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 D-1 (Amended)

~·l[l~'

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re the application of
Examiner:

Jeffery A. Brier

Art Unit:

2672

FREIBERGER, et al
Serial No.

09/528,803

Filed:

March 20, 2000

Docket No.

INTIP869C2

December 30, 2002
For:
ATTENTION MANAGER
FOR OCCUPYING THE PERIPHERAL
ATTENTION OF A PERSON IN THE
VICINITY OF A DISPLAY DEVICE

RECEIVED
JAN 0 7 2003
Technology Center 2600
CERTIFICATE OF MAILING
I hereby certify that this correspondence is being deposited with the United
States Postal Service as First Class Mail in an envelope addressed to:
Assistant C~issioner for Patents, Washington, DC 20231 on

December~, 20~..,

Signed:

1ru Jt:L!£
Pat Tate

.-t

AMENDMENT!

Assistant Commissioner for Patents
Washington, DC 20231
Dear Sir:
This is in response to the Office Action mailed July 30, 2002. The following
amendments and remarks are respectfully submitted.

01/07/2003 AOSMAN1 00000071 09528803

02 FC:1252

400.00 OP

Attorney Docket No. INTIP869C2

1

IL DEFTS0006089

I

__

IN THE CLAIMS

Please amend the claims as follows:

~---------------~----------------------------------------~---------68.

(Am ded) A method for engaging the peripheral attention of a person in the

icinity of a display d vice, comprising the steps of:
provi 'ng one or more sets of content data to the display device or to a content
display system ssociated with the display device;
providing t the display device or to the content display system a set of
instructions for ena ing the display device to selectively display, in an unobtrusive
manner that does not .stract a user of the display device or the apparatus associated
with the display device om a primary interaction with the display device or
apparatus, an image or im ges generated from a set of content data; and
auditing the display

sets of content data by the display device;

wherein the one or mor sets of content data are selected from a plurality of
sets of content data, each set bei

provided by an associated content provider, and

wherein for each set the respective ontent provider may provide scheduling
instructions tailored to the set of con ent data to control the duration, sequencing,
andlor timing.-?fthe .~isplay of the set f content data.
70.

(Amen ed) A computer readable medium encoded with one or more computer

rograms for enabling e gagement of the peripheral attention of a person in the vicinity of a

providing one or more sets of content data to the display device or
to a content display ystem associated with the display device;
instructions for pro iding to the display device andlor to the content display
system a set ofinstructio s for enabling the display device to selectively display, in
an unobtrusive manner tha does not distract a user of the display device or the
apparatus associated with the isplay device from a primary interaction with the

Attorney Docket No. INTI P869C2

2

IL DEFTS0006090

display device or app ratus, an image or images generated from a set of content data~
and
instructions for auditi

the display of sets of content data by the display device;

wherein the one or more ets of content data are selected from a plurality of sets
of content data, each set being rovided by an associated content provider, and
wherein for each set the respecti e content provider may provide scheduling
instructions tailored to the set of c

tent data to control the duration, sequencing,

and/or timing of the display of the se of content data.
72.

(

ended) A computer readable medium encoded with one or more computer

frograruJj lor enab 'ng engagement of the peripheral attention of a person in the vicinity of a
"\f-. display device, com .sing:

~;;;

instruct! ns for acquiring a set of content data from a content providing system;
instruction for detecting an idle period of predetermined duration; and
instructions

r selectively displaying on the display device, after detection of the

idle period and in an
device or an apparatus

obtrusive manner that does not distract a user of the display
sociated with the display device from a primary interaction with

the display device or app atus, an image or images generated from the set of content
data;
wherein the set of con nt data is selected from a plurality of sets of content data,
each set being provided by an a sociated content provider, and wherein for each set the
respective content provider may

ovide scheduling instructions,tailored to the set of

content data to control the duration, sequencing, and/or timing of the display of the set of
content data .
.

~

74.

(Amende

A system for engaging the peripheral attention of a person in the

i.".1I' '"

'v"v'cinity of a display device
data acquisitio apparatus that enables acquisition of a set of content data;

Attorney Docket No. INTIP869C2

3

IL DEFTS0006091

display a paratus that effects selective display on the display device, in an
unobtrusive mann r that does not distract a user of the display device or an apparatus
associated with the display device from a primary interaction with the display device or
apparatus, of an ima e or images generated from the set of content data;
user input app atus that enables selection by a user of one or more control
options during the sele ive display ofthe image or images generated form the set of
content data; and
a system control d ice that controls aspects of the operation of the system in
accordance with a selected
wherein the set of con nt data is selected from a plurality of sets of content data,
each set being provided by an a sociated content provider, and wherein for each set the
respective content provider may rovide scheduling instructions tailored to the set of
content data to control the duratio

sequencing, andlor timing ofthe display of the set of

content data.
----------,~---------------------------------------.-."" ..

~
~1Jto'l

~

77.

(Amended) A method for engaging the peripheral attention of a person in the

icinity ofa dis lay device, comprising the steps of:
ac

iring a set of content data from a content providing system;

select yely displaying on the display device, in an unobtrusive manner that does
not distract au er ofthe display device or an apparatus associated with the display device
from a primary i teraction with the display device. or apparatus, an image or images
generated from th set of content data;
enabling sele tion by a user of one or more control options during the selective
display of the image 0 images generated from the set of content data; and
controlling aspec of the operation of the system in accordance with a selected
control option;
wherein the set of con ent data is selected from a plurality of sets of content data,
each set being provided by an a sociated content provider, and wherein for each set the

Attorney Docket No. INTI P869C2

4

IL DEFTS0006092

,

.

respective content provi er may provide scheduling instructions tailored to the set of
uration, sequencing, and/or timing of the display of the set of
content data.

~
1:::>

80.

ended) A computer readable medium encoded with one or more computer

rograms for ena ing engagement of the peripheral attention of a person in the vicinity of a

'\)1 display device, com rising:
instruc ·ons for acquiring a set of content data from a content providing system;
instructio s for selectively displaying on the display device, in an unobtrusive
manner that does n t distract a user of the display device or an apparatus associated with
the display device

m a primary interaction with the display device or apparatus, an

image or images gen ated from the set of content data;
instructions for nabling selection by a user of one or more control options during
the selective display oft

image or images generated from the set of content data; and

instructions for con olling aspects of the operation of the system in accordance
with a selected control optio .
wherein the set of conte t data is selected from a plurality of sets of content data,
each set being provided by an as ciated content provider, and wherein for each set the
respective content provider may p vide scheduling instructions tailored to the set of
content data to control the duration, equencing, and/or timing of the display of the set of
content data.

~

_ _ _ _ _ _ _ _ _ _----lL-_ _ _ _ _ _- - - - - - -

Attorney Docket No. INTl P869C2

5

IL DEFTS0006093

, \
\

REMARKS
Claims 68, 70, 72, 74, 77, and 80 have been amended to clarify the subject matter
regarded as the invention. Claims 68-82 remain pending.
The Examiner has rejected claims 68-82 on non-statutory double patenting grounds, as
well as under 35 US.c. § 112, first paragraph, and 35 US.c. §102(e), based on Gayraud and/or
Rakavy, as applicable.
The terminal disclaimer filed concurrently herewith is believed to overcome the nonstatutory double patenting rejection.
The claims have been amended to remove the "and/or" formulation on which the
rejections under 35 US.C. §112, first paragraph were based. As such, the rejection of the claims
under 35 U.S.c. § 112, first paragraph is believed to have been overcome.
The rejection of the claims under 35 U.S.C. § 102(e) is respectfully traversed. With
respect to claim 68, Gayraud teaches providing in a window on the periphery ofthe user area of
a display textual "hints" of the function associated with toolbar and other icons displayed on the
display. Gayraud at 3:20-4:5 & Figures 3A-D and associated text. Rakavy teaches transmitting
and displaying advertising content by employing a local agent to download and display
advertisements, with the content being determined by user-indicated preferences and
configuration information. Rakavy at 2:60-3:63,5:30-6:30,9:15-10:41. Claim 68 has been
amended to recite "wherein the one or more sets of content data are selected from a plurality of
sets of content data, each set being provided by an associated content provider, and wherein for
each set the respective content provider may provide scheduling instructions tailored to the set of
content data to control the duration, sequencing, and/or timing of the display of the set of content

Attomey Docket No. INTI P869C2

6

IL DEFTS0006094

data". Neither Gayraud nor Rakavy teaches such tailored control by a content provider of the
duration, sequencing, andlor timing of the display of a set of content data. As such, claim 68 is
believed to be allowable.

Claim 69 depends from claim 68 and is believed to be allowable for the same reasons
described above.
Claim 70 has been amended similarly to claim 68 and is believed to be allowable for the
same reasons described above.
Claim 71 depends from claim 70 and is believed to be allowable for the same reasons
described above.
Claim 72 has been amended similarly to claim 68 and is believed to be allowable for the
same reasons described above.
Claim 73 depends from claim 72 and is believed to be allowable for the same reasons
described above.
Claim 74 has been amended similarly to claim 68 and is believed to be allowable for the
same reasons described above.
Claims 75-76 depend from claim 74 and are believed to be allowable for the same
reasons described above.
Claim 77 has been amended similarly to claim 68 and is believed to be allowable for the
same reasons described above.

Attorney Docket No. INTI P869C2

7

IL DEFTS0006095

Claims 78-79 depend from claim 77 and are believed to be allowable for the same
reasons described above.

Claim 80 has been amended similarly to claim 68 and is believea to be allowable for the
same reasons described above.

Claims 81-82 depend from claim 80 and are believed to be allowable for the same
reasons described above.

Attached hereto is a marked-up version ofthe changes made to the specification and
claims by the current amendment with additions underlined and deletions struck through. The
attached page is captioned "Version with markings to show changes made."
Reconsideration ofthe application and allowance of all claims are respectfully requested
based on the preceding remarks. If at any time the Examiner believes that an interview would be
helpful, please contact the undersigned.

Respectfully submitted,

William 1. James
Registration No. 40,661
V 650 903 3502
F 650903 3501

VAN PELT AND YI, LLP
4906 E1 Camino Real, Suite 205
Los Altos, CA 94022

Attorney Docket No. INTI P869C2

8

IL DEFTS0006096

VERSION WITH MARKINGS TO SHOW CHANGES MADE

AMENDMENTS TO THE CLAIMS
68.

(Amended) A method for engaging the peripheral attention of a person in the

vicinity of a display device, comprising the steps of:
providing one or more sets of content data to the display device [andl]or to a
content display system associated with the display device;
providing to the display device [andl]or to the content display system a set of
,
instructions for enabling the display device to selectively display, in an unobtrusive
manner that does not distract a user of the display device [andJ]or [an] the apparatus
associated with the display device from a primary interaction with the display device
[and/]or apparatus, an image or images generated from a set of content data; and
auditing the display of sets of content data by the display

device~

wherein the one or more sets of content data are selected from a plurality of
sets of content data, each set being provided by an associated content provider, and
wherein for each set the respective content provider mav provide scheduling
instructions tailored to the set of content data to control the duration, sequencing,
and/or timing of the display of the set of content data.
70.

(Amended) A computer readable medium encoded with one or more computer

programs for enabling engagement of the peripheral attention of a person in the vicinity of a
display device, comprising:
instructions for providing one or more sets of content data to the display device
[and/]or to a content display system associated with the display device;
instructions for providing to the display device and/or to the content display
system a set of instructions for enabling the display device to selectively display, in

Attorney Docket No. INTI P869C2

9

IL DEFTS0006097

an unobtrusive manner that does not distract a user of the display device [and/]or [an]
the apparatus associated with the display device from a primary interaction with the
display device [and/]or apparatus, an image or images generated from a set of content
data; and
instructions for auditing the display of sets of content data by the display

device~

wherein the one or more sets of content data are selected from a plurality of sets
of content data. each set being provided by an associated content provider, and
wherein for each set the respective content provider may provide scheduling
instructions tailored to the set of content data to control the duration, sequencing,
and/or timing of the display of the set of content data.
72.

(Amended) A computer readable medium encoded with one or more computer

programs for enabling engagement of the peripheral attention of a person in the vicinity of a
display device, comprising:
instructions for acquiring a set of content data from a content providing system;
instructions for detecting an idle period of predetennined duration; and
instructions for selectively displaying on the display device, after detection of the
idle period and in an unobtrusive manner that does not distract a user of the display
device [and/]or an apparatus associated with the display device from a primary
interaction with the display device [andl]or apparatus, an image or images generated from
the set of content data~
wherein the set of content data is selected from a plurality of sets of content data,
each set being provided by an associated content provider, and wherein for each set the
respective content provider may provide scheduling instructions tailored to the set of
content data to control the duration, sequencing, andlor timing of the display ofthe set of
content data.
74.

(Amended) A system for engaging the peripheral attention of a person in the

vicinity of a display device, comprising:

Attorney Docket No. INTI P869C2

10

IL DEFTS0006098

data acquisition apparatus that enables acquisition of a set of content data;
display apparatus that effects selective display on the display device, in an
unobtrusive manner that does not distract a user ofthe display device rand/lor an
apparatus associated with the display device from a primary interaction with the display
device [and/]or apparatus, of an image or images generated from the set of content data;
user input apparatus that enables selection by a user of one or more control
options during the selective display ofthe image or images generated form the set of
content data; and
a system control device that controls aspects ofthe operation of the system in
accordance with a selected control option~
wherein the set of content data is selected from a plurality of sets of content data,
each set being provided by an associated content provider, and wherein for each set the
respective content provider may provide scheduling instructions tailored to the set of
content data to control the duration, sequencing, and/or timing of the display of the set of
content data.
77.

(Amended) A method for engaging the peripheral attention of a person in the

vicinity of a display device, comprising the steps of:
acquiring a set of content data from a content providing system;
selectively displaying on the display device, in an unobtrusive manner that does
not distract a user ofthe display device rand/lor an apparatus associated with the display
device from a primary interaction with the display device [and/]or apparatus, an image or
images generated from the set of content data;
enabling selection by a user of one or more control options during the selective
display of the image or images generated from the set of content data; and
controlling aspects of the operation ofthe system in accordance with a selected
control option~

Attorney Docket No. INTlP869C2

11

IL DEFTS0006099

wherein the set of content data is selected from a plurality of sets of content data,
each set being provided by an associated content provider, and wherein for each set the
respective content provider may provide scheduling instructions tailored to the set of
content data to- control the duration, sequencing, and/or timing ofthe display of the set of
content data.
80.

(Amended) A computer readable medium encoded with one or more computer

programs for enabling engagement of the peripheral attention of a person in the vicinity of a
display device, comprising:
instructions for acquiring a set of content data from a content providing system;
instructions for selectively displaying on the display device, in an unobtrusive
manner that does not distract a user of the display device [and/Jor an apparatus associated
with the display device from a primary interaction with the display device [and/Jor
apparatus, an image or images generated from the set of content data;
instructions for enabling selection by a user of one or more control options during
the selective display of the image or images generated from the set of content data; and
instructions for controlling aspects of the operation ofthe system in accordance
with a selected control

option~

wherein the set of content data is selected from a plurality of sets of content data.
each set being provided by an associated content provider, and wherein for each set the
respective content provider may provide scheduling instructions tailored to the set of
content data to control the duration, sequencing, and/or timing of the display of the set of
content data.

Attomey Docket No. INTI P869C2

12

IL DEFTS0006100

UNITED STATES PATENT AND lRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United. Sttlte:tl'·l~l:ltent .tlnd '1'rl:ld~m./:Irk O(fil:e

.Athk~If::l: CO~.fSSIONER OF PATENTS AND TR.WE.\-fARKS
WashiLaton, D.C. :,!O~l
WV.:W.l1flpU').gOV

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/528,803

0312012000

Paul A. Freiberger

IR-003-C2

6272

21912

7590

0211412003

RITTER VAN PELT & YI, L.L.P.
4906 EL CAMINO REAL
SUITE 205
LOS ALTOS, CA 94022

EXAMINER

BRIER, JEFFERY A
ART UNIT

PAPER NUMBER

2672

DATE MAILED: 02114/2003

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

PTO-90C (Rev. 07-01)

~\
IL DEFTS0006103

Application No.

