Interval Licensing LLC v. AOL, Inc. et al

Filing 241

PRAECIPE re (240 in 2:10-cv-01385-MJP, 240 in 2:10-cv-01385-MJP, 240 in 2:10-cv-01385-MJP, 240 in 2:10-cv-01385-MJP, 240 in 2:10-cv-01385-MJP, 240 in 2:10-cv-01385-MJP, 240 in 2:10-cv-01385-MJP, 240 in 2:10-cv-01385-MJP, 240 in 2:10-cv-01385-MJP, 240 in 2:10-cv-01385-MJP, 240 in 2:10-cv-01385-MJP) Statement,,,,,,,,,,,,,,,,,,,,, by Plaintiff Interval Licensing LLC. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit A-1, #5 Exhibit B-1, #6 Exhibit C-1, #7 Exhibit D-1)(Berry, Matthew)

Exhibit A-1 (Amended)

UNITED STATL_ DEPARTMENT OF COMMERCE
Patent and Trademark Office
Address:

APPLICATION NO.

n;::::,./ .....:.:. "

FILING DATE

COMMISSIONER OF PATENTS AND TRADEMARKS
Washington, D.C. 20231

FIRST NAMED INVENTOR

'.J .. ::::,'

EXAMINER

A~~~NITi"::'

"1'

PAPER NUMBER

}O
DATE MAILED:

Please find below and/or attached an Office communication concerning this application or
proceeding.
Commissioner of Patents and Trademarks

PTO-90e (Rev. 2/95)

U.S. G.P.O. 1999 460-693

1- File Copy

IL DEFTS0007126

Application No.

Ahmad etal

08/761,030

Office Action Summary

Examiner

Group Art Unit

John W. Miller

2711

o

Responsive to communication(s) filed on _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ __

o

This action is FINAL.

LJ Since this application is in condition for allowance except for formal matters,
in accordance with the practice under Ex parte

QUGl1'~35

prosecution as to the merits is closed
C. D. 11; 453 O. G. 213.

A shortened statutory period for response to this action is set to expire
3
month(s), or thirty days, whichever is
longer, from the mailing date of this communication. Failure to respond within the period for response will cause the
application to become abandoned. (35 US.C. § 133). Extensions of time may be obtained under the provisions of
37 CFR 1.136(a).
Disposition of Claim
~

Claim(s) . . :. 1-.. ;6'-'-7_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ __

Is/are pending in the applicat

Of the above, claim(s) _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ is/are withdrawn from consideration

Q\~ Claim(s) 1-17 35 47-59 and 62-64

_ _ _ is/are allowed.

~ Claim(s) 18-34, 36-46, 60. 61, and 65-67

_____ is/are rejected.

[J Claim(s) _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ __

CJ

Claims _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _._ _ _.

__
_ .. ___ ._ _ is/are objected to.
are subject 10 restriction or election requirement.

Application Papers
~ See the attached Notice of Draftsperson's Patent Drawing Review, PTO-948.

o The drawing(s) filed on _ _ _ _ _ _ _ _ _ is/are objected to by the Examiner.
::J Tne proposed drawing correction, filed on _ _ _ _ _ _ _ _ _
r:l Ttle specification is objected to by the Examiner.
[~~

is

0

approved

C]:lisapproved.

The oath or declaration is objected to by the Examiner.

Priority under 35 U.S,C. § 119
["]Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d).
CAli

o

[J3ome*

ITS!Pne

of the CERTIFIED copies of the priority documents have been

received.

o .received in Application No. (Series Code/Serial Number) _ _ _ _ _ _- - D received in this national stage application from the Internationi;ll Bureau (PCT Rule 17.2(a)).
*Certified copies not received: _______________- - - - - - - -

o

Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e).

Attabhment(S)

gg
gg

Information Disclosure Statement(s), PTO-1449, Paper No(s).

o

Interview Summary, PTO-413

Notice of References Cited, PTO-892
4-7 and 9

i2QNoUGe of Draftsperson's Patent Drawing Review, PTO-948
[] Notice of Informal Patent Application, PTO-152

- SEE OFFICE ACTION ON THE FOLLOWING PAGES --U. S. Patent and Trademark Office

PTO-326 (Rev. 9-95)

Office Action Summary

Part of Paper No. __ __
1_o

IL DEFTS0007127

Application/Control Number: 081761,030

Page 2

Art Unit: 2711

Claim Rejections - 35 USC § 102
l.

The following is a quotation of the appropriate paragraphs of35 US.C 102 that form the

basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless -(e) the invention was described in a patent granted on an application for patent by another filed in the United
States before the invention thereof by the applicant for patent, or on an international application by another who
has fulfilled the requirements of paragraphs 0), (2), and (4) of section 371(c) of this title before the invention
thereof by the applicant for patent.

2.

Claim 18,21-33,65, and 66 are rejected under 35 U.S.C. 102(e) as being anticipated by

Cobbley et al (5,614,940).
As to claim 18, note the Cobbley reference which discloses a method and apparatus for
providing indexed broadcast information. The claimed means for displaying ... and the claimed
means for controlling ... are met in part by the client system 140 (also, note the graphical user
interface of Figure 2). The reference indicates at col. 11, lines 1+, that the interface of Figure 2
may be a display device coupled to the client system 140 or a television set coupled to a set top
box. Either implementation involves the physical separation of the controller and the display.
As to claims 21-33, note once more the interface of Figure 2 and the corresponding
disclosure of col. 11, lines 1+, where all elements of the claims are met.
As to claims 65 and 66, reference clearly specifies broadcasts in either analog or digital
form.

IL DEFTS0007128

Application/Control Number: 081761,030

Page 3

Art Unit: 2711

3.

Claim 34 is rejected under 35 U.SC 102(e) as being anticipated by Hidary et al

(5,774,664).
As to claim 34, note the Hidary et al reference which discloses a system in which video
programming and retrieved Internet information segments are displayed in synchronization on
respective display devices--a television 114 and a personal computer 16 (Figure 4). As is claimed,
the first display is adapted for the display oftime-varying audio visual data while the second
display is adapted for the generation of a display from text data.
4.

