

options include buying words, advertising, and careful page design”- PR NEWS)
4 Ar to claims i and 9, Pr News taught the “Buying of words” in a search engine in which if that

word correlated to a search query for the search engine’s web page database, the user would be
presented with a specific advertiser’s banner ( line 14-37) from a second database.

Claim Rejections - 35 USC J 103
5

The following is a quotation of 35 U S C 103(a) which forms the basis for all obviousness

iqcctions set forth in this Ofice action
(,a) A palcnl may nor be obtained though the invention is not identically disclosed or described as set forth in
wetioil IO2 of this title. if the differences between the subject matter sought to be patented and the prior art are
siicli iliai [tic s~iL>jcct
niatter as ii whole would have been obvious at the time the invention was made to a person
liii\mg c;rdinai?. skill in the iirt LO which said subject matter pertains. Patentability shall not be negatived by the
iii;iniicr i n \ \ hich thc iii\:en[ion was niade.

This application currently names joint inventors. In considering patentability of the claims
under 3 5 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was
coiniiioiily owned at the time any inventions covered therein were made absent any evidence to
the contrarv 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

niade in order for the examiner to consider the applicability of 35 U.S.C. 1030 and potential 35
U S C 102(f) or ( 9 ) prior art under 35 U.S.C. 103(a).

\

.-\ppi icat i oniCont 1-01Number: 08/798,747
.-\ 1-1 \.,! nit : 2 77 I

h

Page 3
SKILLEN 6- 16

Claims 2-6 are rejected under 35 U.S.C. 103(a) as being unpatentable over PR News as

applied to claim 1 and further in view ofBarrett et al. (US 5,727,129).
7

As to claim 2, PR NEWS did not disclose the use of a user profile to assist in returning

relevant web pag,es
8

Barrett et a1 Disclosed the use of user profiles for use in returning relevant hits (Column

5, line IS-46)
9

It would have been obvious for one of ordinary skill in the art of computers to have

included a user profile in the search engines disclosed by PR NEWS in order to reduce the search
~iiiico
t

i.etu1.n relevant hits

IO

As to claim 3, Barrett et a1 disclosed previously received search arguments (Column 5,

line 44-46]
I 1

As to claim 4, Barrett et a1 taught using the results from previous search sessions

(Column 5 , line 44-46)
i2

A s to claim 5 , Barrett et a1 Taught that user specified preferences as reflected in the user

choices
13

As to claim 6, PR NEWS taught banner advertisement inserts.

A llownble Subject Matter
14

Claim 8 is allowed

I5

The following is an examiner's statement of reasons for allowance: In claim 8, the

correlating, as a function of a h z z y logic algorithm, the received search argument and the user
protile data. to particular information in the database, and providing the particular information as

the search results, together with the other limitations of claim 8, was not disclosed by, would not
have been obvious over, nor would have been fairly suggested by the prior

art of record.

Any comments considered necessary by applicant must be submitted no later than the

mvment of the issue fee and, to avoid processing delays, should preferably accompany the issue
fee Such submissions should be clearly labeled "Comments on Statement of Reasons for
illlowance "

. ..

Page 4
SKILLEN 6-16

OTHER PRIOR ART MADE OF RECORD
I h.

Bouve et al. ( U S 5.682.525) disclosed accessing a map database which utilized user

profiles. The Abstract and Disclosure are relevant.
17

I..ngm et al. (US 5,721.827) disclosed a system for distributing personalized electronic

information. The Abstract and Disclosure are relevant.
1S

Barrett et al. (US 5,727,129) was used to reject claims.

10.

Logan et al. (US 5,732,2 16) disclosed user preference profiles in and audio message

distribution system. The Abstract and Disclosure are relevant.

20

Reilly et al. (US 5.740,549) disclosed an advertising distribution system which used user

profiles and is highly relevant to Applicant's claims.
2I,

Anonvmous. ("Make Sure Search Engines Find Your Site, Options include buying words,

adiwtisi ng and careful paye design"). disclosed buying terms which could be correlated to search

POINTS OF CONTACT

Any inquiry concerning this communication or earlier communications from the examiner
sliould be directed to Dr. Paul R . Lintz whose telephone number is [phone]. The
E\;itiiities can normallv be reached on Mondays through Fridays from 8:OO am until 4:30 pm.

It' attempts to reach the examiner by telephone are unsuccessfi~l, examiner's supervisor,
the
-1lioiiias Black, can be reac.hed at [phone]. The fax phone number for Art Unit 2307 is

( 7 0 3 ) .305-973 I . . NOTE: Documents transmitted by facsimile will be entered as official

documents on the file wratper unless clearly marked "DRAFT".
.Ati1;

inquiry o f a genesal nature or relating to the status of this application should be

directed to the Group receptionist whose telephone number is [phone].

.A pi?!ica t io n/Cori t rol N u niber . 08/798,747
A n I.init: 2771

Page 5
SKILLEN 6- 16

Any response to this action should be mailed to:

Commissioner of Patents and Trademarks
Washington, D.C. 2023 1

or faxed to:

(703) 308-905 1 ,'(for formal communications intended for entry)

Or:

[phone] (for informal or draft communications, please label
"

PROP 0 SED" or ''DRAFT'')

I-land-tleliveretl responses should be brought to Crystal Park 11, 212 1 Crystal Drive,
.\rlington.

\r:\..

Sist.h Floor (Receptionist)

%
Paul,R. Lintz

Patent Examiner
Art Unit 2307
December 16,1998