09/528,803

FREIBERGER ET AL.

Examiner

Art Unit

Jeffery A. Brier

Office Action Summary

Applicant(s)

2672

I

-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --

Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE
THE MAILING DATE OF THIS COMMUNICATION.

1. MONTH(S) FROM

Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, maya reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.
If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.
If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.s.C. § 133)
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status
1)[8]
2a)[8]

Responsive to communication(s) filed on 06 Januarv 2003 .
This action is FINAL.

2b)0 This action is non-final.

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 Quayle, 1935 CD. 11,453 O.G, 213.
Disposition of Claims
3)0

4)[8] Claim(s) 68-82 is/are pending in the application.
4a) Of the above claim(s) _ _ is/are withdrawn from consideration.
5)0 Claim(s) _ _ is/are allowed.
6)[8] Claim(s) 68-82 is/are rejected.
7)0 Claim(s) _ _ is/are objected to,
8)0 Claim(s) _ _ are subject to restriction and/or election requirement.
Application Papers
9)0 The specification is objected to by the Examiner.
10)0 The drawing(s) filed on _ _ is/are: a)D accepted or b)O objected to by the Examiner.
Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
11)0 The proposed drawing correction filed on _ _ is: a)O approved b)O disapproved by the Examiner.
If approved, corrected drawings are required in reply to this Office action.
12)0 The oath or declaration is objected to by the Examiner.

Priority under 35 U.S.C. §§ 119 and 120
13)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f),
a)O All b)O Some * c)O None of:
1.0 Certified copies of the priority documents have been received,
2.0 Certified copies of the priority documents have been received in Application No. _ _ .
3.0 Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a».
* See the attached detailed Office action for a list of the certified copies not received.
14)0 Acknowledgment is made of a claim for domestic priority under 35 U,S.C. § 119(e) (to a provisional application).
a) 0 The translation of the foreign language provisional application has been received,
15)0 Acknowledgment is made of a claim for domestic priority under
U.S.C. §§ 120 and/or 121.

y5

Attachment(s)
1) [8] Notice of References Cited (PTO-892)
2) 0 Notice of Draftsperson's Patent Drawing Review (PTO-948)
3) 0 lilformation Disdosure Statement(s) (PTO-1449) Paper No(s) _ _ .

4) 0
5) 0
6) 0

Interview Summary (PT0-413) Paper No(s). _ _ .
Notice of Informal Patent Application (PTO-152)
Other:

U.S. Patent and Trademark Office

PTO-326 (Rev, 04-01)

Office Action Summary

Part of Paper No. 13

IL DEFTS0006104

Application/Control Number: 09/528,803

Page 2

Art Unit: 2672
DETAILED ACTION
Response to Amendment
1.

The amendment filed on 01/06/03 has been entered. This amendment amended

independent claims 68,70,72,74, 77 and 80. The terminal disclaimer filed on 01/06/03
has been reviewed and is deemed to be proper, thus, the obvious type double patenting
rejection has been overcome by the filing of a proper terminal disclaimer. The
amendment to the independent claims overcomes the 102 (e) rejections and overcomes
the 112 first paragraph rejection except for claim 70 since applicant failed to amend
claim 70 at line 6 similar to the other independent claims (and/or remains).
2.

The amendment filed OS/20/02 is objected to under 35 U.S.C. 132 because it

introduces new matter into the disclosure. 35 U.S.C. 132 states that no amendment
shall introduce new matter into the disclosure of the invention. The added material
which is not supported by the original disclosure is as follows: on page 2 of that
amendment applicant amended page 1 of the specification with "which co-pending
application is incorporated by reference for all purposes". This statement was not in the
application as filed on 03/20/00, thus, it is new matter since any matter that was in the

.

co-pending application and not in this application at the time of filing this application is
matter that was not in this application at the time of filing this application.
Applicant is required to cancel the new matter in the reply to this Office Action.

IL DEFTS0006105

Application/Control Number: 09/528,803

Page 3

Art Unit: 2672
Claim Rejections - 35 USC § 112

3.

The following is a quotation of the first paragraph of 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the
art to which it pertains, or with which it is most nearly connected, to make and use the same and shall
set forth the best mode contemplated by the inventor of carrying out his invention.

4.

Claims 70 and 71 are rejected under 35 U.S.C. 112, first paragraph, as

containing subject matter which was not described in the specification in such a way as
to reasonably convey to one skilled in the relevant art that the inventor(s), at the time
the application was filed, had possession of the claimed invention for the reasons given
in paragraph 4 of paper no. 10. Applicant failed to amend claim 70 at line 6 similar to
the other independent claims (and/or remains).
5.

The following is a quotation of the second paragraph of 35 U.S.C. 112:
The specification shall conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.

6.

Claims 68-82 are rejected under 35 U.S.C. 112, second paragraph, as being

indefinite for failing to particularly point out and distinctly claim the subject matter which
applicant regards as the invention.
Claim 68:
At line 7 "the apparatus" lacks antecedent basis in the claim (the was added by
applicant in the 01/06/03 amendment). At line 15 "and/or" is indefinite because "the
timing" arid "the duration" are the same as well as "the timing" and "the sequencing".
See applicants' specification at page 34 line 1 to page 35 line 31. Thus, controlling the
duration or timing does not clearly claim applicants system since duration and timing are
the same, thus, alternatively claiming one of them is still claiming the same thing.

IL DEFTS0006106

Page 4

ApplicationlControl Number: 09/528,803
Art Unit: 2672

Similarly controlling the timing or the sequencing does not clearly claim applicants
system since timing and sequencing are the same.

At lines 13-15 "the respective

content provider may provide scheduling instructions tailored to the set of content data
to control the duration, sequencing, andlor timing of the display of the set of content
data" is indefinite because it is not clear if these scheduling instructions are controlling
the display of the images generated from the set of content data at lines 6-9 since lines
13-15 are displaying the content data and not the images generated from the content
data.
Claim 70:
At lines 8-9 "the apparatus" lacks antecedent basis in the claim (the was added
by applicant in the 01/06/03 amendment). At line 17 "and/or" is indefinite for the same
reasons given for claim 68. At lines 13-15 "the respective content provider may provide
scheduling instructions tailored to the set of content data to control the duration,
sequencing, and/or timing of the display of the set of content data" is indefinite for the
reasons given for claim 68.
Claim 72:
At line 14 "and/or" is indefinite for the same reasons given for claim 68. At lines
13-15 "the respective content provider may provide scheduling instructions tailored to
the set of content data to control the duration, sequencing, and/or timing of the display
of the set of content data" is indefinite for the reasons given for claim 68.
Claim 74;

IL DEFTS0006107

Application/Control Number: 09/528,803

Page 5

Art Unit: 2672
At line 16 "and/or" is indefinite for the same reasons given for claim 68. At lines
15-17 "the respective content provider may provide scheduling instructions tailored to
the set of content data to control the duration, sequencing, and/or timing of the display
of the set of content data" is indefinite for the reasons given for claim 68.
Claim 77:
At line 15 "and/or" is indefinite for the same reasons given for claim 68. At lines
14-16 "the respective content provider may provide scheduling instructions tailored to
the set of content data to control the duration, sequencing, and/or timing of the display
of the set of content data" is indefinite for the reasons given for claim 68.
Claim 80:
At line 16 "and/or" is indefinite for the same reasons given for claim 68. At lines
15-17 "the respective content provider may provide scheduling instructions tailored to
the set of content data to control the duration, sequencing, and/or timing of the display
of the set of content data" is indefinite for the reasons given for claim 68.

Claim 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 Office action:
A person shall be entitled to a patent unless (e) the invention was described in (1) an application for patent, published under section 122(b), by
another filed in the United States before the invention by the applicant for patent or (2) a patent
granted on an application for patent by another filed in the United States before the invention by the
applicant for patent, except that an international application filed under the treaty defined in section
351 (a) shall have the effects for purposes of this subsection of an application filed in the United Stales
only if the international application designated the United States and was published under Article 21(2)
of such treaty in the English language.

IL DEFTS0006108

Application/Control Number: 09/528,803

Page 6

Art Unit: 2672
Claims 68,70,72,74,76,77,79,80 and 82 are rejected under 35 U.S.C. 102(e)
as being anticipated by Farber et aI., U.S. Patent No. 5,819,284. Farber describes a
system that displays information from content providing sources while the user is not
performing a primary interaction with the display device or an apparatus associated with
the display device.
Claim 68:
Farber teaches providing a set of content data from each of several sources,
traffic, weather, financial, and other, figure 2, to a display device or content providing
system, step 323. The images displayed in step 323 are during the screen saver mode,
thus, the images do not distract the user from a primary interaction with the display
device or associated apparatus. Farber at column 4 lines 8-11 teaches "the respective
content provider may provide scheduling instructions tailored to the set of content data
to control the duration, sequencing, and/or timing of the display of the set of content
data" since the providing may send information (new information is an instruction to
display new information) at the provider's control to the client, thus controlling the
duration, sequencing, and timing of the images displayed and since the claim does not
claim the particulars of how the claimed system responds to the scheduling instructions
to perform the claimed function of controlling the duration, sequencing, and/or timing of
the display of the set of content data.
Claim 70:
This claim is similar to claim 68 with the exception that it is a computer readable
medium claim and it claims at line 12 instructions for auditing the display of sets of

IL DEFTS0006109

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Page 7

Art Unit: 2672
content data by the display device. For the computer readable medium difference note
Farber is a computer system and note Farber's claim 11, thus, Farber teaches this
aspect of claim 70. As for the instructions for auditing aspect of the claim note that in
order to float the images 401-406 illustrated in figure 4 and described at column 6 lines
40-63 the system needs to keep track of the images, thus, an auditing is performed
commensurate is scope with the broadly claimed instructions for auditing.
Claim 72:
This claim is broader than claim 68 since it does not claim the auditing step. Like
claim 70 this claim is a computer readable medium claim. For the computer readable
medium difference note Farber is a computer system and note Farber's claim 11, thus,
Farber teaches this aspect of claim 72.
Claim 74:
This claim is similar to claim 68 with the exception that it is a system claim and
since it claims selection by a user of one or more control options. For the system
difference note Farber is a computer system. As for the selection by a user of one or
more control options note the claim does not claim when the user selects the options, it

.
just claims selection of one or more control options during the selective display of the
image or images generated from the set of content data. In figure 2 Farber shows a
user profile database which is formed by the user, see column 4 lines 42-62. Thus the
database is a user input apparatus that enables selection of one or more control
options.

IL DEFTS0006110

Application/Control Number: 09/528,803

Page 8

Art Unit: 2672
Claim 76:
See column 1 lines 35-40 of Farber. Thus, Farber teaches a link control option
that enables the user to establish a link with an information location.
Claims 77 and 80:
These claims claim the same functional limitations that claim 74 claims. The
difference being these claims are a method claim (claim 77) and a computer readable
medium claim (claim 80). Farber clearly teaches the claimed method and the claimed
computer readable medium.
Claims 79 and 82;
These claims claim the same functional limitations that claim 76 claims. The
difference being these claims are a method claim (claim 79) and a computer readable
medium claim (claim 82). Farber clearly teaches the claimed method and the claimed
computer readable medium.

Claim Rejections - 35 USC § 103

8.

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.

9.

Claims 69, 71,73,75,78 and 81 are rejected under 35 U.S.C. 103(a) as being

unpatentable over Farber et aI., U.S. Patent No. 5,819,284. Claim 69 adds to claim 68
the limitation "wherein the display device comprises a television". Farber discusses at

IL DEFTS0006111

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Page 9

Art Unit: 2672
column 1 lines 10-20 various display devices but does not explicitly mention a
television. Televisions were well know when the invention was made, the examiner
takes official notice of this fact, to be one of the many types of display devices that may
be used as a computer monitor. Thus, it would have been obvious to one of ordinary
skill in the art when the invention was made to use a television as the display device in
Farber since it is readily available, thus reducing cost, and it provides the same function
as Farber's display. Claims 71,73,75,78 and 81 all add the limitation of a television as
the display device to their parent claims. These claims would have been obvious for the
same reasons given for claim 68.

Response to Arguments
10.

Applicant's arguments with respect to claims 68-82 have been considered but are

moot in view of the new ground(s) of rejection.

11.

Applicant's amendment necessitated the new ground(s) of rejection presented in

this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP

§ 706.07(a). Applicant is reminded of the extension of time 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 of this 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

IL DEFTS0006112

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ApplicationlControl Number: 09/528,803
Art Unit: 2672

shortened statutory period will expire on the date the advisory action is mailed, and any
extension fee pursuant to 37 CFR 1.136(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 date of this final action.

12.

Any inquiry concerning this communication or earlier communications from

the examiner should be directed to Jeffery A. Brier whose telephone number is (703)
305-4723. The examiner can normally be reached on M-F from 6:30 to 3:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Michael Razavi, can be reached at [phone]).

Any response to this action should be mailed to:
Commissioner of Patents and Trademarks
Washington, D.C. 20231

or faxed to:
[phone] (for Technology Center 2600 only)
Hand-delivered responses should be brought to Crystal Park II, 2121 Crystal
Drive, Arlington, VA, Sixth Floor (Receptionist).
Any inquiry of a general nature or relating to the status of this application or
proceeding should be directed to the Technology Center 2600 Customer Service Office
whose telephone number is [phone].

;.6tJ,

IJ~

Jeffery A Brier
Primary Examiner
Art Unit 2672

IL DEFTS0006113

/
jl
UNITED STATES PATENT AND TRADEMARK OFF1CE
UNITED STATES DEPARTMENT OF COMMERCE

United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS

P.O. Box 1450
Alexandria, Virginia 22313·14.50

www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMAnON NO.

09/528,803

03120/2000

Paul A. Freiberger

IR-003-C2

6272

21912

7590

0612512003

VAN PELT & YI LLP
10050 N. FOOTHILL BLVD #200
CUPERTINO, CA 95014

EXAMINER

BRIER, JEFFERY A
ART UNIT

PAPER NUMBER

1

..

I?-

2672

DATE MAILED: 06/25/2003

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

PTO-90C (Rev. 07-01)

IL DEFTS0006274

Application No.

Applicant(s)

09/528,803

FREIBERGER ET AL.

Examiner

Art Unit

Office Action Summary

I

Jeffery A. Brier

2672
-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE.J. MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.
Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, maya reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.
If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.
If NO period for reply is specified above, the maximum statutory period will apply and wilt expire SIX (6) MONTHS from the mailing date of this communication.
- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1. 704(b).

Status
1)[gJ
2a)0

Responsive to communication(s) filed on 16 Mav2003.
This action is FINAL.

2b)[gJ This action is non-final.

3)0

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 Quayle, 1935 C.D. 11,453 O.G. 213.
Disposition of Claims
4)[gJ Claim(s) 68-82 is/are pending in the application.
4a) Of the above claim(s) _ _ is/are withdrawn from consideration.
5)0 Claim(s) _ _ is/are allowed.
6)[gJ Claim(s) 68-82 is/are rejected.
7)0 Claim(s) _ _ is/are objected to.
8)0 Claim(s) _ _ are subject to restriction and/or election requirement.
Application Papers
9)0 The specification is objected to by the Examiner.
10)0 The drawing(s) filed on _ _ is/are: a)O accepted or b)O objected to by the Examiner.
Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
11)0 The proposed drawing correction filed on _ _ is: a)O approved b)O disapproved by the Examiner.
If approved, corrected drawings are required in reply to this Office action.
12)0 The oath or declaration is objected to by the Examiner.
Priority under 35 U.S.C. §§ 119 and 120
13)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)O All b)O Some * c)O None of:
1.0 Certified copies of the priority documents have been received.
2,0 Certified copies of the priority documents have been received in Application No. _ _ .
3.0 Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a».
* See the attached detailed Office action for a list of the certified copies not received.
14)0 Acknowledgment is made of a claim for domestic priority under 35 U,S.C. § 119(e) (to a provisional application).
a) 0 The translation of the foreign language provisional application has been received.
15)0 Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
Attachment(s)

1) 0 Notice of References Cited (PTO-892)
2) 0 Notice of Draftsperson's Patent Drawing Review (PTO-948)
3) [gJ Information Disclosure Statement(s) (PTO-1449) Paper No(s) 14,

4) 0 Interview Summary (PT0-413) Paper No(s). __ .
5) 0 Notice of Informal Patent Application (PTO-152)
6) 0 Other:

u.S. Patent and Trademark Office

PTO-326 (Rev. 04-01)

Office Action

Summary

Part of Paper No. 17

IL DEFTS0006275

Application/Control Number: 09/528,803

Page 2

Art Unit: 2672
Continued Examination Under 37 CFR 1.114

1.