Claims 36-46, 60, 61, and 67 are rejected under 35 U.S.C. 102(e) as being anticipated by

Herz et al (6,020,883).
As to claim 36, note thee Herz et al reference which discloses a system and method for
scheduling the broadcast of and access video program and other data using customer profiles.
Spr ;cifically, the system develops customer profiles for recipients describing how important certain
characteristics of the broadcast video program, movie, or other data are to each customer. From
these profiles, an agreement matrix is calculated by comparing the recipients profiles to the actual
profiles of the characteristics of available programs, movies, or other data. Feedback paths are
also provided so that each customers profiles and/or the profiles ofthe video programs or other
data may be modified to reflect actual usage. The claimed steps of determining ... , identifying ... ,
and selecting ... , are consequently met. That is, the customer profiles which reflect bodies of
categorized and received information are compared to the content profiles of new (un-

IL DEFTS0007129

Page 5

Application/Control Number: 081761,030
Art Unit: 2711

communication with a display. However, these features are not deemed to be patentable
distinctions. That is, it is notoriously well-known in the art to provide portable computers, such
as lap top computers, and to provide wireless connectivity between elements of a computer
system. The examiner submits that it would have been clearly obvious to one of ordinary skill in
the art at the time the invention was made to implement the Cobbley et al system accordingly to
provide flexibility to the user in the interactive broadcast experience.

Allowable Subject Matter
7.

Claims 1-17,35,47-59, and 62-64 are allowed.

8.

The following is a statement of reasons for the indication of allowable subject matter: the

prior art, alone or in combination, with respect to claims 1-17, 35, 59, 63, and 64, fails to teach or
fairly suggest a system for acquiring and reviewing a body of information as set forth in claim 1,
particularly in which data representing segments of the body of information are acquired and
stored, and subsequently compared according to predetermined criteria following the display of a
first segment, such that if segments are related then a second segment is displayed. As for the
most relevant art of record, the Cobbley et al (5,614,940) reference discloses a system in which
broadcast information is stored in a cache and indexed for retrieval by requesting end users. The
system fails to disclose or suggest to comparison of segments for the subsequent display of related
segments by respective 'display means'. The Hidary et al (5,774,664) reference discloses a
system in which video programming and retrieved Internet information segments are displayed in

IL DEFTS0007130

Page 6

Application/Control Number: 081761,030
Art Unit: 2711

synchronization. The reference likewise fails to disclose or suggest the comparison of acquired
segments of information. Rather, the retrieval of web page information occurs automatically in
response to their receipt via a particular television program, or in response to a particular time.
As to claims 47-58 and 62, the prior art, alone or in combination, does no teach or fairly
suggest the identification of boundaries of segments in a body of information, each segment
comprising a contiguous related set of information in the body of information, wherein the body
of information is represented by text data and video data, particularly through course and fine
partitioning as set forth in the claims, and subsequently the selection of best occurring breaks.

Conclusion
9.
The following are suggested formats for either a Certificate of Mailing or Certificate of
Transmission under 37 CFR 1.8(a). The certification may be included with all correspondence
concerning this application or proceeding to establish a date of mailing or transmission under 37
CFR 1.8(a). Proper use of this procedure will result in such communication being considered as
timely if the established date is within the required period for reply. The Certificate should be
signed by the individual actually depositing or transmitting the correspondence or by an individual
who, upon information and belief, expects the correspondence to be mailed or transmitted in the
normal course of business by another no later than the date indicated.

Certificate of Mailing
I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient
postage as fust class mail in an envelope addressed to:
Assistant Commissioner for Patents
Washington,
20231

nc.

on _ _ __
(Date)
Typed or printed name of person signing this certificate:

IL DEFTS0007131

Application/Control Number: 08/761,030

Page 7

Art Unit: 2711

Signature: _ _ _ _ _ _ _ _ _ _ _ _ __

Certificate of Transmission
I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark
on _ _ _ _~.
Office, Fax No. (703) _ _ (Date)
Typed or printed name of person signing this certificate:

Signature: _ _ _ _ _ _ _ _ _ _ _ _ __

Please refer to 37 CFR 1.6(d) and 1.8(a)(2) for filing limitations concerning facsimile
transmissions and mailing, respectively.
10.

Any response to this action should be:
(a) mailed to: Commissioner of Patents and Trademarks
Washington, D. C. 20231
(b) or faxed to: [phone] or [phone] for either formal communications

intended for entry, or informal or draft communications (please labeIIPROPOSED" or
"DRAFT")
(c) or hand-delivered to: Crystal Park II, 2121 Crystal Drive, Arlington. VA., Sixth Floor
(Receptionist) .

IL DEFTS0007132

Application/Control Number 081761,030

Page 8

Art Unit: 2711

11.

Any inquiry concerning this communication or earlier communications from the examiner

should be directed to John W. Miller whose telephone number is [phone]. The examiner
can normally be reached on Monday through Friday from 8:30 AM to 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor,
Andrew Faile, can be reached at [phone]. The fax phone number for this Group is
[phone].
Any inquiry of a general nature or relating to the status of this application or proceeding
should be directed to the Group receptionist whose telephone number is [phone],

&7/~~

/foh;W. Miller
May 17,2000

John W. Miller
Primary Examiner
Art Unit 2711

IL DEFTS0007133

UNITED STJ... c~ . . .::PARTMENT OF COMMERCE
Patent and Trademark Office
Address:

APPLICATION NO.

FILING DATE

COMMISSIONER OF PATENTS AND TRADEMARKS
Washington, D.C. 20231

FIRST NAMED INVENTOR

EXAMINER

1337 CHEWPON AVENUE
MILPITAS CA 95035

ART UNIT

PAPER NUMBER

13
DATE MAILED:

1:Z/1'}./OU

Please find below and/or attached an Office communication concerning this application or
proceeding.
Commissioner of Patents and Trademarks

PTO-90C (Rev. 2/95)

·U.S. GPO: 2000-473'()OO/44602

; ( 1 - File Copy

®

IL DEFTS0007479

..--------------.--------\

--------

Application No.

Ahmad etal

08/761,030

Office Action Summary

Examiner

Group Art Unit

John W. Miller

2611

i6J

Responsive to communication( s) filed on -=S=.epo:..:=2""2,...=20"-'O..,O'--___________________________________________

i6J

This action is FINAL.

[J Since this application is in condition for allowance except for formal matters,
prosecution as to the merits is closed
in accordance with the practice under Ex parte QUGl)iV935 C.D. 11; 453 O.G. 213.

