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 14

Application/Control Number: 11/767,569

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Art Unit: 2434
DETAILED ACTION
CLAIMS PRESENTED

Claims 9-15, 21-61 are presented.

Response to Arguments

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 matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.

The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459
(1966), that are applied for establishing a background for determining obviousness
under 35 U.S.C. 103(a) are summarized as follows:
1.
2.
3.
4.

Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating
obviousness or nonobviousness.

Claims would have been rejected under 35 U.S.C. 103(a) as being unpatentable over
the prior art if not for the following considerations.
First and foremost, one must consider that the priority date is February 13, 1997.
This date is before the date of most features of search engines that are common today.
At the moment, the Office is conducting further research into the prior art that can be
used in the Office Action. This is greatly inhibited by the Office Actions being limited (for
the most part) to documents. Non-documentary evidence (which cannot ordinarily be

Application/Control Number: 11/767,569

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Art Unit: 2434
relied in a prior art rejection in an Office Action) does exist which may invalidate all
claims in the patent that results from this patent application. In this sense, validity (i.e.
being upheld in courts) cannot be same as patentability (i.e. MPEP requiring issuance
of a patent).
Furthermore, Applicant's request for further documentation may later prove to be
critical importance. In the previous Office Action, the examiner pointed out specific
aspects which are well known in the art. See the Response to Arguments section of
the previous Office Action. Which of these specific aspects does Applicant dispute as
not being sufficiently documented? Is there any specific aspect? If Applicant does not
point to any specific aspect, then Applicant is surely admitting that there is no specific
language of the claims can be pointed out as not being taught by the prior art. In that
situation, Applicant directly contradicts his assertion of prior art not teaching the claims.
This (no specific language) may lead to invalidity upon any further finding of any further
evidence and/or document. Neither Applicant nor the Office would gain from issuing a
patent merely for overcoming MPEP standard (of evidence being limited to documents)
while fully knowing of invalidity of such a patent.

CLAIM REJECTIONS

Claim Rejections- 35 USC§ 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.