A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
application is eligible for continued examination under 37 CFR 1.114, and the fee set
forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
05/16/03 has been entered.

Response to Amendment

2.

The amendment filed on 05/16/03 has been entered. Claims 68,70,72,74,77,

and 80 have been amended. Claims 68-82 are pending.

Response to Arguments

3.

Applicants arguments concerning the rejections under 35 U.S.C. 102(e) and

103(a) filed on 05/16/03 have been considered but they are not persuasive.
Applicant arguments fail to consider that one embodiment of Farber teaches
having content providers continuously connected to the content display system (130
and 101) in order for the content provider to control when new content is displayed by
the content display system and has the personal computer or terminals or television
directly connected to server 130, column 4 lines 8-11 and 29-31. Thus, Farber teaches
the newly added feature of providing content data from the content providing system
directly to the content display system as well as teaching the newly added feature of the

IL DEFTS0006276

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Art Unit: 2672
content provider may provide scheduling instructions tailored to the set of content data
to control at least one of the duration, sequencing, and timing of the display of said
image or images generated from the set of content data since the new content data sent
from the server 130 or providers 150, 152, 154 indicates a timing, such as display new
information now or soon. Therefore the rejections based upon 35 U.S.C. 102(e) are
maintained.

Claim Rejections - 35 USC § 112
4.

The following is a quotation of the first paragraph of 35 U.S.C. 112:

The specification shall contain a written description of the invention, and of the manner and process of making
and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode
contemplated by the inventor of carrying out his invention.

5.

Claims 68-82 are rejected under 35 U.S.C. 112, first paragraph, as failing to

comply with the written description requirement. The claim(s} contains subject matter
which was not described in the specification in such a way as to reasonably convey to
one skilled in the relevant art that the inventor(s), at the time the application was filed,
had possession of the claimed invention. The newly claimed limitation "wherein each
associated content provider provides its content data directly
to the display device or to the content display system" was not

described in the originally filed specification. The content display system receives the
content data from the content provider through a network and the content display
system has the necessary instructions to receive content data and process the content
data for eventual supply to the display device. There is no description how a simple
display device will directly interface with the content provider and display the content

IL DEFTS0006277

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Application/Control Number: 09/528,803
Art Unit: 2672
data.

There is no description how the network will allow a direct connection between

the content provider 202 and the content display system 203.

A network is connected

of many parts and paths. Applicant did not describe how a single dedicated path will be
established to allow the content provider to provide its content data directly to the
display device or to the content display system.

Claim Rejections - 35 USC § 102
6.

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 Office action:
A person shall be entitled to a patent unless (e) the invention was described in (1) an application for patent, published under section 122(b), by
another filed in the United States before the invention by the applicant for patent or (2) a patent
granted on an application for patent by another filed in the United States before the invention by the
applicant for patent, except that an international application filed under the treaty defined in section
351 (a) shall have the effects for purposes of this subsection of an application filed in the United States
only if the international application designated the United States and was published under Article 21 (2)
of such treaty in the English language.

7.

Claims 68-82 are rejected under 35 U.S.C. 102(e) as being anticipated by Farber

et aI., U.S. Patent No. 5,819,284.
An analysis of the claims follows.
Claim 68:
Farber teaches a method for engaging the peripheral attention (during the screen saver

mode of operation) of a person in the vicinity of a display device (column 2 lines 41-56),
comprising the steps of:
providing one (depending upon the user's profile one set of content data may

be sent from server 130 to the user's personal computer or terminal) or more sets of

IL DEFTS0006278

Application/Control Number: 09/528,803

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Art Unit: 2672
content data to the display device or to a content display system (the terminals and

personal computer all have a display device and a content display system) associated
with the display device;
providing to the display device or to the content display system a set of
instructions (at column 4 lines 8-11 the provider sends new content data which is an

instruction to display new information) for enabling the display device to selectively
display, in an unobtrusive manner (screen saver mode does not obstruct normal use)
that does not distract a user of the display device or an apparatus associated with the
display device from a primary interaction with the display device or apparatus, an image
or images generated from a set of content data (see figure 4) ; and
auditing the display of sets of content data by the display device (In order
float images 401-406 illustrated in figure 4 and described at column 6 line 40-63 the
system needs to keep track of the images, thus, an auditing is performed
commensurate in scope with the broadly claimed auditing);
wherein the one or more sets of content data are selected from a plurality of
sets of content data (each type of content data such as weather has many different sets

.
of data), each set being provided by an associated content provider (when there is one
set of content data then the server 130 is the content provider and when there is more
than one set of content data each set is from 150, 152, 154), wherein each associated
content provider provides its content data directly to the display device or to the content
display system (when there is one set of content data then server 130 is directly
connected to a user's terminal or personal computer, column 4 lines 29-31, and when

IL DEFTS0006279

Application/Control Number: 09/528,803

Page 6

Art Unit: 2672
there is more one set of content data each provider 150, 152, 154 is directly connected
to a user's terminal or personal computer after reading column 4 lines 8-11 and 29-31),
and wherein for each set the respective content provider may provide scheduling
instructions tailored to the set of content data to control at least one of the duration,
sequencing, and timing (the new content data sent from the server 130 or providers
150, 152, 154 indicates a timing, such as display new information now or soon) of the
display of said image or images generated from the set of content data.

Claim 70:
This claim is a computer readable medium claim claiming the method of claim 68. This
claim is rejected for the reason given for claim 68 and since a computer program makes
Farber's system function and since computer programs are present in computer
readable medium, also see claim 11 of Farber.

Claim 72:
This claim is computer readable medium claim similar to claim 70 and this claim is
broader than claims 68 and 70 since auditing is not claimed. The twoJimitations
present in claim 72 and not present in claim 70 are at lines 4 and 5 of claim 72. Farber
teaches instructions for acquiring a set of content data from a content providing system
since the terminals and personal computer need to have instructions on how to acquire
new content data. Farber teaches instructions for detecting an idle period of
predetermined duration because to determine when to enter the screen saver mode the

IL DEFTS0006280

Application/Control Number: 09/528,803

Page 7

Art Unit: 2672
personal computer and terminals need to know when the user has not interacted with
the system for a predetermined period of time.

Claim 74:
This claim is similar to claim 68 with the exception that it is a system claim and since it
claims selection by a user of one or more control options. For the system difference
note Farber is a computer system. As for the selection by a user of one or more control
options note the claim does not claim when the user selects the option, it just claims
selection of one or more control option during the selective display of the image or
images generated from the set of content data. In figure 2 Farber shows a user profile
database which is formed by the user, see column 4 lines 42-62. Thus, the database is
a user input apparatus that enables selection of one or more control options.

Claim 76:
Farber teaches a link control option that enables the user to establish a link with an
information location, column 1 lines 35-40.

Claims 77 and 80;
These claims claim he same functional limitation that claim 74 claims. The difference.
being these claims are a method claim (claim 77) and a computer readable medium
claim (claim 80). Thus, claim 77 is rejected for the reasons given for claim 74 and claim
80 is rejected for the reasons given for claim 74 and since a computer program makes

IL DEFTS0006281

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Application/Control Number: 09/528,803
Art Unit: 2672
Farber's system function and since computer programs are present in computer
readable medium, also see claim 11 of Farber.

Claims 69, 71, 73, 75, 78 and 81:
Claim 69 add to claim 68 the limitation "wherein the display device comprises a
television". Claims 71, 73, 75, 78 and 81 all add the same limitation to their respective
parent claims. Farber discusses at column 2 line 52 using a television.

8.

Any inquiry concerning this communication or earlier communications from

the examiner should be directed to Jeffery A. Brier whose telephone number is (703)
305-4723. The examiner can normally be reached on M-F from 6:30 to 3:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Michael Razavi, can be reached at [phone]).
Any response to this action should be mailed to:

Commissioner of Patents and Trademarks
Washington, D.C. 20231
or faxed to:

(703) 872-.9314 (for Technology Center 2600 only)

Hand-delivered responses should be brought to Crystal Park II, 2121 Crystal
Drive, Arlington, VA, Sixth Floor (Receptionist).
Any inquiry of a general nature or relating to the status of this application or
proceeding should be directed to the Technology Center 2600 Customer Service Office
whose telephone number is [phone].
11. S~

Ih

Jeffery A Brier
Primary Examiner
Art Unit 2672

IL DEFTS0006282

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re the application of
FREIBERGER, et al

2672

Docket No.

INT1P869C2

09/528,803

Filed:

Jeffery A. Brier

Art Unit:

Serial No.

Examiner:

March 20, 2000
October 23, 2003

Title:
ATTENTION MANAGER
FOR OCCUPYING THE PERIPHERAL
ATTENTION OF A PERSON IN THE
VICINITY OF A DISPLAY DEVICE

RECEI\;n=o
OCT 3 1 Zo03

Technology Center 2600
CERTIFICATE OF MAILfNG
I hereby certify that this correspondence is being deposited with the United
States Postal Service as First Class Mail in an envelope addressed to: Mail
Stop
, Commissioner for Patents, P.O. Box 1450,
Alexandria, V~: on Octobe~, 2003
Signed:

'

i2A!",
Pat Tate

h.Le;

AMENDMENTD
Mail Stop
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1540
Dear Sir:
This is in response to the Office Action mailed June 25,2003. The following
amendments and remarks are respectfully submitted.

Application Serial No. 091528,803
Attorney Docket No. INTIP869C2

1

IL DEFTS0006285

IN THE CLAIMS

This listing of claims will replace all prior versions, and listings, of claims in the
application:
68.

(Currently amended) A method for engaging the peripheral attention of

a person in the vicinity of a display device, comprising the steps of:
providing one or more sets of content data to the display deviee

Of

to a content

display system associated with the display device and located entirely in the same
physical location as the display device;
providing to the display devise or to the content display system a set of
instructions for enabling the display devise content display system to selectively
display, in an unobtrusive manner that does not distract a user of the display device or
an apparatus associated with the display device from a primary interaction with the
display device or apparatus, an image or images generated from a set of content data;
and
auditing the display of sets of content data by the display deviee content
display system;
wherein the one or more sets of content data are selected from a plurality of
sets of content data, each set being provided by an associated content provider,
wherein each associated content provider is located in a different physical location
than at least one other content provider and each content provider provides its content
data direetly to the display devise or to the content display system independently of
each other content provider and without the content data being aggregated at a
common physical location remote from the content display system prior to being
provided to the content display system, and wherein for each set the respective
content provider may provide scheduling instructions tailored to the set of content

Application Serial No. 09/528,803
Attorney Docket No. INTIP869C2

2

IL DEFTS0006286

data to control at least one of the duration, sequencing, and timing of the display of
said image or images generated from the set of content data.
69.

(Original)

A method as in Claim 68, wherein the display device

comprises a television.
70.

(Currently amended) A computer readable medium encoded with one

or more computer programs for enabling engagement of the peripheral attention of a
person in the vicinity of a display device, comprising:
instructions for providing one or more sets of content data to the display deviee or
to a content display system associated with the display device and located entirely in
the same physical location as the display device;
instructions for providing to the display device or to the content display system a
set of instructions for enabling the display device content display system to
selectively display, in an unobtrusive manner that does not distract a user of the
display device or an apparatus associated with the display device from a primary
interaction with the display device or apparatus, an image or images generated from a
set of content data; and
instructions for aUditing the display of sets of content data by the display device
content display system;
wherein the one or more sets of content data are selected from a plurality of sets
of content data, each set being provided by an associated content provider, wherein
each associated content provider is located in a different physical location than at
least one other content provider and each content provider provides its content data
directly to the display device or to the content display system independently of each
other content provider and without the content data being aggregated at a common
physical location remote from the content display system prior to being provided to
the content display system, and wherein for each set the respective content provider
may provide scheduling instructions tailored to the set of content data to control at
least one of the duration, sequencing, and timing of the display of said image or
images generated from the set of content data.
Application Serial No. 09/528,803
Attorney Docket No. INTIP869C2

3

IL DEFTS0006287

71.

(Original)

A computer readable medium as in Claim 70, wherein the

one or more computer programs enable display of an image or images on a display
device comprising a television.
72;

(Currently amended) A computer readable medium encoded with one

or more computer programs for enabling engagement of the peripheral attention of a
person in the vicinity of a display device, comprising:
instructions for acquiring a set of content data from a content providing system;
instructions for detecting an idle period of predetermined duration; and
instructions for selectively displaying on the display device, after detection of the
idle period and in an unobtrusive manner that does not distract a user of the display
device or an apparatus associated with the display device from a primary interaction with
the display device or apparatus, an image or images generated from the set of content
data;
wherein the set of content data is selected from a plurality of sets of content data,
each set being provided by an associated content provider, wherein each associated
content provider is located in a different physical location than at least one other content
provider and each content provider provides its content data direst!y to the display devise
or to the to a content display system associated with the and located entirely in the same
physical location as the display device independently of each other content provider and
without the content data being aggregated at a common physical location remote from the
content display system prior to being provided to the content display system, and wherein
for each set the respective content provider may provide scheduling instructions tailored
to the set of content data to control at least one of the duration, sequencing, and timing of
the display of said image or images generated from the set of content data.
73.

(Original)

A computer readable medium as in Claim 72, wherein the one or

more computer programs enable display of an image or images on a display device
comprising a television

Application Serial No. 09/528,803
Attorney Docket No. INTIP869C2

4

IL DEFTS0006288

74.

(Currently amended) A content display system for engaging the peripheral

attention of a person in the vicinity of a display device located in the same physical location as
the content display system, comprising:
data acquisition apparatus that enables acquisition of a set of content data;
display apparatus that effects selective display on the display device, in an
unobtrusive manner that does not distract a user of the display device or an apparatus
associated with the display device from a primary interaction with the display device or
apparatus, of an image or images generated from the set of content data;
user input apparatus that enables selection by a user of one or more control
options during the selective display ofthe image or images generated form the set of
content data; and
a system control device that controls aspects of the operation of the system in
accordance with a selected control option;
wherein the set of content data is selected from a plurality of sets of content data,
each set being provided by an associated content provider, wherein each associated
content provider is located in a different physical location than at least one other content
provider and each content provider provides its content data aireetly to the aisi31ay aeviee
erto the content display system independently of each other content provider and without
the content data being aggregated at a common physical location remote from the content
display system prior to being provided to the content display system, and wherein for
each set the respective content provider may provide scheduling instructions tailored to
the set of content data to control at least one ofthe duration, sequencing, and timing of
the display of said image or images generated from the set of content data.
75.

(Original)

A system as in Claim 74, wherein the display device comprises a

television.
76.

(Original)

A system as in Claim 74, wherein:

a link control option enables the user to establish a link with an information
location; and
Application Serial No. 09/528,803
Attorney Docket No. INTI P869C2

5

IL DEFTS0006289

the system control device establishes the link with the information location in
response to selection of the link control option.
77.