3
month(s), or thirty days, whichever is
A shortened statutory period for response to this action is set to expire
longer, from the mailing date of this communication. Failure to respond within the period for response will cause the
application to become abandoned. (35 U.S.C. § 133). Extensions of time may be obtained under the provisions of
37 CFR 1.136(a).
Disposition of Claim

rzg

is/are pending in the applicat

Claim(s) 1-33 and 35-67

Of the above, claim(s) _________________________________________ is/are withdrawn from consideration
~ Claim(s) 1-17 35-64 and 67

is/are allowed.

~ Claim(s) 18-33 65 and 66

is/are rejected.

C

Claim(s) _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ is/are objected to.
I

Claims _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ are subject to restriction or election requirement.

Application Papers
[j See the attached Notice of Draftsperson's Patent Drawing Review, PTO-948.

r:::J The drawing(s) filed on _ _ _ _ _ _ _ _ _ is/are objected to by the Examiner.

lJ

The proposed drawing correction, filed on

is

C

approved

[J:jisapproved.

[] The specification is objected to by the Examiner.

::J The oath or declaration is objected to by the Examiner.
Priority under 35 U.S.C. § 119
[J Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d).
CAli

[]3ome*

ITSlPne

of the CERTIFIED copies of the priority documents have been

[J received.
[J received in Application No. (Series Code/Serial Number) _ _ _ _ _ _ _ ___

CJ

received in this national stage application from the International Bureau (PCT Rule 17.2(a)).

*Certifiedcopiesn~~ce0ed:

__________________________________ I

'J Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e)
Attachment(s)

==

Notice of References Cited, PTO-892

[J

Information Disclosure Statement(s), PTO-1449, Paper No(s). _ _ __

LJ Interview Summary, PTO-413

CJ
CJ

Notice of Draftsperson's Patent Drawing Review, PTO-948
Notice of Informal Patent Application, PTO-152

--- SEE OFFICE ACTION ON THE FOLLOWING PAGES --U

s.

Patent and Trademark Office

PTO-326 (Rev. 9-95)

Office Action Summary

Part of Paper No. __ __
1_3

IL DEFTS0007480

Application/Control Number: 08/761,030

Page 2

Art Unit: 2711

Claim Rejections - 35 USC § 102
1.

The following is a quotation of the appropriate paragraphs of35 U.S.C. 102 that form the

basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless -(e) the invention was described in a patent granted on an application for patent by another filed in the United
States before the invention thereof by the applicant for patent, or on an international application by another who
has fulfilled the requirements of paragraphs (I), (2), and (4) of section 371(c) of this title before the invention
thereof by the applicant for patent.

2.

Claim 18,21-33,65, and 66 are rejected under 35 U.s.c. 102(e) as being anticipated by

Cobbley et aI (5,614,940).
As to claim 18, note the Cobbley reference which discloses a method and apparatus for
providing indexed broadcast information. The claimed means for displaying ... and the claimed
means for controlling ... are met in part by the client system 140 (also, note the graphical user
interface of Figure 2). The reference indicates at col. 11, lines 1+, that the interface of Figure 2
may be a display device coupled to the client system 140 or a television set coupled to a set top
box. Either implementation involves the physical separation of the controller and the display.
As to claims 21-33, note once more the interface of Figure 2 and the corresponding
disclosure of col. 11, lines 1+, where all elements of the claims are met.
As to claims 65 and 66, reference clearly specifies broadcasts in either analog or digital
form.

IL DEFTS0007481

Application/Control Number: 08/761,030

Page 3

Art Unit: 2711

Claim Rejections - 35 USC § 103
3.

The following is a quotation of35 US.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.

This application currently names joint inventors. In considering patentability of the claims
under 35 U.s.c. 103(a), the examiner presumes that the subject matter of the various claims was
commonly owned at the time any inventions covered therein were made absent any evidence to
the contrary. 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
made in order for the examiner to consider the applicability of 3 5 U. s. C. 103 (c) and potential 35

usc

lO2(f) or (g) prior art under 35 u.S.C 103(a).

4.

Claims 19 and 20 are rejected under 35 US.c. lO3(a) as being unpatentable over Cobbley

et al (5,614,940).
As to claims 19 and 20, the reference does not disclose a controller (such as that
embodied by a computer or set top box) which is either portable or in 2-way wireless
communication with a display. However, these features are not deemed to be patentable
distinctions. That is, it is notoriously well-known in the art to provide portable computers, such
as lap top computers, and to provide wireless connectivity between elements of a computer
system. The examiner submits that it would have been clearly obvious to one of ordinary skill in

IL DEFTS0007482

Application/Control Number: 081761,030

Page 4

Art Unit: 2711

the art at the time the invention was made to implement the Cobbley et al system accordingly to
provide flexibility to the user in the interactive broadcast experience.

Allowable Subject Matter
5.

Claims 1-17,35-64, and 67 are allowed.

6.

The following is a statement of reasons for the indication of allowable subject matter: the

prior art, alone or in combination, with respect to claims 1-17, 35, 59, 63, and 64, fails to teach or
fairly suggest a system for acquiring and reviewing a body of information as set forth in claim 1,
particularly in which data representing segments of the body of information are acquired and
stored, and subsequently compared according to predetermined criteria following the display of a
first segment, such that if segments are related then a second segment is displayed. As for the
most relevant art of record, the Cobbley et al (5,614,940) reference discloses a system in which
broadcast information is stored in a cache and indexed for retrieval by requesting end users. The
system fails to disclose or suggest to comparison of segments for the subsequent display of related
segments by respective 'display means'. The Hidary et al (5,774,664) reference discloses a
system in which video programming and retrieved Internet information segments are displayed in
synchronization. The reference likewise fails to disclose or suggest the comparison of acquired
segments of information. Rather, the retrieval of web page information occurs automatically in
response to their receipt via a particular television program, or in response to a particular time.

