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 24

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· Application/Control NUiilb~r: 09/351,747
Art Unit: 2175

lll.

DETAILED ACTION

Res,ponse to Arguments

1.

Applicant's arguments with .respect to claims claims 1-19,.

29-79,

86~113

have been considered but are moot in view of the

new ground{s} of rejection.
2.

As is noted at pages 27-28, Appplicant asserts that Blount

reference (from Pointcast) teaches all but "searching a data
network based upon a search argument, correlating the search ·
argument to a particular advertisement, displaying search
resualts with the particular

advert~sement"

within the context of

other limitations.
3.

That feature was already well known before the filing of the

parent application of this application.

Mr. Da~~y Sullivan (a

noted commentator on commercial search engines) noted this as not
~erely well known.but even having "caused some controversy."

One

may note that the controversy (which is political) is not a
controversy involving technology per se.

This is noted iri his

very first issue of "The Sear6h Engine Report" which is dated
July 23, 1996.

This is fully ~ half year (unquestionably a .long

time in the era of the Internet Revolution) before the filing
date of the parent application of this application.

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4.

Mr. Sullivan's very first

~ssue

is relied on in the new

rejections . . His next two issues are also cited (although not
relied upon) because the first three issues are all before the
filing date of the .parent application of this application.

C~aims

80~85

Presented

5.

Claims 20-28 and

6.

After s~ch canceliation of claims, claims 1-19, 29-79, 86-

haVe been cancelled.

113 are presented for examination.

C~aim

7.

Rejections - 35 USC § 103

The following is a quotation of 35 U.S.C. 103(a) 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.

8.

Claims 1-113 are rejected under 35 U.S.C. 103(a) as being

unpatentable over Blount et al.

(EP 0749081. Al, cited by

Applicant in the parent case, hereinafter also referred as
"Blount 0

)

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05/09