(Currently amended) A method for engaging the peripheral attention of a person

in the vicinity of a display device, comprising the steps of:
acquiring a set of content data from a content providing system;
selectively displaying on the display device, in an unobtrusive manner that does
not distract a user of the display device or an apparatus associated with the display device
from a primary interaction with the display device or apparatus, an image or images
generated from the set of content data;
enabling selection by a user of one or more control options during the selective
display of the image or images generated from the set of content data; and
controlling aspects of the operation of the system in accordance with a selected
control option;
wherein the set of content data is selected from a plurality of sets of content data,
each set being provided by an associated content provider, wherein each associated
content provider is located in a different physical location than at least one other content
provider and each content provider provides its content data direetly to tHe display deviee
or to the to a content display system associated with the and located entirely in the same
physical location as the display device independently of each other content provider and
without the content data being aggregated at a common physical location remote from the
content display system prior to being provided to the content display system, and wherein
for each set the respective content provider may provide scheduling instructions tailored
to the set of content data to control at least one of the duration, sequencing, and timing of
the display of said image or images generated from the set of content data.
78.

(Original)

A method as in Claim 77, wherein the display device comprises a

television.
79.

(Original)

A method as in Claim 77, wherein a link control option enables the

user to establish a link with a information location, the step of controlling aspects of the
Application Serial No. 091528,803
INTIP869C2

Attorney Docket No.

6

IL DEFTS0006290

operation of the system further comprising the step of establishing the link with the information
location in response to selection of the link control option.
80.

(Currently amended) A computer readable medium encoded with one

or more computer programs for enabling engagement ofthe peripheral attention of a
person in the vicinity of a display device, comprising:
instructions for acquiring a set of content data from a content providing system;
instructions for selectively displaying on the display device, in an unobtrusive
manner that does not distract a user ofthe display device or an apparatus associated with
the display device from a primary interaction with the display device or apparatus, an
image or images generated from the set of content data;
instructions for enabling selection by a user of one or more control options during
the selective display of the image or images generated from the set of content data; and
instructions for controlling aspects of the operation of the system in accordance
with a selected control option;
wherein the set of content data is selected from a plurality of sets of content data,
each set being provided by an associated content provider, wherein each associated
content provider is located in a different physical location than at least one other content
provider and each content provider provides its content data direstly to the display devise
or to the to a content display system associated with the and located entirely in the same
physical location as the display device independently of each other content provider and
without the content data being aggregated at a common physical location remote from the
content display system prior to being provided to the content display system, and wherein
for each set the respective content provider may provide scheduling instructions tailored
to the set of content data to control at least one of the duration, sequencing, and timing of
the display of said image or images generated from the set of content data.
81.

(Original)

A computer readable medium as in Claim 80, wherein the

one or more computer programs enable display of an image or images on a display device
comprising a television.

Application Serial No. 091528,803
Attorney Docket No. INTlP869C2

7

IL DEFTS0006291

82.

(Original)

A computer readable medium as in Claim 80, wherein a

link control option enables the user to establish a link with an information location, the
instructions for controlling aspects of the operation of the system further comprising
instructions for establishing the link with the information location in response to selection
of the link control.
83.-102.

Application Serial No. 09/528,803
Attorney Docket No. INTIP869C2

(Canceled).

8

IL DEFTS0006292

REMARKS
Claims 68, 70, 72, 74, 77, and 80 have been amended to clarify the subject matter
regarded as the invention. Claims 68-82 remain pending.
The Examiner has rejected claims 68-82 under 35 U.S.c. §112(1) and §102(e) based on
Farber.
The amendments to the claims are believed to overcome the rejections under 35 U.S.C.
§112(l).
The rejection under 35 U.S.c. §102(e) is respectfully traversed. With respect to claim
68, the claim has been amended to recite that the display device and content display system are
in the same physical location and that each content provider system and that each content
provider provides its content data "independently of each other content provider and without the
content data being aggregated at a common physical location remote from the content display
system prior to being provided to the content display system." Farber teaches aggregating
content from multiple content providers 150-154 at a single service node 120 located remote
from the display devices 101 and connected to the display devices 101 via a network connection.
Farber col. 2, line 56 - col. 3, line 10 & Figure I. The Office Action suggests (pp. 5-6) that
Farber teaches sending data directly from the content providers 150-154 to the user computer
101, citing Farber col. 4 lines 8-11 and 29-31, but the cited portions of Farber merely describe
alternative ways to aggregate the content provided by providers 150-154 at the service node 120,
which as noted is remote from the display devices associated with personal computers 101. In
fact, Farber states clearly that such aggregation is "essential" to the teaching ofthe Farber patent,
col. 4, lines 26-29. See also Farber, col. 4, lines 15-19 (arrangement taught by Farber "insulates

Application Serial No. 091528,803
Attorney Docket No. INTIP869C2

9

IL DEFTS0006293

infonnation providers from direct connection to user"). In summary, claim 68 recites sending
content from providers to the content display system without first aggregating the content of
multiple providers at a common node, while Farber teaches that such aggregation is essential.
Therefore, claim 68 is believed to be allowable over Farber.
Claim 69 depends from claim 68 and is believed to be allowable for the same reasons
described above.
Similarly to claim 68, claim 70 recites that "each associated content provider is located in
a different physical location than at least one other content provider and each content provider
provides its content data to the content display system independently of each other content
provider and without the content data being aggregated at a common physical location remote
from the content display system prior to being provided to the content display system." As such,
claim 70 is believed to be allowable for the same reasons described above.
Claim 71 depends from claim 70 and is believed to be allowable for the same reasons
described above.
Similarly to claim 68, claim 72 recites that "each associated content provider is located in
a different physical location than at least one other content provider and each content provider
provides its content data to a content display system associated with the and located entirely in
the same physical location as the display device independently of each other content provider
and without the content data being aggregated at a common physical location remote from the
content display system prior to being provided to the content display system." As such, claim 72
is believed to be allowable for the same reasons described above.

Application Serial No. 09/528,803
INTIP869C2

Attorney Docket No.

10

IL DEFTS0006294

Claim 73 depends from claim 72 and is believed to be allowable for the same reasons
described above.
Similarly to claim 68, claim 74 recites that "each associated content provider is located in
a different physical location than at least one other content provider and each content provider
provides its content data to the content display system independently of each other content
provider and without the content data being aggregated at a common physical location remote
from the content display system prior to being provided to the content display system." As such,
claim 74 is believed to be allowable for the same reasons described above.
Claims 75 and 76 depend from claim 74 and are believed to be allowable for the same
reasons described above.
Similarly to claim 68, claim 77 recites that "each associated content provider is located in
a different physical location than at least one other content provider and each content provider
provides its content data to a content display system associated with the and located entirely in
the same physical location as the display device independently of each other content provider
and without the content data being aggregated at a common physical location remote from the
content display system prior to being provided to the content display system." As such, claim 77
is believed to be allowable for the sam<: reasons described above.
Claims 78 and 79 depend from claim 77 and are believed to be allowable for the same
reasons described above.
Similarly to claim 68, claim 80 recites that "each associated content provider is located in
a different physical location than at least one other content provider and each content provider
provides its content data to a content display system associated with the and located entirely in

Application Serial No. 091528,803
INTIP869C2

Attorney Docket No.

11

IL DEFTS0006295

the same physical location as the display device independently of each other content provider
and without the content data being aggregated at a common physical location remote from the
content display system prior to being provided to the content display system." As such, claim 80
is believed to be allowable for the same reasons described above.
Claims 81 and 82 depend from claim 80 and are believed to be allowable for the same
reasons described above.
Reconsideration of the application and allowance of all claims are respectfully requested
based on the preceding remarks. If at any time the Examiner believes that an interview would be
helpful, please contact the undersigned.

Respectfully submitted,

William J. James
Registration No. 40,661
V 408-973-2592
F 408-973-2595
V AN PELT AND YI, LLP
10050 N. Foothill Blvd., Suite 200
Cupertino, CA 95014

Application Serial No. 091528,803
INTIP869C2

Attorney Docket No.

12

IL DEFTS0006296

Application No.

09/528,803
Examiner

FREIBERGER ET AL.
Art Unit

Jeffery A. Brier

Notice of A 110 wability

Applicant(s)

2672

-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address-Ali claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application. If not included
herewith (or previously mailed), a Notice of Allowance (PTOl-85) or other appropriate communication will be mailed in due course. THIS
NOTICE OF ALLOWABILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
1.
2.
3.
4.

[gJ This communication is responsive to the amendment filed on
[gJ The allowed claim(s) islare 68-82 renumbered as 1-15.

0
0

11/17/03.

The drawings filed on _ _ are accepted by the Examiner.
Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a) 0 All
b) 0 Some' c) 0 None of the:
1. 0 Certified copies of the priority documents have been received.
2. 0 Certified copies of the priority documents have been received in Application No. _ _ .
3. 0 Copies of the certified copies of the priority documents have been received in this national stage application from the
International Bureau (PCT Rule 17.2(a)).
* Certified copies not received: _ _ .

5.

0

Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 119(e) (to a provisional application).
(a)

6.

0

0

The translation of the foreign language provisional application has been received.

Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 andlor 121.

Applicant has THREE MONTHS FROM THE "MAILING DATE" of this communication to file a reply complying with the requirements noted
below. Failure to timely comply will result in ABANDONMENT of this application. THIS THREE-MONTH PERIOD IS NOT EXTENDABLE
7. 0 A SUBSTITUTE OATH OR DECLARATION must be submitted. Note the attached EXAMINER'S AMENDMENT or NOTICE OF
INFORMAL PATENT APPLICATION (PTO-152) which gives reason(s) why the oath or declaration is deficient.
i
I

8.

[gJ CORRECTED DRAWINGS must be submitted.
(a) 0

including changes required by the Notice of Draftsperson's Patent Drawing Review ( PTO-948) attached
1) 0 hereto or 2) 0

(b) 0

to Paper No. __ .

including changes required by the proposed drawing correction filed _ _ , which has been approved by the Examiner.

(c) [;8] including changes required by the attached Examiner's Amendment I Comment or in the Office aclionof Paper No. _ _ .
Identifying indicia such as the application number (see 37 CFR 1.84(c» should be written on the drawings in the front (not the back) of
each sheet.

9.0 DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
attached Examiner'S comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
Attachment(s)
1 [;8]
3D
50
70

Notice of References Cited (PTO-892)
Notice of Draftperson's Patent Drawing Review (PTO-948)
Information Disclosure Statements (PTO-1449), Paper No. __ .
Examiner's Comment Regarding Requirement for Deposit
of Biological Material

20
40
60
8[;8]
90

Notice of Informal Patent Application (PTO-152)
Interview Summary (PTO-413), Paper No.__ .
Examiner's Amendment/Comment
Examiner's Statement of Reasons for Allowance
Other
Jeffery A. Brier
Primary Examiner
Art Unit: 2672

u.s. Patent and Trademark Office

PTO-37 (Rev. 04-03)

Notice of A1lowability

Part of Paper No. 21

IL DEFTS0006313

Application/Control Number: 09/528,803

Page 2

Art Unit: 2672
REASONS FOR ALLOWANCE

1.

The following is an examiner's statement of reasons for allowance:
Newly cited Knee et aI., U.S. Patent No. 5,589,892, teaches at column 45 line 60

to column 46 line 7 presenting to the user peripheral vision a data feed such as a sports
ticker which receives some of its information from different content providers form the
internet. This information is provided by aggregating it at a common physical location
prior to transmission to the user.
Newly cited Gifford, U.S. Patent No. 5,724,424, teaches at column 4 line 44 to
column 5 line 17 presenting at least one set of visual content data to a user on a dispiay
from a content provider among many content providers which are each at different
locations (merchants). This information engages the user's main attention rather than
the claimed peripheral attention .
. The prior art of record fails to teach or suggest engaging the peripheral attention
of a person in the vicinity of a display device by at least wherein each associated
content provider is located in a different physical location than at least one other content
provider and each content provider provides its content data to the content display

.

system independently of each other content provider and without the content data being
aggregated at a common physical location remote from the content display system prior
to being provided to the content display system.
Any comments considered necessary by applicant must be submitted no later
than the payment of the issue fee and, to avoid processing delays, should preferably

IL DEFTS0006314

Application/Control Number: 09/528,803

Page 3

Art Unit: 2672
accompany the issue fee. Such submissions should be clearly labeled "Comments on
Statement of Reasons for Allowance."
2.

The following changes to the drawings have been approved by the examiner and

agreed upon by applicant during a telephone interview held on 1/08/04 with William
James: the preliminary amendment proposed to change in figure 38 the descriptive
label for instruction 312, however, the proposed change is not entirely correct, see page
30 lines 10-11, instruction 312 will have a descriptive label of: content display system
scheduling instructions. In order to avoid abandonment of the application, applicant
must make these above agreed upon drawing changes.

3.

Any inquiry concerning this communication or earlier communications from

the examiner should be directed to Jeffery A. Brier whose telephone number is (703)
305-4723. The examiner can normally be reached on M-F from 6:30 to 3:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Michael Razavi, can be reached at [phone]).

Any response to this action should be mailed to:
Commissioner of Patents and Trademarks
Washington, D.C. 20231

or faxed to:
[phone] (for Technology Center 2600 only)

IL DEFTS0006315

ApplicationlControl Number: 09/528,803

Page 4

Art Unit: 2672
Hand-delivered responses should be brought to Crystal Park II, 2121 Crystal
Drive, Arlington, VA, Sixth Floor (Receptionist).

Any inquiry of a general nature or relating to the status of this application or
proceeding should be directed to the Technology Center 2600 Customer Service Office
whose telephone number is [phone].

~//3~
Jeffery A Brier
Primary Examiner
Art Unit 2672

IL DEFTS0006316

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT or COMMERCE
United States Patent and Trademark Office
COMMISSIONER fOR PATENTS

Add~ss:

P.O. Box 1450
Alexandria. Virginia 22313-1450
www.~splo.gov

APPLICATION NO.

FILING DATE

RRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

95/001,577

03/16/201 I

Paul A. FREIBERGER

2607.335REXI

1540

21912

7590

0511912011

VAN PELT, YI & JAMES LLP
l0050N. FOOTHILL BLVD #200
CUPERTINO, CA 95014

EXAMINER
HUGHES, DEANDRA M

ART UNIT

PAPER NUMBER

3992

MAIL DATE

DELIVERY MODE

05/19/2011

PAPER

Please find below and/or attached an Office communication concerning this ap'plication or proceeding.

The time period for reply, if any, is set in the attached communication.

PTOL-90A (Rev. 04/07)

IL DEFTS0008731

<I>

UNITED STATES PATENT AND TRADEMARK OFFICE
Commissioner for Patents
United States Patents and Trademark Office
P.O. Box 1450

Alexandria. VA 22313-1450
www.USpIO.gov

DO NOT USE IN PALM PRINTER

Date:

THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS

MAILED

STERNE, KESSLER, GOLDSTEIN & FOX PLLC
1100 NEW YORK AVENUE, NW
WASHINGTON, DC 20005

'MAY 192011
CENTRAL REEXAMINATION UNIT

Transmittal of Communication to Third Party Requester
Inter Partes Reexamination
REEXAMINATION CONTROL NO. : 95001577
PATENT NO. : 6778314
TECHNOLOGY CENTER: 3999
ART UNIT: 3992

Enclosed is a copy of the latest communication from the United States Patent and Trademark
Office in the above identified Reexamination proceeding. 37 CFR 1.903.
Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
communication, the third party requester of the inter partes reexamination may once file
written comments within a period of 30 days from the date of service of the patent owner's
response. This 3~-day time period is statutory (35 U.S.c. 314(b)(2)), and, as such, it cannot
be extended. See also 37 CFR 1.947.

If an ex parte reexamination has been merged with the inter partes reexamination, no
responsive submission by any ex parte third party requester is permitted.
All correspondence relating to this inter partes reexamination proceeding should be directed
to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end
of the communication enclosed with this transmittal.

PTOL-2070(Rev.07 -04)

IL DEFTS0008732

Control No.

Patent Under Reexamination

95/001,577

FREIBERGER ET AL.