IL DEFTS0007483

Application/Control Number: 081761,030

Page 5

Art Unit: 2711

As to claims 47-58 and 62, the prior art, alone or in combination, does no teach or fairly
suggest the identification of boundaries of segments in a body of information, each segment
comprising a contiguous related set of information in the body of information, wherein the body
of information is represented by text data and video data, particularly through course and fine
partitioning as set forth in the claims, and subsequently the selection of best occurring breaks.
As to claims 36-46,60,61, and 67, the prior art, alone or in combination, does no teach or
fairly suggest the categorizing according to subject matter an uncategorized body of information
in which a degree of similarity is determined between subject matter content of each previously
categorized segment and an uncategorized segment.

Response to Arguments
7.

Applicant's arguments filed 9/22/00 have been fully considered but they are not persuasive.
Applicant argues with respect to claim 18 that the Cobbley reference does not disclose a

'means for controlling' which is physically separate from a 'means for controlling operation of the
system. Applicant points to many facets of the displayed GUI of Figure 2 of the reference in
order to substantiate the notion that the displayed GUI and the display itself are inseparable.
However, the examiner clearly drew a distinction in the rejection between the display of the client
system and the remainder of the c1ient---often called the CPU A GUI is simply a series of
software routines, and a display device is a passive data output device. Consequently, it can not

IL DEFTS0007484

Page 6

Application/Control Number: 08/761,030
Art Unit: 2711

be said that a aUI is a means for controlling operation of a system. All other arguments to
claims 18,21-33,65, and 66 appear to stand with the argument of physical separateness.

Conclusion
8.

THIS ACTION IS MADE FINAL. Applicant is reminded of the extension oftime

policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE
MONTHS from the mailing date ofthis action. In the event a first reply is filed within TWO
MONTHS of the mailing date of this final action and the advisory action is not mailed until after
the end of the THREE-MONTH shortened statutory period, then the shortened statutory period
will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
CFR 1. 13 6( a) will be calculated from the mailing date of the advisory action. In no event,
however, will the statutory period for reply expire later than SIX MONTHS from the mailing date
of this final action
9.
The following are suggested formats for either a Certificate of Mailing or Certificate of
Transmission under 37 CPR 1.8(a). The certification may be included with all correspondence
concerning this application or proceeding to establish a date of mailing or transmission under 37
CPR 1.8(a). Proper use of this procedure will result in such communication being considered as
timely if the established date is within the required period for reply. The Certificate should be
signed by the individual actually depositing or transmitting the correspondence or by an individual
who, upon information and belief, expects the correspondence to be mailed or transmitted in the
normal course of business by another no later than the date indicated.

Certificate of Mailing

IL DEFTS0007485

Application/Control Number: 081761,030

Page 7

Art Unit: 2711

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient
postage as first class mail in an envelope addressed to:
Assistant Commissioner for Patents
Washington, D.C. 20231
on _ _ __
(Date)
Typed or printed name of person signing this certificate:

Signature: _ _ _ _ _ _ _ _ _ _ _ _ _ _ __

Certificate of Transmission
I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark
Office, Fax No. (703)_ _ on _ _ _ __
(Date)
Typed or printed name of person signing this certificate:

Signature: _ _ _ _ _ _ _ _ _ _ _ _ _ __

Please refer to 37 CFR 1.6(d) and 1.8(a)(2) for filing limitations concerning facsimile
transmissions and mailing, respectively.
10.

Any response to this final action should be:
(a) mailed to: Box AF
Commissioner of Patents and Trademarks
Washington, D.C. 20231

IL DEFTS0007486

Application/Control Number: 081761,030

Page 8

Art Unit: 2711

(b) or faxed to: [phone] or [phone] for either formal communications
(please mark "EXPEDITED PROCEDURE"), or informal or draft communications (please label
"PROPOSED" or "DRAFT")
(c) or hand-delivered to: Crystal Park II, 2121 Crystal Drive, Arlington. VA, Sixth Floor
(Receptionist) .
11.

Any inquiry concerning this communication or earlier communications from the examiner

should be directed to John W. Miller whose telephone number is [phone]. The examiner
can normally be reached on Monday through Friday from 8:30 AM to 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor,
Andrew Faile, can be reached at [phone]. The fax phone number for this Group is
[phone].
Any inquiry of a general nature or relating to the status of this application or proceeding
should be directed to the Group receptionist whose telephone number is [phone].

John W. Miller
December 17,2000

~7/7~~

~~W.MiIler

Primary Examiner
Art Unit 2711

IL DEFTS0007487

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE

United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 22313-1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

90/011,577

03/17/2011

Subutai Ahmad

201 92.0002.RXOOO

1771

27572

7590

05/06/2011

EXAMINER

HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303

ART UNIT

PAPER NUMBER

DATE MAILED: 05/06/20 II

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev_ 10/03)

IL DEFTS0008715

UNITED STATES PATENT AND TRADEMAlU<' OFFICE
Commissioner for Patents
United States Patents and Trademark Office
P.O.Box 1450
Alexandria. VA 22313-1450
www.uspto.gov

THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS

NOVAK DRUCE & QUIGG, LLP
(NDQ REEXAMINATION GROUP)
1000 LOUISIANA STREET, FIFTY-THIRD FLOOR
HOUSTON, TX 77002

Date:

MAILED

MAY 0 B2011
CENTRAL REEXAMINATION UNIT

EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
REEXAMINATION C,ONTROL NO. : 90011577
PATENT NO. : 6263507
ART UNIT: 3992

Enclosed is a copy of the latest communication from the United States Patent and Trademark
Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
reply has passed, no submission on behalf of the ex parte reexamination requester will be
acknowledged or considered (37 CFR 1.550(g)).

IL DEFTS0008716

Control No.
90/011,577

Alai MAg

Examiner

Art Unit

MAJID A. BANANKHAH

Order Granting / Denying Request For
Ex Parte Reexamination

Patent Under Reexamination

3992

I!!+ lH!.

G,;;L.b '3.. ~o 7

--The MAILING DATE of this communication appears on the cove; sheet with the correspondence address--

The request for ex parte reexamination filed 17 March 2011 has been considered and a determination has
been made. An identification of the claims, the references relied upon, and the rationale supporting the
determination are attached.
Attachments:
1. ~

a)D

b)[8] PTO/88/08,

PTO-892,

c)D

Other: _ _

The request for ex parte reexamination is GRANTED.
RESPONSE TIMES ARE SET AS FOLLOWS:

For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.S50(c).
For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
is permitted.
2.

D

The request for ex parte reexamination is DENIED.

