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)

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EXHIBIT 14 Application/Control Number: 11/767,569 Page 2 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 Page 3 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 USCĀ§ 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.

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