Examiner

Art Unit

Deandra M. Hughes

Transmittal of Communication to
Third Party Requester
Inter Partes Reexamination

3992

-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --

Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
in the above-identified reexamination proceeding. 37 CFR 1.903.
Prior to the filing of a Notice of Appeal. each time the patent owner responds to this communication.
the third party requester of the inter partes reexamination may once file written comments within a
period of 30 days from the date of service of the patent owner's response. This 3~-day time period is
statutory (35 U.S.C. 314(b)(2)). and, as such. it cannot be extended. See also 37 CFR 1.947.
If an ex parte reexamination has been merged with the inter partes reexamination, no responsive
submission by any ex parte third party requester is permitted.
All correspondence relating to this inter partes reexamination proceeding should be directed to the
Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
communication enclosed with this transmittal.

U.S. Patent and Trademark Office
PTOL-2070 (5/04)

PaperNo.20110513-A

IL DEFTS0008733

Control No.

ORDER GRANTING/DENYING
REQUEST FOR INTER PARTES
REEXAMINA TION

Patent Under Reexamination

95/001,577

FREIBERGER ET AL.

Examiner

Art Unit

Deandra M. Hughes

3992'

-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address. --

The request for inter partes reexamination has been considered. Identification of the claims, the
references relied on, and the rationale supporting the determination are attached.

Attachment(s):

D PTO-892

~ PTO/S8/08

DOther: _ _

1. ~ The request for inter partes reexamination is GRANTED.
~ An Office action is attached with this order.

o An Office action will follow in due course.
2.

0

The request for inter partes reexamination is DENIED.

This decision is not appealable. 35 U.S.C. 312(c). Requester may seek review of a denial by petition
to the Director of the USPTO within ONE MONTH from the mailing date hereof. 37 CFR 1.927.
EXTENSIONS OF TIME ONLY UNDER 37 CFR 1.183. In due course, a refund under 37 CFR 1.26(c)
will be made to requester.

All correspondence relating to this inter partes reexamination proceeding should be directed to the
.~

Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this
Order.

u.s.

Patent and Trademark Office
PTOL-2063 (08/06)

Paper No. 20110513

IL DEFTS0008734

Control Number: 95/001,577

Page 2

Art Unit: 3992
ORDER GRANTING REQUEST FOR INTER PARTES REEXAMINATION
1.

Substantial new questions of patentability ("SNQ") affecting claims 1-15 of USP

6.178,314 (U'314 patent") have been proposed by the third party requester (U3PR") in
the inter partes reexamination request filed Mar. 16, 2011 ("Request").
References Cited Proceeding
2.

USP 5,748,190 to Kjorsvik filed Sep. 5,1995. ("Kjorsvik")

3.

USP 5,913,040 to Rakavy filed Aug. 22, 1995. (URakavy")

4.

Salm, Walter. "Buying a Real Computer Monitor". Popular Electronics. October
1984. pp. 102-103, 132, and 134. ("Salm")
Prosecution History

5.

The prosecution history of the application (09/528,803) which became the '314

patent is presented below.
- . On Mar. 20, 2000, claims 1-102 were presented for examination.
-

On May 20, 2002, applicant elected the invention of claims 68-82 in
response to a restriction requirement.

-

On Jul. 30, 2002, claims 68-82 were rejected.
Claims 68-71 and 74-82 were rejected as being anticipated by
Gayraud. (USP 5,436,637)
Claims 68-82 were rejected as being anticipated by Rakavy.

-

On Jan. 6, 2003, applicant amended independent claims 68,70, 72, 74,
77, and 80.

-

On Feb. 14,2003, claims 68-82 were finally rejected.
-

Claims 68,70,72,74,76-77,79-80, and 82 were rejected as being
anticipated by Farber.

-

Claims 69, 71, 73, 75, 78, and 81 were rejected as being obvious over
Farber.

IL DEFTS0008735

Control Number: 95/001,577

Page 3

Art Unit: 3992
On May 16, 2003, applicant filed an RCE with amendments to
independent claims 68,70,72,74,77, and 80.
On Jun. 25, 2003, claims 68-82 were rejected as being anticipated by
Farber.
On Nov. 17,2003, applicant amended independent claims 68,70,72,74,
77, and 80.
On Jan. 12,2004, claims 68-82 were allowed. As reasons for allowance,
the Examiner stated the following:
. The prior art of record fails to.teach or suggest engaging the peripheral attention
of a person in the vicinity of a display device by at least wherein each associated
content provider is located in a different physical location than at least one other content
provider and each content provider provides its content data to the content display
system independently of each other content provider and without the content data being
aggregated at a common physical location remote from the content display system prior
to being provided to the content display system.

6.

Based on the prosecution history of the application (09/528,803), the Examiner

considers a teaching as to the following to form a the basis of an SNQ as to the '314
patent:

A system or method for engaging the peripheral attention of a person in the
vicinity of a display device wherein
each associated content provider is located in a different physical location than at
least one other content provider and
each content provider provides its content data to the content display system
independently of each other content provider and
without the content data being aggregated at a common physical location remote
from the content display system prior to being provided to the content display
system.

IL DEFTS0008736

Control Number: 95/001,577

Page 4

Art Unit: 3992
Decision

7.

The Request indicates that 3PR considers:
(1)

Claims 1, 3, 5. 7,9-10,12-13, and 15 are anticipated by Kjorsvik.

(2)

Claims 2, 4, 6. 8, 11, and 14 are obvious over Kjorsvik in view of Salm.

(3)

Claims 1, 3, 5, 7. 9-10. 12-13. and 15 are anticipated by Rakavy.

(4)

Claims 2, 4. 6. 8. 11, and 14 are obvious over Rakavy in view of Salm.

(5)

Claims 1, 3. 5. 7.9-10.12-13. and 15 are obvious over Rakavy in view of
Kjorsvik.

KJORSVIK: Proposed SNQs (1)-(2)
8.

It is agreed that the consideration of Kjorsvik, alone or in combination, raises a

SNQ as to claims 1-15 of the '314 patent. Kjorsvik discloses:
" ... presentations may be obtained or provided to external systems and/or
other outside sources over external communication lines. This enables
the one .administration module for the system to obtain or provide
presentations directly from or to external sources, so as to eliminate the
need for composing them within the system." (col. 4:19-25)
Kjorsvik was not before the Examiner during the prosecution of the '314 patent
and there is a substantial likelihood that a reasonable examiner would consider this
teaching of Kjorsvik important in deciding whether claims 1-15 of the '314 patent are
patentable. Accordingly, Kjorsvik raises a SNQ as to claims 1-15, which question has
not been decided in a previous examination of the '.314 patent.
For these reasons, the claims will be reexamined over SNQs (1 )-(2).

IL DEFTS0008737

Control Number: 95/001,577

Page 5

Art Unit: 3992
RAKAVY: Proposed SNQs (3)-(5)
9.

It is agreed that the consideration of Rakavy, alone or in combination, raises a

SNQ as to claims 1-15 of the '314 patent.
Rakavy was before the Examiner during the prosecution of the '314 patent
(09/528,803) and claims 68-82 (now claims 1-15) were rejected as being anticipated by

Rakavy. Claims 68-82 were amended with the following limitation that removed the
rejections.
wherein the one or more sets of content data are selected from a plurality of
sets of content data, each set being provided by an associated content provider, and
wherein for each set the respective content provider may provide scheduling
instructions tailored to the set of content data to control the duration, sequencing,
and/or timing of the display of the set of content data.

3PR argues Rakavy is presented ina new light because Rakavy allegedly discloses
'-

this claim limitaiton at figure 5, col. 7:12-29, col. 10:66-11:30, and col. 12:19-40, which are
nd

portions of Rakavy not expressly discussed in the claim rejections. (Request. pg. 42, 2
~)

This argument, however, is not persuasive because these cited portions of do not

provide the teaching that forms the basis of an SNQ as to the '314 patent as set forth
above.
Nonetheless, 3PR addresses the claim limitation which forms the basis of an
SNQ in the Request at page 100, 151 box. It is agreed that the following disclosure of
Rakavy that has not been considered in the prosecution of 09/528,803 provides a
teaching which forms the basis of an SNQ as to the '314 patent.
"The Advertisement Feeder 250, is responsible for adding new
Advertisements 50 to the User Preference and Advertisement

IL DEFTS0008738

Control Number: 95/001,577

Page 6

Art Unit: 3992
Database 230. Advertisements 50 preferably are provided from the
Internet through the· Internet Feeder 270, however, the
Advertisements Feeder 250 is not dependent on the type of
advertisement source and may receive Advertisements 50 from
other sources, such as commercial on-line services, via other
feeder mechanisms and other types of polite agents, as shown by
references 271 and 272, respectively, in FIG. 4." (co1.l2:20-25)
There is a substantial likelihood that a reasonable examiner would consider
these teachings of Rakavy important in deciding whether claims 1-15 of the '314
patent are patentable. As such, Rakavy raises a SNQ as to claims 1-15, which
question has not been decided in a previous examination of the '314 patent.
For these reasons, the claims will be reexamined over SNQs (3)-(5).
Conclusion

10.

For the reasons set forth above, claims 1-15 of the '314 patent will be

reexamined.
11.

All correspondence relating to this ex parte reexamination proceeding should be

directed:
By Mail to:

Mail Stop Ex Parte Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450

By FAX to:

[phone]
Central Reexamination Unit

By hand:

Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314

Registered users of EFS-Web may alternatively submit such correspondence via

IL DEFTS0008739

Control Number: 95/001,577

Page 7

Art Unit: 3992
the electronic filing system EFS-Web, at:
https:llsportal.uspto.gov/authenticate/authenticateuserlocalepf.html.
EFS-Web offers the benefit of quick submission to the particular area of the
Office that needs to act on the correspondence. Also, EFS-Web submissions are "soft
scanned" (i.e., electronically uploaded) directly into the official file for the reexamination
proceeding, which offers parties the opportunity to review the content of their
submissions after the "soft scanning" process is complete.
Any inquiry concerning this communication or earlier communications from the
examiner, or as to the status of this proceeding, should be directed to the Central
Reexamination Unit at telephone number [phone].
Signed:

Conferees:

IDeandra M.Hughesl
Primary Examiner, AU3992
MARK J. REINHART
CRU SPE-AU 3992 .

IL DEFTS0008740

Receipt date: 03/16/2011
Equivalent 01 Form PTOISSIOSA [04·01)
Approved for USQ through 09130/2007. OMS 0651.Q031
U.S. Pa:enl and Trademark Off'Jre: U S DEPARTMENT OF COMMERCE
Under the Pa!lerwork Reduc1ion AcI 011995, no persons Ire IlIQlirecilo reseond to a colectlon of Information unless ~ ~~Ia'~s a valid OMS conb'ol n~er:

Complete if Known 95/001 , 577
(to be assigned)

Suhstilutc for fonn 14491PTO

Control Number

I'

Filing Date

6,788,314; Issued: SeDtember 7 2004)
I~""
war. J.o, ",V..L..L ~-

INFORMATION DISCLOSURE

STATEMENT BY APPLICANT
(Use as mlllfy,heers as IIecessary)

Sheet

I

1

I

of

I

Inventors
Art Unit
Examiner Name
Attorney Docket Number

ov

VJ v.OJ.

FREIBERGER et al.
ODe aSSllmea:
"J'9"92
'to be gsS;81!8d}
2607.335REXI

Deandra HUghE

S

u.s. PATENT DOCVMENTS
Examiner
Initials'

Cite
No.'

Document Number
2

Numbm·KindCode (1t"-'

5,748,190
USI
US2
1--_ _+-'-'.:::.::..._~5,913.040
USJ
US4
US5

Publication Date
MMlDDfYYYY

Name of Patentee or
Applicant of Cited Document

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

05/0511998

Kjorsvik

06/1511999

Rakavy~e~t~a~/~,__________

-+______________~

lJS6

US7
US8
lJS9
USIO
USII
USI2
USI3
USI4
USI5
USI6
USl7
USI8
LJSI9
US20
FOREIGN PATENT DocUMENTS

Examiner

Cite

Initials·

NO"

f'oreign Patent Docunu:nt

Publication Date
MMlDDIYYYY

Name of Patentee or
Applicant of Cited Document

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

Of'

T"

FPI
FP2
FP3
FP4

FPS
FP6
FP?
FPS
FP9
1335990_I.DOC

IExaminer
Signature

I

IDate
Considered

'EAAMINER: Initial If reference considered, whelller or not citalion is in conformance with MPEP 609. Draw line thrO\Jgh citation if nol in conformance and
not considered. Include copy of this form with next communication to applicant. 'AppUcant's unique citation designation number (optional). > See Kinds Codes
of USPTO Palent Documents at www.uspto.gov or MPEP 901.04. > Enter Office lhat issued tile document. by the two-ietter code (WIPO Standard ST.3l. •
For Japanese patent documents, the Indication of the year of the reIgn of the Emperor must precede the serial nlJmber of Ihe patent document. • Kind of
document by the appropriate symbols as inclicated on the dowment under WlPO Standard ST.1B if possible. • Applicanl is to place a check mark here if
English language Translation Is attached.
This collection of information is required by 31 CFR 1.97 and 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. ConfJdentiality Is govemed 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 10 the USPTO. Tlme will vary depending upon the individual case.
Any comments on the amount of time you require 10 complete this form anellor 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 fat Patents. P.O. Box 1450, Alexandria, VA 22313-1450.

ALL ~~~~§~~~~f)~rB-8~X~E~\m:(~R~t'~rtrf~OUGH. ID.H.I

IL DEFTS0008741

Receipt date: 03/16/2011
Equivalent of Form PTO/SBl08B (09-06)
Approved for use 1hrough 03/31/2001. OMB 0651·0031
U.S. P81ent and Trademar1t Office; U.S. DEPARTMENT OF COMMERCE
1rnder the Paperworl< Reducti.... Act of 1995. no I)CI'SOIUI ..... r<IQuired 10 respond to a coliccti<Dl ofinrormation unless it contains a valid OMB control number.

95/001,577

Complete if Known

Substitute fOT furm 14491PTO

(to be assigned)
Control

FIRST SUPPLEMENTAL
INFORMATION DISCLOSURE
STATEMENT BY APPLICANT
(Use as many sheets (U necessary)

I1

Sheet
Examiner
Initials·

Cite

No. 1

lof I

IT

..

~J

••

6,788,314; Issued: SeDtember 7,2004)
~lifil"sjtA~
Mar..l. I) , " U.l..l. ' FREIBERGER el al.

Filing Date
Inventors

Art Unit
Examiner Name
Attorney Docket Number

ttd be m:Stgned) 3 9 9 2
(to be assigned) Deandra Hughe

2607.33SREXI

NON PATENT LITERATURE DOCUMENTS
of the author (in CAPITAL LEITERS). title of the article (when appropriate), title of
the item (book, magazine, journal, serial. symposium. catalog. etc.). date. page(s). volume>-issue

Include name

nurnlx:tis),

NPLI

~-

Number

Dublisher, citv and/or country where Dublished

Salm, "Buying a Real computer Monitor," Popular Electronics, October 1984, pp. 102,
103. 132, and 134.

NPL2

NPL3

NPL4

NPL5

NPL6

NPL7

NPL8

NPL9

NPLlO
I 335992JDOC

IDeandra Hughesl (05/18/2011)

Date
Considered

"EXAMINER: Initial If reference considered, whether or not citation is in confOrmance with MPEP B09. 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 (optional). 2 Applicant IS to place a check mark here if English language Translation is attached.
This collection of information Is required bv 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 complete.
ineludlng gathering, preparing, and submitting the completed application fOrm to the USPTO. lime will vary depending upon the individual case. Any
comments on the amount of time you require to complete this form and/or SlJggeslions for reducing this burden, should be sent \0 the Chief Information
Officer, U.S. Patent and Trademar1t Office, P.O. Box 1450. Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS

ADDRESA1:e~~~~~mt~:~E~~_ _Rti>L~~ROUGH. IO.H.I

IL DEFTS0008742

UNITED STATES PATENT AND TRADEMARK OFFICE
Commissioner for Patents
United States Patents and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
www.uspto.gOY

DO NOT USE IN PALM PRINTER
Date:

THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS

STERNE, KESSLER, GOLDSTEIN & FOX PLLC
1100 NEW YORK. AVENUE, NW
WASHINGTON, DC 20005

MAILED
MAY 1 9.2011
CENTRAL REEXAMINATION UNIT

Transmittal of Communication to Third Party Requester
Inter Partes Reexamination
REEXAMINATION CONTROL NO. : 95001577
PATENT NO. : 6778314
TECHNOLOGY CENTER: 3999
ART UNIT: 3992

Enclosed is a copy of the latest communication from the United States Patent and Trademark
Office in the above identified Reexamination proceeding. 37 CFR 1.903.
Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
communication, the third party requester of the inter partes reexamination may once file
written comments within a period of 30 days from the date of service of the patent owner's
response. This 3~-day time period is statutory (35 U.S.c. 314(b)(2)t and, as such, it cannot
be extended. See also 37 CFR 1.947.