This decision is not appealable (35 U.S.C. 303(c)). Requester may seek review by petition to the
Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing date of this communication (37
CFR 1.515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR 1.181 ARE
AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
37 CFR 1.183.
In due course, a refund under 37 CFR 1.26 ( c ) will be made to requester:

D
b) 0

a)

c)

D

by Treasury check or,
by credit to Deposit Account No. _ _ , or
by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).

I

I

I

I

cc:Reauester ( if third Dartv reauester )

u.s. Patent and Trademark Office
PTOL·471 (Rev. 08-06)

Office Action in Ex Parte Reexamination

Part of Paper No. 20110503

IL DEFTS0008717

Page 2

Application/Control Number: 90/011,577
Art Unit: 3992
Decision on Request for Ex Parte Reexamination
1.

In the request for reexamination filed March 17,2011, reexamination of U.S.

Patent No. 6,263,507 ("subject patent", hereinafter' 507 patent) with respect to claims 2024,27,28,31,34,37-40,43,63-67, 70, 71, 74, 77, 80-83, and 86 was requested under 35
U.S.c. §§ 302-307 and C.F.R. § 1.510. A substantial new question of patentability
("SNQ") is raised by the request for reexamination and prior art cited therein for the
reasons set forth below. Accordingly, the request for reexamination is GRANTED.

The References Cited that Presents SNQ
2.

The following documents were submitted by Requester as the basis for this

Request for Reexamination.
a.

"Network Plus", Walter Bender et aI., January 12-13, 1988 ("Bender").

b.

"Cluster-Based Text Categorization: A Comparison of Category Search
Strategies", Makoto Iwayama, July 9-13,1995 ("Iwayama").

c.

"The Fishwrap Personalized News System", Pascal R. Chesnais et aI.,
June 1995 ("Chesnais").

d.

"Classifying News Stories using Memory Based Reasoning", Brij
Masand, June 1992 ("Masand").

e.

"WebWatcher: Machine Learning and Hypertext", Thorsten Joachims et
aI., May 29, 1995 ("Joachims").

f.

JP Publication No. H07-ll4572 to Yuasa ("Yuasa").

g.

"Wire Service Transmission Guidelines Number 84-2", Special Report /
American Newspaper Publishers Association, ANPA June 14, 1984
('lWTS Guidelines").

h.

"The Associated Press Stylebook and Libel Manual", The Associated
Press, 1994 C'AP Stylebook").

IL DEFTS0008718

Page 3

Application/Control Number: 90/011,577
Art Unit: 3992
The above references are not of record in the prosecution history of the Ahmed
'507 patent and are not cumulative to the art of record in the original file.

3.

Since requester did not request reexamination of claims 1-19, 25-26, 29-30, 32-

33,35-36,41-42,44-62,68-69, 72-73, 75-76, 78-79, 84-85 and 87-129 and did not assert
the existence of a substantial new question of patentability (SNQ) for such claims (see 35
U.S.C. § 302); see also 37 CFR 1.51Ob and 1.515), such claims will not be reexamined.
This matter was squarely addressed in Sony Computer Entertainment America Inc., et al.

v. Jon W Dudas, Civil Action No. 1:05CV1447 (E.D.Va. May 22,2006), Slip Copy,
2006 WL 1472462. The District Court upheld the Office's discretion to not reexamine
claims in a reexamination proceeding other than those claims for which reexamination
had specifically been requested. The Court stated:
"To be sure, a party may seek, and the PTO miJY grant, ... review of each and every claim
of a patent. Moreover, while the PTO in its discretion may review claims for which ...
review was not requested, nothing in the statute compels it to do so. To ensure that the
PTO considers a claim for ... review, ,-,-.requires that the party seeking reexamination
demonstrate why the PTO should reexamine each and every claim for which it seeks
review. Here, it is undisputed that Sony did not seek review of every claim under the '213
and '333 patents. Accordingly, Sony cannot now claim that the PTO wrongly failed to
reexamine claims for which Sony never requested review, and its argument that AlPA
compels a contrary result is unpersuasive."

Brief Prosecution History of the Ahmad '507 Patent
4.

U.S. Patent Application Serial No. 08/761,030 was filed on Dec. 5, 1996, now

U.S. Patent. No. 6,263,507 (hereinafter '507 patent). The '507 patent is currently
assigned to Interval Licensing LLC, of Seattle Washington.
The '030 application was originally filed with 62 total claims, of which 12 claims
were independent. The Patentee added dependent application claims 63-67 by
preliminary amendment filed Sept. 21, 1998.

Examiner's Note: For brevity Examiner address herein those portions of the
prosecution history that are relevant to the claims for which reexamination is requested,
but do not address aspect of the prosecution history unrelated to the claims for which
reexamination is requested.

IL DEFTS0008719

Application/Control Number: 90/011,577

Page 4

Art Unit: 3992

First Office Action

On May 18, 2000, Examiner issued an Office Action and in that, the Examiner
indicated that application claims 35 and 59 (among others), which issued as claim's 20
and 63, respectively were allowable. There was no further examination of what ultimately.
issued as claims 20 and 63. Nor was there any further examination of dependent claims
68-103, which were added just after issuance of a Final Office Action and ultimately
issued as claims 21-38 and 64-81.
Regarding "the most relevant art of record" with respect to claims 35 and 59, the
Examiner stated reasons for allowance as follows:
"The following is a statement of reasons for the indication of allowable subject
matter: the prior art, alone or in combination, with respect to claims ... 35 and 59,
and ... fails to teach or fairly suggest a system for acquiring and reviewing a body
of information as set forth in claim 1, particularly in which data representing
segments of the body of information are acquired and stored, and subsequently
compared according to predetermined criteria following the display of a first
segment, such that if segments are related then a second segment is displayed. As
for the most relevant art of record, the Cobbley et al (5,614,940) reference
discloses a system in which broadcast information is stored in a cache and
indexed for retrieval by requesting end users, The system fails to disclose or
suggest to comparison of segments for the subsequent display of related segments
by respective 'display means'. The Hidary et al. (5,774,664) reference discloses a
system in which video programming and retrieved Internet information segments
are displayed in synchronization. The reference likewise fails to disclose 0
suggest the comparison of acquired segments of information. Rather the retrieval
of web page information occurs automatically in response to their receipt via a
particuiar television program, or in response to a particular time." [d. [underlining
provided]
As seen from the above, regarding "the most relevant art of record" which respect
to claims 35 and 59, the Examiner's statement of reasons for allowance were that
Cobbley "fails to disclose or suggest to [sic] comparison of segments for the subsequent
display of related segments by respective 'display means'." (Paper No. 10, at pg. 5).
Application claims 36 (issued claim 39) - 41 and 60 (issued claim 82) were
rejected under 35 U.S.c. § 102(e) as anticipated by Herz et al U.S. 6,020,883.

IL DEFTS0008720

Application/Control Number: 90/011,577

Page 5

Art Unit: 3992

Response to First Office Action
On Sept. 18, 2000, the Patentee filed a response to the first Office Action, and in
that response with respect to application claim 36 (issued claim 39) and application claim
60 (issued claim 82) and their dependent claims, the Patent Owner attempted to
distinguish Herz on the basis of "subject matter" comparison, arguing that Herz does not
teach "determining a degree of similarity between the subject matter content of an
uncategorized segment and the subject matter content of each of one or more previously
categorized segments." Id. at p. 9 (emphasis in original); see also id. at p. 11 ("Herz et al.
do not teach that the result of a comparison of the customer profile and a content profile
is a categorization of the content profile according to subject matter"). The patentee also
attempted to distinguish Herz by arguing that Herz did "not teach that a customer profile
is compared to a video program." Id. Thus, the patentees attempted to distinguish
application claims 36 and 60 over Herz by arguing that Herz did not teach subject matter
comparison or comparison to an uncategorized video segment. [d. at p. 9-12 (arguing
with respect to claim 36); id. at p. 12 ("Claim 60, which recites limitations similar to
those of Claim 36, is allowable as well."

Final Office Action
A final Office Action was mailed on December 19, 2000 and in that, the earlier
statement of reasons for allowance was supplemented to address the claims that
previously had been rejected based on Herz. In particular, regarding application claims
36-41, and 60, the Examiner stated:
"the [applied] prior art, alone or in combination, does no [sic] teach or fairly
suggest the categorizing according to subject matter an uncategorized body of
information in which a degree of similarity is determined between subject matter
content of each previously categorized segment and an uncategorized segment."
Id., pg. 5. [underlining provided]

Response to Final Office Action
On Feb. 20, 2001, the Patentee in response to the final Office Action cancelled the
non-allowed claims, i.e., the application claims 18-33, and 66. Additionally, Patentee
added new claims 68-148, which were stated to be "similar in content" to other,
previously allowed claims of different type. (For example, application claims 68-85 were

IL DEFTS0008721

Page 6

Application/Control Number: 90/011,577
Art Unit: 3992

method claims that were indicated to be similar in content to previously allowed system
claims; application claims 86-103 were computer readable medium claims that were
indicated to be similar in content to previously allowed system claims; etc.) Of those new
claims, application claims 68-71, 74, 75, 78, 81, 84, 85, 86-89,92,93, 96, 99, 102, 103,
104, and 107 are germane to the present Request for reexamination as issued claims 2124,27,28,31,34,37,38,64-67,70,71, 74, 77,80, 81, 83, and 86.
Notice ofAllowance
Subsequently, Examiner issued a Notice of Allowance on Mar. 4,2001 in
response to the Patentee's response to the final Office Action. The Notice of Allowance
referred back to the statement of reasons for allowance set forth previously in the final
Office Action.
Based on the forgoing, a particularly relevant characteristic upon which ·the
Patentee relied in distinguishing issued claims 20 and 63 from the prior art of record and
the Examiner indicated in his reasons for allowance was a system for acquiring and
reviewing a body of information as set forth in claim 1, particularly in which data
representing segments of the body of information are acquired and stored, and
subsequently compared according to predetermined criteria following the display of a
first segment, such that if segments are related then a second segment is displayed.
Additionally, a particularly relevant characteristic upon which the Patentee relied
in distinguishing issued claims 39 and 82 from the prior art of record and the Examiner
indicated in his reasons for allowance was the categorizing according to subject matter an
uncategorized body of information in which a degree of similarity is determined between
subject matter content of each previously categorized segment and an uncategorized
segment.

Requester's Proposed SNQs
5.

The requester at page 30 through page 43 of his request suggests that Bender,

Chesnais and Joachims, alone or in combination with other references indicated above
(See 2), raises a SNQ with respect to independent claims 20-24, 27, 28, 31, 34, 37, 38,
63-67,70,71,74,77,80, and 81 of the '507 patent. The Examiner agrees.

IL DEFTS0008722

Page 7

Application/Control Number: 90/011,577
Art Unit: 3992
For example with respect to issued independent claims 20 and 63, Bender
discloses the concept of using a computer-based system ("the news editor has been
replaced by the personal computer") to display supplementary content along with primary
telecast content, while the telecast content is shown. Bender at p. 82. Bender's
comparison and display system provided "a more detailed examination of the same news
articles which are summarily presented during a traditional one half hour television news
show." See Bender, p. 81. This is facilitated by accessing "[a] variety of both local and
remote databases. II [d. By way of example, Bender in Figure 1 shows an original
broadcast with a map in the background (top, center); a revised version of the broadcast
with a different map locally inserted into the audiovisual document (lower, left); and a
revised version of the broadcast with text that is related to the broadcast story inserted
into the audiovisual document (lower right).
In another example illustrated in Figure 2, Bender shows a broadcast (bottom
right) is presented along with the text of related news wire stories (left), along with
pertinent still images from the broadcast (upper right).
With respect to implementation, Bender explains that a processor scans the closed
captioning data that is normally transmitted with the broadcast information to determine
the subject of the story being broadcast. Bender at p. 81. Additionally, "[ s ]elected frames
drawn from the telecast and stored in local memory [can be] presented as well." (See
Bender, pp. 81 and 83 (video stills». Prior to the broadcast, news articles will have been
collected (i.e., stored) and analyzed to develop keyword lists based on frequency. Bender,
p. .82. As the broadcast occurs, the keyword lists corresponding to the newswire stories
are compared to the closed captioning data corresponding to the broadcast stories to
determine whether the newswire stories are related to the broadcast stories. Id. If the
number of keywords common to both the broadcast story and a text or trial story exceeds
a predetermined threshold, the two are deemed to be related such that the textual
newswire story can be displayed along with the broadcast television story. See Bender, p.
82. Thus, as required by independent claims 20 and 63, the system compares data
representing one segment of info~ation (e.g., closed caption data for the news
broadcast) to data representing a different segment of information (e.g., keyword data