If an ex parte reexamination has been merged with the inter partes reexamination, no
responsive submission by any ex parte third party requester is permitted.
All correspondence relating to this inter partes reexamination proceeding should be. directed
to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end
of the communication enclosed with this transmittal.

PTOL-2070(Rev.07-04)

IL DEFTS0008743

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
Alexandri•• Virginia 22313-1450
WWW.USplO.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATIORNEY DOCKET NO.

CONFIRMA nON NO.

95/001,577

03/16/2011

Paul A. FREIBERGER

2607.335REXI

1540

21912

7590

05/1912011

VANPELT, YI&JAMES LLP
10050N. FOOTHILL BLVD #200
CUPERTINO, CA 95014

EXAMINER
HUGHES. DEANDRA M
ART UNIT

PAPER NUMBER

3992

MAIL DATE

DELIVERY MODE

05/19/2011

PAPER

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

The time period for reply, if any, is set in the attached communication.

PTOL-90A (Rev. 04/07)

IL DEFTS0008744

Control No.

95/001,577
Examiner

Art Unit

Deandra M. Hughes

OFFICE ACTION IN INTER PARTES
REEXAMINA TION

Patent Under Reexamination

3992

FREIBERGER ET AL.

-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --

Responsive to the communication(s) filed by:
Patent Owner on _ _
Third Party(ies) on 16 March 2011
RESPONSE TIMES ARE SET TO EXPIRE AS FOLLOWS:

For Patent Owner's Response:
.2. MONTH(S) from the mailing date of this action. 37 CFR 1.945. EXTENSIONS OF TIME ARE
GOVERNED 8Y 37 CFR 1.956.
For Third Party Requester's Comments on the Patent Owner Response:
30 DAYS from the date of service of any patent owner's response. 37 CFR 1.947. NO EXTENSIONS
OF TIME ARE PERMITTED. 35 U.S.C. 314(b)(2).
All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.

This action is not an Action Closing Prosecution under 37 CFR 1.949, nor is it a Right of Appeal Notice under
37 CFR 1.953.

PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
1.0 Notice of References Cited by Examiner, PTO-892
2.0 Information Disclosure Citation, PTO/S8/08
3.0
PART II. SUMMARY OF ACTION:

"

1a. ~
1b. 0
2. 0
3. 0
4. 0
5.
6.
7.
8.
9.

Claims
Claims
Claims
Claims
Claims

1-15 are subject to reexamination.
_ _ are not subject to reexamination.
_ _ have been canceled.
_ _ are confirmed. [Unamended patent claims]
_ _ are patentable. [Amended or new claims]

~ Claims 1-15 are rejected.

0 Claims _ _ are objected to.
0 The drawings filed on _ _
0 are acceptable 0 are not acceptable.
0 The drawing correction request filed on _ _ is: 0 approved. 0 disapproved.
0 Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
been received.
D not been received.
D been filed in Application/Control No 95001577.
10.00ther _ _

o

U.S. Patent and Trademark Office
PTOL-2064 (08/06)

PaperNo.20110513-A

IL DEFTS0008745

Control No.

95/001,577
Examiner

FREIBERGER ET AL.

Deandra M. Hughes

INTER PARTES REEXAMINATION
COMMUNICATION

Patent Under Reexamination

3992

Art Unit

-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --

A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS ACTION IS SET TO EXPIRE
IZl f. MONTH(S) D THIRTY DAYS FROM THE MAILING DATE OF THIS LETTER. EXTENSIONS
OF TIME FOR PATENT OWNER ARE GOVERNED BY 37 CFR 1.956.

Each time the patent owner responds to this Office action, the third party requester of the inter partes
reexamination may once file written comments within a period of 30 days from the date of service of
the patent owner's response. This 3D-day time period is statutory (35 U.S.C. 314(b)(2», and, as such,
it cannot be extended. See also 37 CFR 1.947.

All correspondence relating to this inter partes reexamination proceeding should be directed to the
Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office
action.

U.S. Patent and Trademark Office
PTOL-2071 (5/04)

Paper No.

20110513-A

IL DEFTS0008746

Control Number: 95/001,577
Art Unit: 3992

Page 2

INTER PARTES REEXAMINATION NON-FINAL ACTION
1.

This is the first non-final action in the inter partes reexamination of claims 1-15 of

USP 6,778,314 ("'314 patent").

References Cited Proceeding
2.

USP 5,748,190 to Kjorsvik filed Sep. 5,1995. ("Kjorsvik")

3.

USP 5,913,040 to Rakavy filed Aug. 22,1995. ("Rakavy")

4.

Salm, Walter. "Buying a Real Computer Monitor". Popular Electronics. October
1984. pp. 102-103, 132, and 134. ("Salm")

Proposed Rejections
5.

.Third party requester ("3PR") has proposed the following rejections.
(A)

Claims 1,3,5, 7, 9-10,12-13, and 15 are anticipated by Kjorsvik.

(B)

Claims 2, 4, 6, 8,11. and 14 are obvious over Kjorsvik in view of Salm.

(C)

Claims 1, 3.5. 7. 9-10.12-13. and 15 are anticipated by Rakavy.

(D)

Claims 2, 4, 6, 8,11, and 14 are obvious over Rakavy in view of Salm.

(E)

Claims 1, 3,5,7,9-10,12-13, and 15 are obvious over Rakavy in view of
Kjorsvik.

IL DEFTS0008747

Control Number: 95/001,577

Page 3

Art Unit: 3992
SUMMARY OF THIS ACTION
6.

None of the proposed rejections (A)-(E) were adopted.
Reasons for Not Adopting Proposed Rejections over Kjorsvik ............. pgs. 34-35
Reasons for Not Adopting Proposed Rejections over Rakavy ............... pgs. 36-39

7.

Claims 1-15 are rejected over the following Examiner Initiated Rejections, which
are grouped according to the respective independent claims.
Group (1):

Claims 1-2 ............................................................................ pgs. 4-8

Group (2):

Claims 3-4 .......................................................................... pgs. 9-13

Group (3):

Claims 5-6 ........................................................................ pgs. 14-18

Group (4):

Claims 7-9 ........................................................................ pgs. 19-23

Group (5):

Claims 10-12 .................................................................... pgs. 24-28

Group (6):

Claims 13-15 .................................................................... pgs. 29-33

·r

IL DEFTS0008748

Control Number: 95/001,577 .

Page 4

Art Unit: 3992
GROUP (1): CLAIMS 1-2
~-

8.

As to these claims, 3PR has proposed the following rejections:
(A)

Claim 1 is anticipated by Kjorsvik.

(8)

Claim 2 is obvious over Kjorsvik in view of Salm.

(C)

Claim 1 is anticipated by Rakavy.

(D)

Claim 2 is obvious over Rakavy in view of Salm.

(E)

Claim 1 is obvious over Rakavy in view of Kjorsvik.

It·

l

9.

None of these rejections are adopted for the reasons set forth on pages 34-39.

10.

Claims 1-2 are rejected over the following Examiner initiated rejections.
Claim 1 is obvious over Kjorsvik.
Claim 2 is obvious over Kjorsvik in view of Salm.

~-

IL DEFTS0008749

Control Number: 95/001,577

Page 5

Art Unit: 3992
EXAMINER INITIATED REJECTIONS OF CLAIMS 1-2

11.

Claim 1 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kjorsvik.

As to claim 1, Kjorsvik discloses a method for engaging the peripheral attention of
a person in the vicinity of a display device, comprising the steps of:
(The presentations are initiated (or each PC in the network following a selected amoun! of
!ime during which each PC has been in an 'on' state but has no! been in use. col. 2: 15-17.
These presentations in e(fect replace the conventional screen saver, but in addition, wovide.
information in visual form which is intended to be beneficial to the user ofthe Pc. col. 2:172Q)

providing one or more sets of content data (presentations,· col. 4:19-25)
to a content display system (computer)
associated with the display device (monitor) and
located entirely in the same physical location as the display

d~vice

(the monitor is located in the same physical location as the computer);

providing to the content display system (computer) a set of instructions (files; col.
3:49) for
enabling the content display system (computer) to selectively display images
(presentation slides) generated from a set of content data (presentation);
in an unobtrusive manner that does not distract a user of the display device
(monitor) from a primary interaction with the display device (monitor),
(The presenlalions are initiated (or each PC in the network following a selected
amount oftime during which the PC has been in an 'on' state but has not been in use.
col. 2:13-16)

auditing (via the messenger modules) the display of sets of content data
(presentations) by the content display system (computer); wherein
(The messenger modules #22 communicate with the system database #24 on the network
server #18 and provide a certain amount oflocal control over the presentation at is
associated personal computer. figure 2 and col. 2:45-48)

the one or more sets of content data (presentations) are selected from a
plurality of sets of content data,

IL DEFTS0008750

Control Number: 95/001,577

Page 6

Art Unit: 3992
(Administration module #26 and database #24 on server #18 are responsible {or
selecting particular slide presentations (or the individual pes in the network and
scheduling those presentations in a particular sequence. coI.2:62-67)
each set being provided by an associated content provider (other network
servers), wherein
(Administration module #26 also has the capability of communicating with
external sources, including other network servers with databases having
presentation infOrmation, as well as other outside sources of data and images.
col. 2:58-62)
each associated content provider (other network server) is located in a
different physical location than at least one other content provider (another
network server) and each content provider (network server) provides its
content data (presentation) to the content display system (computer)
independently of each other content provider and
(Presentations may be obtained trom external systems or other outside sources
over external communication lines. This enables the one administration module
for the system to obtain presentations directly trom external sources, so as to
eliminate the need fOr composing them within the system. coI.4:20-25)
First, Kjorsvik does not disclose the limitation "without the content data being

aggregated at a common physical location remote from the content display system prior
to being provided to the content display system" because Kjorsvik discloses the
presentations being stored in a system database located on a network server prior to
being provided to the individual network PCs for display on the computer screens. (col.
2: 10-15) As such, Kjorsvik discloses the content data (presentations) are aggregated at
a common physical location (system database on the network server) prior to being provided
to the content display system (individual network PC).
Kjorsvik teaches, however, that administration module #26 may communicate
directly with external sources, which include other network servers with databases
having presentation information. (coI.2:58-62) In addition, Kjorsvik teaches obtaining

IL DEFTS0008751

Control Number: 95/001,577

Page 7

Art Unit: 3992
presentations directly from external systems eliminates the need to compose the
presentation within the system. (col.4:20-25) Consequently, it would have been obvious
to one of ordinary skill in the art (e.g. a network engineer) to modify the system of
Kjorsvik to select presentations directly from external sources, such as other network
servers, for the advantage of eliminating the need to compose the presentation within
the system. As such, selecting the presentation directly from an external network server
database eliminates the need to aggregate the presentation at the network server prior
to being provided to the individual PC because the presentation would be coming
directly from the external network server.
Second, Kjorsvik does not disclose "for each set the respective content provider

may provide scheduling instructions tailored to the set of content data to control at least
one of the duration, sequencing, and timing of the display of said image or images
generated from the set of content data" because Kjorsvik discloses the duration,
sequencing, and timing of the content data (presentations) is controlled by either the
administration module #26 (col. 3:41-43. col. 4: 17-18) or the user of the individual PC. (col.
5:24-32)

Kjorsvik teaches, however, that obtaining presentations directly from external
systems eliminates the need to compose the presentations within the system. (coI.4:2025) Since the device of Kjorsvik may obtain presentations that have been composed on

external systems, it would be obvious to one of ordinary skill in the art (e.g. a network
engineer) to modify the system of Kjorsvik to permit the device to obtain scheduling
instructions from these external systems to control anyone of the duration, sequencing,

IL DEFTS0008752

Control Number: 95/001,577

Page 8

Art Unit: 3992
or timing of the provided presentation for the advantage of permitting the content
provider the added flexibility of staging its provided presentation on the individual user's
computer.
12.

Claim 2 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kjorsvik

in view of Salm.
Claim 2 is dependent upon claim 1. As such, the claim rejection above
addressing each limitation of claim 1 is incorporated here. Kjorsvik does not disclose
the display device comprises a television. Salm teaches, however, the family TV set as
a computer monitor. (entire article) Consequently, it would have been obvious to one of
ordinary skill in the art (e.g., a network engineer) to modify the individual PCs of
~--

Kjorsvik with TV sets as display devices for the advantage of the use of cheap and
readily available display devices.

IL DEFTS0008753

Control Number: 95/001,577

Page 9

Art Unit: 3992
GROUP (2): CLAIMS 3-4
13.

As to these claims, 3PR has proposed the following rejections:
(A)

Claim 3 is anticipated by Kjorsvik.

(8)

Claim 4 is obvious over Kjorsvik in view of Salm.

(C)

Claim 3 is anticipated by Rakavy.

(D)

Claim 4 is obvious over Rakavy in view of Salm.

(E)

Claim 3 is obvious over Rakavy in view of Kjorsvik.

14.

None of these rejections are adopted for the reasons set forth on pages 34-39.

15.

Claims 3-4 are rejected over the following Examiner initiated rejections.
Claim 3 is obvious over Kjorsvik.
Claim 4 is obvious over Kjorsvik in view of Salm.

t-

IL DEFTS0008754

Control Number: 95/001,577

Page 10

Art Unit: 3992
EXAMINER INITIATED REJECTIONS OF CLAIMS 3-4
Claim 3 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kjorsvik.

16.