IL DEFTS0008723

Application/Control Number: 90/011,577

Page 8

Art Unit: 3992
from newswire stories) to determine whether the segments are related, i.e., "match," and
then displays the related segments together in real time. This is illustrated, for example,
in Figure 3 (Bender, p. 86).
Bender teaches a system that compares different segments of information, and
subsequently displays related segments of information based on that comparison. "[The
system] matches stories during the broadcast [and] annotates the television news with
. articles drawn from a local copy of wire service news material selected and presented
along with the video in real time". Bender at pp. 81-83 and 86. This comparison and
display of related segments can be seen in Figure 2 of Bender.
Thus Bender discloses the critical feature that was indicated by the Examiner was
missing in the prior art of record that is: "[... ] comparison of segments for subsequent
display of related segments by respective 'display means'''.
Since Bender alone discloses or suggests the critical features that were considered
distinguishing at least independent claims 20 and 63 from the prior art of record during
original prosecution of the Ahmed '507 invention, areasonable examiner would consider
evaluation of the Bender important in determining the patentability of at least
independent claims 20 and 63 of the Ahmed '507 patent. Accordingly, Bender alone
raises a substantial new question of patentability as to claims 20 and 63, which question
has not been decided in a previous examination of the Ahmed '507 patent.

6.

The requester at page 45 through page 50 of his request suggests that Masand,

Iwayama and Yuasa, alone or in combination with other references indicated above (See

2), raises a SNQ with respect to claims 39, 40,43,82,83, and 86 of the '507 patent. The
Examiner agrees.
For example with respect to independent claims 39 and 82, Masand discloses a
technique for automatically categorizing a newly acquired news story by comparing it to
previously categorized stories, and assigning categories to the newly acquired story based
on the categories of the previously categorized stories determined to be most similar to
the newly acquired story. See p. 59. Specifically, Masand disclosed a technique for
comparing newly acquired stories to the Dow Jones Press Release News Wire's database

IL DEFTS0008724

Application/Control Number: 90/011,577

Page 9

Art Unit: 3992
of previously categorized stories. Documents were categorized using about 350 distinct
codes, grouped into six categories (Industry, Market Sector, Product, Subject,
Government Agency, and Region).
Masand teaches the use of Memory Based Reasoning (MBR) to classify (i.e.,
categorize) new, unseen news stories. See Abstract. MBR solves a new task (i.e.,
classifying a new story) by looking up examples of tasks (i.e., previously coded stories)
similar to the new task and using the similarity between the new story and the previously
coded stories to assign a code (i.e., category) to the new story. See Masand, p. 61. The
MBR algorithm uses text from a new story, including single words and capitalized word
pairs, to construct a relevance-feedback database query. Id. The query was run against the
Dow Jones Press Release News Wire's database of previously coded stories using a text
retrieval system called SEEKER.
The query returns a weighted list of previously coded documents that are near
matches to the new document. Id. Codes are then assigned to the new document by
combining the codes assigned to the k-nearest matches by score. Id. The best codes are
chosen by implementing a score threshold. Id.
Masand teaches acquiring an uncategorized segment of information (stories
originating from diverse sources such as newspapers, magazines, newswires, and press
releases, p. 59), and determining a degree of similarity between the uncategorized
segment and previously categorized segments by formulating a relevance feedback query
to a database of previously categorized segments of information (p. 61, section 7). The
results of the relevance feedback query are weighted by summing similarity scores (Id.).
A list of relevant related information to the new, uncategorized information is provided as
shown in Fig. 4.
Thus Masand discloses the critical feature that was indicated by the Examiner was
missing in the prior art of record that is: "the categorizing according to subject matter an
uncategorized body of information in which a degree of similarity is determined between
subject matter content of each previously categorized segment and an uncategorized
segment".

IL DEFTS0008725

Page 10

Application/Control Number: 90/011,577
Art Unit: 3992
Since Masand alone discloses or suggests the critical features that were
considered distinguishing at least independent claims 39 and 82 from the prior art of
record during original prosecution of the Ahmed' 507 invention, a reasonable examiner
would consider evaluation of the Masand important in determining the patentability of at
least independent claims 39 and 82 of the Ahmed '507 patent. Accordingly, Masand
alone raises a substantial new question of patentability as to claims 39 and 82, which
question has not been decided in a previous examination of the Ahmed '507 patent.

Conclusion
7.

See MPEP §§ 2249 and 2251 regarding the patent owner's option to file a

statement following a reexamination order and the third-party requester's option to reply
to said statement.
Extensions of time under 37 CFR 1. 136(a) will not be permitted in these
proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and not
to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that ex
parte reexamination proceedings "will be conducted with special dispatch" (37 CFR
1.550(a». Extensions of time in ex parte reexamination proceedings are provided for in
37 CFR 1.550(c).
The patent owner is reminded of the continuing responsibility under 37 CFR
1.565(a) to apprise the Office of any litigation activity, or other prior or concurrent
proceeding, involving Patent No. 6,263,507 throughout the course of this reexamination
proceeding. See MPEP §§ 2207, 2282 and 2286.
Any paper filed with the Office, i.e., any submission made, by either the patent
owner or the third party requester must be served on every other party in the
reexamination proceeding in the manner provided by § 1.248. The document must reflect
service or the document may be refused consideration by the Office. See 37 CFR
1.550(f).
The patent owner is notified that any proposed amendment to the specification
and/or claims in this reexamination proceeding MUST (a) comply with 37 CFR 1.530(d)(j), 37 CFR 1.52(a) and (b), and (b) contain any fees required by 37 CFR 1.20(c).

IL DEFTS0008726

Page 11

Application/Control Number: 90/011,577
Art Unit: 3992

Contact Injomiation
All correspondence relating to this ex parte reexamination proceeding should be directed
as follows:
By EFS: Registered users may submit via the electronic filing system EFS-Web at
https://sportal.uspto.gov/authenticate/authenticateuserlocalepf.html
By Mail: Mail Stop "Ex Parte Reex~"
Central Reexamination Unit
Commissioner for Patents
P. O. Box 1450
Alexandria, VA 22313-1450
By FAX: [phone]
Central Reexamination Unit
By hand: Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
Any inquiry concerning this communication or earlier communications from the
Reexamination Legal Advisor or Examiner, or as to the status of this proceeding, should
be directed to the Central Reexamination Unit at telephone number [phone].

Signed:

.f1.oj;4 ~~

Majid A. Banankhah
Primary Examiner
Central Reexamination Unit
(571 )272-3770

Conferee:

Ovidio Escalante, Primary Examiner
Art Unit: 3992

Eric Keasel, SPE
Art Unit: 3992

IL DEFTS0008727

PTO/SS/OSa (07-09)
.Approved for use through 07/3112012. OMB 0651-0031
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF. COMMERCE
Under the Paperwork Reduction Act of 1995 no Dersons are reauired to rescond to a collection of information unless it contains a valid OMS control number.

/'

""'\

Complete if Known

Substitute for form 1449/PTO
Application Number

,-

Filing Date

INfORMATION DISCLOSURE
STATEMENT BY APPLICANT

First Named Inventor
ArlUnil

(Use es many sheets as necessary)

'-

Sheet. 1

1

1

of

1

March 17, 2011
Ahmad Subutai
3992

Examiner Name

2

./

Attorney Docket Number

U. S. PATENT DOCUMENTS
Examiner
Initials'"

Publication Date
MM-DD-YYYY

Document Number

Ci'"
No'

Name of Patentee or
Applicant of Cited Document

Number-Kind Code2 (a known)

Pages, Columns, Lines, Where
Relevant Passages or Relevant
Figures Appear

USUSUSUSUSUSUSUS-

I
I

USUSUSUSUSUSUSUSUSUSUS-

FOREIGN PATENT DOCUMENTS
Examiner
Initials'

Cite
NO'

Foreign Patent Document

Publicahon
Date
MM-DD-YYYY

Name of Patentee or
Applicant of Cited Document

Pages, Columns, Lines,
Where Relevant Passages
Or Relevant Figures Appear

T'

Country Code'-Number' -Kind Code' (if known)

J1~'

JP Publication H07-114572

05-02-1995

Yuasa

'EXAMINER: Initial if
erence considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not
considered. Indude copy of this form with next communication to applicant. 'Applicant's unique citation designation number (optional). 2 See Kinds Codes of
USPTO Patent Documents at www.uspto.gov or MPEP 901.04. 3 Enter Office that issued the document, by the two-letter code (WIPO Standard ST.3) .• For
Japanese patent documents, the indication of the year of the reign of the Emperor must precede the serial number of the patent document. 'Kind of document by
the appropriate symbols as indicated on the document under WIPO Standard ST.16 if possible. • Applicant is to place a check mark here if English language
Translation is attached.
This collection of information is required by 37 CFR 1.97 and 1.98. The information is required to obtain erretain a benefit by the public which is to file (and by the
USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 2 hours to complete,
including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments
on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Infomnation Officer, U.S. Patent
and Trademark Office. P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND
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If you need assistance in completing the form, call1-800-PTO-9199 (1-800-786-9199) and select option 2.

IL DEFTS0008728

)
PTO/SB/OBb (07-09)
Approved for use through 07/31/2012. OMB 0651-0031
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the PaoelWork Reduction Act of 1995 no Dersons are reQuired to resoond to a cotlection of information unless it contains a valid OMB control number.

Complete if Known

/SUbstitute for form 1449/PTO

""'\

Application Number

INFORMATION DISCLOSURE
STATEMENT BY APPLICANT

Filing Date

March 17, 2011

First Named Inventor

Ahmad Subutai

Art Unit

3992

(Use as many sheets as necessary)

Examiner Name

~heel

I

I

2

of

I

2

Attorney Docket Number

NON PATENT LITERATURE DOCUMENTS
Examiner
Initials·

J1lJ

Cite
No. 1

Include name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of
the item (book, magazine, journal, serial, symposium, catalog, etc.), date, page(s), volume-issue
number(s), PUblisher, city and/or country where published.

T2

WALTER BENDER et ai, "Network Plus,"Jan. 12-13, 1998

!1j<

MAKOTO IWAYAMA, "Cluster-Based Text Categorization: A COMPARISON of
Category Search Strategoes," July 9-13, 1995

J1j).

PASCAL R. CHESNAIS et ai, "The Fishwrap Personalized News System"
June 1995

t111

BRIJ MASAND, "Classifying News Stories Using Memory Based
Reasoning," June 1992

Ml3.

THORSTEN JOACHIMS et al. "WebWatcher Machine Learning and
Hypertext," May 29, 1995

Mb,

"Wire Service Transmission Guidelines Number 84-2", Special Report I
American Newspaper Publishers Association, ANPA June 14, 1984

/1.81

D

"The Associated Press Stylebook and Libel Manual," The Associated Press,
1994

Date
Considered
"EXAMINER: Initial if re
nce considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not
considered. Include copy of this form with next communication to applicant.
1 Applicant's unique citation designation number (ootional). 2 Applicant is to place a check mark here if English 'anguage Translation is attached.
Thi·s collection of information is required by 37 CFR 1.98. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO
to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 2 hours to comptete, including
gathering, prepartng, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the
amount of time you require to complete this fORn and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and
Trademark Office, P.O. Box 1450, Alexandria, VA 22313·1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO:

Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313·1450.
If you need assistance· in. completing the form, call 1.BOO-P.T0-9199 (1 ~BOO-786-9199) and selec/"option,2.

~

,-1 .'. "

IL DEFTS0008729

Application/Control No.

Search Notes

II III~IIII III I III
Subclass

Date

90/011,577
Examiner

AIIMA8 E'fm..

MAJ ID A. BANAN KHAH

3992

b, d.b 3,$07

Art Unit

SEARCH NOTES
(INCLUDING SEARCH STRATEGy)

SEARCHED
Class

Applicant(s)/Patent under
Reexamination

DATE

Examiner

Reviewed File History

EXMR

5/3/2011

MB

INTERFERENCE SEARCHED
Class

Subclass

u.S. Patent and Trademark Office

Date

Examiner

Part of Paper No. 20110503

IL DEFTS0008730