Kjorsvik discloses a computer readable medium encoded with one or more
computer programs for enabling engagement of the peripheral attention of a person in
the vicinity of a display device, comprising:
(The presentations are initiated for each PC in the network tollowing a selected amount of
time during which each PC has been in an 'on' state but has not been in use. col. 2: 15-17.
These presentations in effect replace the conventional screen saver, but in addition, provide
information in visual torm which is intended to be beneficial to the user ofthe Pc. col. 2: 17-

2!lJ
instructions for providing one or more sets of content data (presentations; col. 4: 19-

r)

-)

to a content display system (computer)
associated with the display device (monitor) and
located entirely in the same physical location as the display device;
(the monitor is located in the same physical location as the computer);
instructions for providing to the content display system (computer) a set of
instructions (files; col.3:49) for
enabling the content display system (computer) to selectively display in an
unobtrusive manner that does not distract a user of the display device
(monilor) from a primary interaction with the display device (monitor) images
(presentation slides) generated from a set of content data (presentation); and
(The presentations are initiated (ar each PC in the nefv.iork (allowing a selected
amount oftime during which the PC has been in an 'on' state but has not been in use.
col. 2:13-16)
instructions for auditing (via the messenger modules) the display of sets of content
data (presentations) by the content display system (computer); wherein
(The messenger modules #22 communicate with the system database #24 on the network
server #18 and provide a certain amount o[local control over the presentation at is
associated personal computer. figure 2 and col. 2:45-48)
the one or more sets of content data (presentations) are selected from a plurality
of sets of content data,

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Art Unit: 3992
(Administration module #26 and database #24 on server #18 are responsible {or
seiecling particular slide presentations (Or the individual PCs in the network and
scheduling those presentations in a particular sequence. col.2:62-67)
each set being provided by an associated content provider (other network
servers), wherein
(Administration module #26 also has the capability of communicating with external
sources, including other network servers with databases having presentation
information, as well as other outside sources of data and images. col. 2:58-62)
each associated content provider (other network server) is located in a different
physical location than at least one other content provider (another network
server) and each content provider (other network server) provides its content
data (presentation) to the content display system (compUler) independently of
each other content provider and
(Presentations may be obtained from external systems or other outside sources over
exlernal communication lines. This enables the one administration module (or the
system to obtain presentations directly from external sources, so as to eliminate the
need [or composing them within the system. coI.4:20-25)
First, Kjorsvik does not disclose the limitation "without the content data being
aggregated at a common physical location remote from the content display system prior
to being provided to the content display system" because Kjorsvik discloses the

presentations being stored in a system database located on a network server prior to
being provided to the individual network pes for display on the computer screens. (col.
2.'/0-15) As such, Kjorsvik discloses the content data (presentations) are aggregated at
a common physical location (system database on the network server) prior to being provided
to the content display system (individual nelwork PC).
Kjorsvik teaches, however, that administration module #26 may communicate
directly with external sources, which include other network servers with databases
having presentation information. (coI.2:58-62) In addition, Kjorsvik teaches obtaining
presentations directly from external systems eliminates the need to compose the

IL DEFTS0008756

Control Number: 95/001,577

Page 12

Art Unit: 3992
presentation within the system. (col.4:20-25) Consequently, it would have been obvious
to one of ordinary skill in the art (e.g. a network engineer) to modify the system of

Kjorsvik to select presentations directly from external sources, such as other network
servers, for the advantage of eliminating the need to compose the presentation within
the system. As such, selecting the presentation directly from an external network server
database eliminates the need to aggregate the presentation at the network server prior
to being provided to the individual PC because the presentation would be coming
directly from the external network server.
Second, Kjorsvik does not disclose "for each set the respective content provider
may provide scheduling instructions tailored to the set of content data to control at least
one of the duration, sequencing, and timing of the display of said image or images
generated from the set of content data" because Kjorsvik discloses the duration,
sequencing, and timing of the content data (presentations) is controlled by either the
administration module #26 (col. 3:41-43, col. 4:1 7-18) orthe user of the individual PC. (col.
5:24-32)

Kjorsvik teaches, however, that obtaining presentations directly from external
systems eliminates the need to compose the presentations within the system. (coI.4:2025) Since the device of Kjorsvik may obtain presentations that have been composed on
external systems, it would be obvious to one of ordinary skill in the art (e.g. a. network
engineer) to modify the system of Kjorsvik to permit the device to obtain scheduling
instructions from these external systems to control anyone of the duration, sequencing,
or timing of the provided presentation for the advantage of permitting the content

IL DEFTS0008757

Control Number: 95/001,577

Page 13

Art Unit: 3992
provider the added flexibility of staging its provided presentation on the individual user's
~-

computer.
17.

Claim 4 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kjorsvik

in view of Salm.
Claim 4 is dependent upon claim 3. As such, the claim rejection above
addressing each limitation of claim 3 is incorporated here. Kjorsvik does not disclose
the display device comprises a television. Salm teaches, however, the family TV set as
a computer monitor. (entire article) Consequently, it would have been obvious to one of
ordinary skill in the art (e.g., a network engineer) to modify the individual PCs of
i;c_

Kjorsvik with televisions as display devices for the advantage cheap and readily
available display devices.

IL DEFTS0008758

Control Number: 95/001,577

Page 14

Art Unit: 3992

ri~

GROUP (3): CLAIMS 5-6
18.

As to these claims, 3PR has proposed the following rejections:
(A)
(8)

Claim 6 is obvious over Kjorsvik in view of Salm.

(C)

Claim 5 is anticipated by Rakavy.

(0)

Claim 6 is obvious over Rakavy in view of Salm.

(E)

J

I

Claim 5 is anticipated by Kjorsvik.

Claim 5 is obvious over Rakavy in view of Kjorsvik.

I

if

~

19.

None of these rejections are adopted for the reasons set forth on pages 34-39.

20.

Claims 5-6 are rejected over the following Examiner initiated rejections.
Claim 5 is obvious over Kjorsvik.
Claim 6 is obvious over Kjorsvik in view of Salm.

IL DEFTS0008759

Control Number: 95/001,577

Page 15

Art Unit: 3992

EXAMINER INITIATED REJECTIONS OF CLAIMS 5·6
21.

Claim 5 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kjorsvik.

Kjorsvik discloses a computer readable medium encoded with one or more
computer programs for enabling engagement of the peripheral attention of a person in
the vicinity of a display device, comprising:
(The presentations are initiated fOr each PC in the network fOllowing a selected amount of
time during which each PC has been in an 'on' state but has not been in use. col. 2: 15-17.
These presentations in effect replace the conventional screen saver, but in addition, provide
information in visual fOrm which is intended to be beneficial to the user ofthe Pc. col. 2:172..Q)
instructions for acquiring a set of content data (presentations; col. 4: 19-25)
from a content providing system (database #24 on network server,' col. 2:63-65);
instructions for detecting an idle period of predetermined duration; and

(Since the system ofKjorsvik initiates presentations fOr the PC during which the PC has
been in an 'on' state but not in use, the system must necessarily provide instructions fOr
detecting an idle period ofpredetermined duration in order to initiate the presentation.
As such, this claim limitation is inherent in the device ofKjorsvik. see col. 2:15-17)
instructions for selectively displaying on the display device (monitor) after
detection of the idle period (col. 2: 15-17) and in an unobtrusive manner
that does not distract a user of the display device from a primary
interaction with the display device (monitor)

(Each user in the system, i.e. each network Pc. will have its own unique schedule
of presentations, including a particular sequence of different presentations and a
specific time of nonuse required befOre a presentation begins. This scheduling of
presentations is established through the administration module and stored in the
system database #24. col. 4:9-16. These presentations in effect replace the
conventional screen saver, but in addition, provide infOrmation in visual fOrm
which is intended to be beneficial to the user ofthe Pc. col. 2: 17-20)
wherein the set of content data (presentations) is selected from a
plurality of sets of content data,

(Administration module #26 and database #24 on server #18 are responsible
fOr selecting particular slide presentations fOr the individual PCs in the
network and scheduling those presentations in a particular sequence.
col. 2:62-67)

IL DEFTS0008760

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Art Unit: 3992
each set being provided by an associated content provider (other
network servers), wherein

I

(Administration module #26 also has the capability o(communicaling with
external sources, including other network servers with databases having
presentation infOrmation, as well as other outside sources o(data and images.
col. 2:58-62)
each associated content provider (other network server) is located in a
different physical location than at least one other content provider
(another network server) and each content provider (other network server)
provides its content data (presentation) to a content display system
(computer) associated with the and located entirely in the same
physical location as the display device (monitor) independently of each
other content provider and

(Presentations may be obtained (rom external systems or other outside
sources over external communication lines. This enables the one
administration module fOr the system to obtain presentations directly from
external sources, so as to eliminate the need tor composing them within the
system. col.4:20-25)
First, Kjorsvik does not disclose the limitation "without the content data being
aggregated at a common physical location remote from the content display system prior
to being provided to the content display system" because Kjorsvik discloses the

presentations being stored in a system database located on a network server prior to
being provided to the individual network PCs for display on the computer screens. (col.

2: 10-15) As such, Kjorsvik discloses the content data (presentations) are aggregated at
a common physical location (system database on the network server) prior to being provided
to the content display system (individual network PC).

Kjorsvik teaches, however, that administration module #26 may communicate
directly with external sources, which include other network servers with databases
having presentation information. (coI.2:58-62) In addition, Kjorsvik teaches obtaining
presentations directly from external systems eliminates the need to compose the

IL DEFTS0008761

Control Number: 95/001,577

Page 17

Art Unit: 3992
presentation within the system. (col.4:20-25) Consequently, it would have been obvious
to one of ordinary skill in the art (e.g. a network engineer) to modify the system of

Kjorsvik to select presentations directly from external sources, such as other network
servers, for the advantage of eliminating th,e need to compose the presentation within
the system. As such, selecting the presentation directly from an external network server
database eliminates the need to aggregate the presentation at the network server prior
to being provided to the individual PC because the presentation would be coming
directly from the external network server.
Second, Kjorsvik does not disclose "for each set the respective content provider

may provide scheduling instructions tailored to the set of content data to control at least
one of the duration, sequencing, and timing of the display of said image or images
generated from the set of content data" because Kjorsvik discloses the duration,
sequencing, and timing of the content data (presentations) is controlled by either the
administration module #26 (col. 3:41-43. col.4: 17-18) or the user of the individual PC. (col.

5:24-32)
Kjorsvik teaches, however, that obtaining presentations directly from external
systems eliminates the need to compose the presentations within the system. (coI.4:2025) Since the device of Kjorsvik may obtain presentations that have been composed on
external systems, it would be obvious to one of ordinary skill in the art (e.g. a network
engineer) to modify the system of Kjorsvik to permit the device to obtain scheduling
instructions from these external systems to control anyone of the duration, sequencing,
or timing of the provided presentation for the advantage of permitting the content

IL DEFTS0008762

Control Number: 95/001,577

Page 18

Art Unit: 3992
provider the added flexibility of staging its provided presentation on the individual user's
computer.

t
22.

Claim 6 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kjorsvik

in view of Salm.
Claim 6 is dependent upon claim 5. As such, the claim rejection above
addressing each limitation of claim 5 is incorporated here. Kjorsvik does not disclose
the display device comprises a television. Salm teaches, however, the family TV set as
a computer monitor. (entire article) Consequently, it would have been obvious to one of
ordinary skill in the art (e.g., a network engineer) to modify the individual PCs of
Kjorsvik with televisions as display devices for the advantage cheap and readily
available display devices.

IL DEFTS0008763

Control Number: 95/001,577

Page 19

Art Unit: 3992
GROUP (4): CLAIMS 7-9
23.

As to these claims, 3PR has proposed the following rejections:
(A)

Claims 7 and 9 are anticipated by Kjorsvik.

(8)

Claim 8 is obvious over Kjorsvik in view of Salm.

(C)

Claims 7 and 9 are is anticipated by Rakavy.

(D)

Claim 8 is obvious over Rakavy in view of Salm.

(E)

Claims 7 and 9 are obvious over Rakavy in view of Kjorsvik.

24.

None of these rejections are adopted for the reasons set forth on pages.34-39.

25.

Claims 7-9 are rejected over the following Examiner initiated rejections.
Claims 7 and 9 are obvious over Kjorsvik.
Claim 8 is obvious over Kjorsvik in view of Salm.

IL DEFTS0008764

Control Number: 95/001,577

Page 20

Art Unit: 3992
EXAMINER INITIATED REJECTIONS OF CLAIMS 7-9
26.

Claims 7 and 9 are rejected under 35 U.S.C. 103(a) as being unpatentable over

Kjorsvik.
As to claim 7, Kjorsvik discloses a content display system for engaging the
peripheral attention of a person in the vicinity of a display device (monitor) located in the
same physical location as the content display system (computer), comprising:
{The presentations are initiated fOr each PC in the network (ollowing a selected amount of
time during which each PC has been in an 'on' state but has not been in use. col. 2: 15-17.
These presentations in effect replace the conventional screen saver, but in addition, provide
information in visual (arm which is intended to be beneficial ta the user a(the Pc. col. 2: 1720. The monitor o(the computer is located in the same physical location)

data acquisition apparatus (administration module #26) that enables acquisition of
a set of content data (presentations);
(Presentations may be obtained trom external systems or other outside sources over'
external communication lines. This enables the administration module (or the system to
obtain presentations directly trom external sources, so as to eliminate the need (or
composing them within the system. coI.4:20-25)

display apparatus (messenger module) that effects selective display on the display
device (monilor) , in an unobtrusive manner that does not distract a user of the
display device from a primary interaction with the display device (monitor);
(The messenger module is responsible tor the control o(the presentation. Each slide is
show fOr a preselected period oftime and ,hen if/he PC is still not being used, the next
slide in the presentation sequence is shown, again under the control (he messenger
module. col. 5.' 13-17)

user input apparatus (designated key on the keyboarcjJ that enables selection by a
user of one or more control options during the selective display of the image or
images generated form the set of content data; and
(Bv pressing a designated key on the PC keyboard (or the correct mouse button), when a
presentation is in progress, a control menu will appear on the user's screen over the
current slide. This menu gives the user various possibilities by which to control the
presentation. It is possible, {Or example, to reverse the presentation slide by slide, or the
{JI"esentation may be fast-fOrwarded. slide by slide. col.5:25-33)

a system control device (eject but/on) that controls aspects of the operation of the
system in accordance with a selected control option;

IL DEFTS0008765

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Art Unit: 3992
(Ev pushing an eject button or other designated key, the user will also be able /0 go /0
another selected presentation among the several available to it through the
administration module. The newly selected presentation will remain the "current"
presentation until the broadcast schedule previously established in the administration
modute for that PC indicates that another presentation is due. coI.5:33-38)
wherein the set of content data (presentations) is selected from a plurality of sets
of content data, each set being provided by an associated content provider (other
network),
(Administration module #26 and database #24 on server #18 are responsible for
selec/ing particular slide presentations tor the individual PCs in the network and
scheduling those presentations in a particular sequence. coI.2:62-67)
wherein each associated content provider (other network server) is located in a
different physical location than at least one other content provider (another
network server) and each content provider (other network server) provides its
content data (presentation) to the content display system (computer) independently
of each other content provider and
(Presentations may be obtained from external systems or other outside sources over
external communication lines. This enables the one administration module for the system
to oblain presentations directly from external sources. so as to eliminate the need tor
composing them within the system. coI.4:20-25)
First, Kjorsvik does not disclose the limitation "without the content data being

aggregated at a common physical location remote from the content display system prior
to being provided to the content display system" because Kjorsvik discloses the
presentations being stored in a system database located on a network server prior to
being provided to the individual network PCs for display on the computer screens. (cot.
2: 10-/5) As such, Kjorsvik discloses the content data (presentations) are aggregated at
a common physical location (system database on the network server) prior to being provided
to the content display system (individual nelwork PC).
Kjorsvikteaches, however, that administration module #26 may communicate
directly with external sources, which include other network servers with databases

IL DEFTS0008766

Control Number: 95/001,577

Page 22

Art Unit: 3992
having presentation information. (coI.2:58-62) In addition, Kjorsvik teaches obtaining
presentations directly from external systems eliminates the need to compose the
presentation within the system. (coI.4:20-25) Consequently, it would have been obvious
to one of ordinary skill in the art (e.g. a network engineer) to modify the system of
Kjorsvik to select presentations directly from external sources, such as other network
servers, for the advantage of eliminating the need to compose the presentation within
the system. As such, selecting the presentation directly from an external network server
database eliminates the need to aggregate the presentation at the network server prior
to being provided to the individual PC because the presentation would be coming
directly from the external network server.
Second, Kjorsvik does not disclose "for each set the respective content provider
may provide scheduling instructions tailored to the set of content data to control at least
\

one of the duration, sequencing, and timing of the display of said image or images
generated from the set of content data" because Kjorsvik discloses the duration,
sequencing, and timing of the content data (presentations) is controlled by either the
administration module #26 (col. 3:41-43, col. 4: 17-18) or the user of the individual PC. (col.
5:24-32)

Kjorsvik teaches, however, that obtaining presentations directly from external
systems eliminates the need to compose the presentations within the system. (col.4:2025) Since the device of Kjorsvik may obtain presentations that have been composed on

external systems, it would be obvious to one of ordinary skill in the art (e.g. a network
engineer) to modify the system of Kjorsvik to permit the device to obtain scheduling

IL DEFTS0008767

Control Number: 95/001,577

Page 23

Art Unit: 3992
instructions from these external systems to control anyone of the duration, sequencing,
or timing of the provided presentation for the advantage of permitting the content
provider the added flexibility of staging its provided presentation on the individual user's
computer.
As to claim 9, Kjorsvik discloses a link control option (control menu; col. 5:27)
enables the user to establish a link with an information location and the system control
device (ejecl button) establishes the link with the information location in response to
selection of the link control option (selec/ing an option on the con/raJ menu to go 10 anal her
presenla/ion).
CBypushing the eject button or other designated key on the PC keyboard, or correct mouse
button. when a presentation is in progress, a control menu will appear on the user's screen
over Ihe current slide. This menu gives the user various possibilities by which 10 con/roJ Ihe
presenlalion. col. 5:25-32)

27.

Claim B is rejected under 35 U.S.C. 103(a} as being unpatentable over Kjorsvik

in view of Salm.
Claim B is dependent upon claim 7. As such, the claim rejection above
addressing each limitation of claim 7 is incorporated here. Kjorsvik does not disclose
the display device comprises a television. Salm teaches, however, the family TV set as
a computer monitor. (entire article) Consequently, it would have been obvious to one of
ordinary skill in the art (e.g., a network engineer) to modify the individual pes of
Kjorsvik with televisions as display devices for the advantage cheap and readily
available display devices.

IL DEFTS0008768

Control Number: 95/001,577

Page 24

Art Unit: 3992
GROUP (5): CLAIMS 10-12
28.

As to these claims, 3PR has proposed the following rejections:
(A)

Claims 10 and 12 are anticipated by Kjorsvik.

(8)

Claim 11 is obvious over Kjorsvik in view of Salm.

(C)

Claims 10 and 12 are is anticipated by Rakavy.

(0)

Claim 11 is obvious over Rakavy in view of Salm.

(E)

Claims 10 and 12 are obvious over Rakavy in view of Kjorsvik.

29.

None of these rejections are adopted for the reasons set forth on pages 34-39.

30.

Claims 10-12 are rejected over the following Examiner initiated rejections.

~-

Claims 10 and 12 are obvious over Kjorsvik.
Claim 11 is obvious over Kjorsvik in view of Salm.

r.

IL DEFTS0008769

Control Number: 95/001,577

Page 25

Art Unit: 3992

EXAMINER INITIATED REJECTIONS OF CLAIMS 10-12
31 .

Claims 10 and 12 are rejected under 35 U .S.C. 103(a) as being unpatentable

over Kjorsvik.

Kjorsvik discloses a method for engaging the peripheral attention of a person in
the vicinity of a display device, comprising the steps of:
(The presentations are initiated for each PC in the network following a selected amount of
time during which each PC has been in an 'on' state but has not been in use. col. 2:15-17.
These presentations in effect rep/ace the conventional screen saver, but in addition, provide
informo1ion in visual form which is intended to be beneficial to the user ofthe Pc. col. 2: 172Jl)
acquiring a set of content data (presentations; col. 4: 19-25)
from a content providing system (database #24 on network server; col. 2:63-65);
selectively displaying on the display device, in an unobtrusive manner that
does not distract a user of the display device from a primary interaction with
the display device;
(Each user in the system, i.e. each network Pc. will have its own unique schedule of
presentations, including a particular sequence of different presentations and a
specific time of nonuse required before a presentation begins. This scheduling of
presentations is established through the administration module and stored in the
.mYtem database #24. col. 4:9-16. These presentations in effect replace the
conventional screen saver, but in addition, provide information in visual form which
is intended 10 be bimeficial to the user ofthe Pc. col. 2: 17-20)
enabling selection by a user (pressing a designated key) of one or more control
options (on control menu) during the selective display of the images
(presentation slides) generated from the set of content data (presentation); and
controlling aspects of the operation of the system in accordance with a
selected control option;

(By pressing a designated key on the PC keyboard or the correct mouse bulton, when
a presentation is in progress, a control menu will appear on the user's screen over the
current slide. This menu gives the user various possibilities by which to control the
presentation. It is possible, for example, to reverse the presentation slide by slide, or
1he presentation may be tast-forwarded, slide by slide. coI.5:25-33)

IL DEFTS0008770

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Art Unit: 3992
wherein the set of content data (presentation) is selected from a plurality of
sets of content data, e~ch set being provided by an associated content
provider (other network server),
wherein each associated content provider (other network server) is located in a
different physical location than at least one other content provider (another
network server) and each content provider (other network server) provides its
content data (presentation) to a content display system (computer) associated
with the and located entirely in the same physical location as the display
device (mpnitor) independently of each other content provider and
(Presentations may be obtained trom external systems or other outside sources over
external communication lines. This enables the one administration module (or the
system to obtain presentations directly trom external sources. so as to eliminate the
need [or composing them within the·system. coI.4:20-25)
First, Kjorsvik does not disclose the limitation "without the content data being
aggregated at a common physical location remote from the content display system prior
to being provided to the content display system" because Kjorsvik discloses the
presentations being stored in a system database located on a network server prior to
being provided to the individual network PCs for display on the computer screens. (col.
2: 10-15) As such, Kjorsvik discloses the content data (presentations) are aggregated at
a common physical location (system database on the network server) prior to being provided
to the content display system (individual network PC).
Kjorsvik teaches, however, that administration module #26 may communicate
directly with external sources, which include other network servers with databases
having presentation information. (coI.2:58-62) In addition, Kjorsvik teaches obtaining

.

presentations directly from external systems eliminates the need to compose the
presentation within the system. (coI.4:20-25) Consequently, it would have been obvious
to one of ordinary skill in the art (e.g. a network engineer) to modify the system of

IL DEFTS0008771

"

Control Number: 95/001,577

Page 27

Art Unit: 3992
Kjorsvik to select presentations directly from external sources, such as other network
servers, for the advantage of eliminating the need to compose the presentation within
~-

the system. As such, selecting the presentation directly from an external network server
database eliminates the need to aggregate the presentation at the network server prior
to being provided to the individual PC because the presentation would be coming
directly from the external network server.
Second, Kjorsvik does not disclose "for each set the respective content provider
may provide scheduling instructions tailored to the set of content data to control at least
one of the duration, sequencing, and timing of the display of said image or images
generated from the set of content data" because Kjorsvik discloses the duration,
sequencing, and timing of the content data (presentations) is controlled by either the
administration module #26 (col. 3:41-43. col.4: 17-18) or the user of the individual PC. (col.
5:24-32)
Kjorsvik teaches, however, that obtaining presentations directly from external
systems eliminates the need to compose the presentations within the system. (coI.4:2025) Since the device of Kjorsvik may obtain presentations that have been composed on
external systems, it would be obvious to one of ordinary skill in the art (e.g. a network
engineer) to modify the system of Kjorsvik to permit the device to obtain scheduling
instructions from these external systems to control anyone of the duration, sequencing,
or timing of the provided presentation for the advantage of permitting the content
provider the added flexibility of staging its provided presentation on the individual user's
computer.

IL DEFTS0008772

Control Number: 95/001,577
Art Unit: 3992

Page 28

As to claim 12, Kjorsvik discloses a link control option (control menu: col. 5:27)
enables the user to establish a link with an information location and, the system control
device (eiccI button) establishes the link with the information location in response to
selection of the link control option (selecting an option on the control menu to go to another
presentation).
(By pushing (he eject button or other designated key on the PC keyboard. or correct mouse
bullon. when a presentation is in progress. a control menu will appear on the user's screen
over the current slide. This menu gives the user various possibilities by which 10 control the
presentation. col. 5:25-32)

32.

Claim 11 is rejected under 35 U.S.C. 103(a) as being unpatentable over

Kjorsvik in view of Salm.
Claim 11 is dependent upon claim 10. As such, the claim rejection above
addressing each limitation of claim 10 is incorporated here. Kjorsvik does not disclose
the display device comprises a television. Salm teaches, however, the family TV set as
a computer monitor. (entire article) Consequently, it would have been obvious to one of
ordinary skill in the art (e.g., a network engineer) to modify the individual PCs of
Kjorsvik with televisions as display devices for the advantage cheap and readily
available display devices.

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GROUP (6): CLAIMS 13-15
33.

As to these claims, 3PR has proposed the following rejections:
(A)

(8)

Claim 14 is obvious over Rakavy in view of Salm.

(E)

35.

Claims 13 and 15 are is anticipated by Rakavy.

(0)

·34.

Claim 14 is obvious over Kjorsvik in view of Salm.

(C)

r

Claims 13 and 15 are anticipated by Kjorsvik.

Claims 13 and 15 are obvious over Rakavy in view of Kjorsvik.

None of these rejections are adopted for the reasons set forth on pages 34-39.

Claims 13-15 are rejected over the following Examiner initiated rejections.
Claims 13 and 15 are obvious over Kjorsvik.
Claim 14 is obvious over Kjorsvik in view of Salm.

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EXAMINER INITIATED REJECTIONS OF CLAIMS 13-15
36.

Claims 13 and 15 are rejected under 35 U.S.C. 103(a) as being unpatentable

over Kjorsvik.
Kjorsvik discloses a computer readable medium encoded with one or more
computer programs for enabling engagement of the peripheral attention of a person in
the vicinity of a display device, comprising:
(The presentations are initiated for each PC in the network following a selected amount of
time during which each PC has been in an 'on' state but has not been in use. col. 2: 15-17.
These presentations in effect replace the conventional screen saver, but in addition. provide
inf(Jrmalion in visual (orm which is infended 10 be beneficial to the user o[the Pc. col. 2: 172Jl)

instructions for acquiring a set of content data (presentations; col. 4: 19-25)
from a content providing system (database #24 on network server; coI.2:63-65);
instructions for selectively displaying on the display device (monitor), in an
unobtrusive manner that does not distract a user of the display device
(monitor) from a primary interaction with the display device (monitor);
(Each user in the system. i.e. each network Pc. will have its own unique schedule of
presentations. including a particular sequence ofdi(ferent presentations and a
specific time of nonuse required before a prf!sentation begins. This scheduling of
presentations is established through the administration module and stored in the
system database #24. col. 4:9-16. These presentations in effect replace Ihe
conventional screen saver, but in addition, provide information in visual form which
is in/ended to be beneficial to the user o[the Pc. col. 2: 17-20)

instructions for enabling selection by a user (pressing a designated key) of one
or more control options (on control menu) during the selective display of the
images (presentation slides) generated from the set of content data
(presentation); and instructions for controlling aspects of the operation of the
system in accordance with a selected control option;
(By pressing a designated key on the PC keyboard or the correct mouse bulton, when
a presentation is in progress, a control menu will appear on the user's screen over the
current slide. This menu gives the user various possibilities by which to con/rol the
presentation. It is possible. (or example, to reverse the presentation slide by slide,' or
the presentation may be fast-forwarded, slide by slide. coI.5:25-33)

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Art Unit: 3992
wherein the set of content data (presentation) is selected from a plurality of
sets of content data (presentations). each set being provided by an associated
content provider (other neflvork server),
wherein each associated content provider (other neflvork server) is located in a
different physical location than at least one other content provider (another
network server) and each content provider (neflvork server) provides its content
data (presentation) to a content display system (computer) associated with the
and located entirely in the same physical location as, the display device
(monitor) independently of each other content provider and
(Presentations may be obtained from external systems or other outside sources over
external communication lines. This enables the one administration module (or the
system to obtain presentations directly from external sources. so as to eliminate the
need for composing them within the system. coI.4:20-25)

First, Kjorsvik does not disclose the limitation "without the content data being
aggregated at a common physica//ocation remote from the content display system prior
to being provided to the content display system" because Kjorsvik discloses the
. presentations being stored in a system database located on a network server prior to
being provided to the individual network pes for display on the computer screens. (col.

2: 10- J5) As such, Kjorsvik discloses the content data (presentations) are aggregated at
a common physical location (system database on the neflvork server) prior to being provided
to the content display system (individual network PC).
Kjorsvik teaches, however, that administration module #26 may communicate
directly with external sources, which include other network servers with databases
having presentation information. (coI.2:58-62) In addition, Kjorsvik teaches obtaining
presentations directly from external systems eliminates the need to compose the
presentation within the system. (col.4:20-25) Consequently, it would have been obvious
to one of ordinary skill in the art (e.g. a network engineer) to modify the system of

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Art Unit: 3992

Kjorsvik to select presentations directly from external sources, such as other network
servers, for the advantage of eliminating the need to compose the presentation within
the system. As such, selecting the presentation directly from an external network server
database eliminates the need to aggregate the presentation at the network server prior
to being provided to the individual PC because the presentation would be coming
directly from the external network server.
Second, Kjorsvik does not disclose "for each set the respective content provider
may provide scheduling instructions tailored to the set of content data to control at least
one of the duration, sequencing, and timing of the display of said image or images

generated from the set of content data" because Kjorsvik discloses the duration,
sequencing, and timing of the content data (presentations) is controlled by either the
administration module #26 (col. 3:41-43. col. 4: 17-18) or the user of the individual PC. (col.
5:24-32)

Kjorsvik teaches, however, that obtaining presentations directly from external
systems eliminates the need to compose the presentations within the system. (coI.4:2025) Since the device of Kjorsvik may obtain presentations that have been composed on
external systems, it would be obvious to one of ordinary skill in the art (e.g. a network
engineer) to modify the system of Kjorsvik to permit the device to obtain scheduling
instructions from these external systems to control anyone of the duration, sequencing,
or timing of the provided presentation for the advantage of permitting the content
provider the added flexibility of staging its provided presentation on the individual user's
computer.

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Art Unit: 3992
As to claim 15, Kjorsvik discloses a link control option (control menu,' col. 5:27)
enables the user to establish a link with an information location and the system control
device (eject button) establishes the link with the information location in response to
selection of the link control option (selecting an option on the control menu to go to another
presentation) .
(By pushing the eject button or other designated key on the PC keyboard, or correct mouse
.button, when a presentation is in progress, a control menu will appear on the user's screen
over the current slide. This menu gives the user various possibilities by which to control the
presentation. col. 5:25-32)
37.

Claim 14 is rejected under 35 U.S.C. 103(a) as being unpatentable over

Kjorsvik in view of Salm.
Claim 14 is dependent upon claim 13. As such, the claim rejection above
addressing each limitation of claim 13 is incorporated here. Kjorsvik does not disclose
the display device comprises a television. Salm teaches, however, the family TV set as
a computer monitor. (entire article) Consequently, it would have been obvious to one of
ordinary skill in the art (e.g., a network engineer) to modify the individual PCs of
Kjorsvik with televisions as display devices for the advantage cheap and readily
available display devices.

IL DEFTS0008778

Control Number: 95/001,577

Page 34

Art Unit: 3992

REASONS FOR NOT ADOPTING
PROPOSED REJECTIONS (1 )-(2) OVER KJORSVIK
38.

First, Kjorsvik does not disclose the limitation "without the content data being

aggregated at a common physical/ocation remote from the content display system prior
to being provided to the content display system". 3PR, however, argues this limitation is
anticipated at col. 2:58-62, col. 4:19-24, and col. 4:57-60. (Request. pgs. 59-60. 64-65. 69-70.
75-76. 83. and 91)
"Administration module 26 also has the capability of
communicating with external sources, including other
network servers with databases having presentation
information, as well as other outside sources of data and
images." (Kjorsvik, 2:58-62)
"Lastly, presentations may be obtained or provided to
external systems andlor other outside sources over external
communication lines. This enables the one administration
module for the system to obtain or provide presentations
directly from or to external sources, so as to eliminate the
need for composing them within the system." (Kjorsvik,
4:19-24)
"In FIG. 10, control is provided over the importing and
exporting of presentations (scripts) and over the options
available for printing the text and the visual information."
(Kjorsvik, 4:57-60)

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Control Number: 95/001,577

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Art Unit: 3992

Kjorsvik discloses the presentations being stored in a system database located
on a network

serve~

prior to being provided to the individuat network PCs for display on

the computer screens. (col. 2:10-15) As such, Kjorsvik discloses the content data
(presentations) are aggregated at a common physical location (system database on the
network server) prior to being provided to the content display system (individual network

pC). Consequently, Kjorsvik does not anticipate this limitation at col. 2:58-62, col. 4: 1924, and

GO/.

4:57-60. Further, 3PR does not rely on a secondary reference to teach this

limitation because 3PR alleges this limitation is anticipated by Kjorsvik. For at least
these reasons, proposed rejections (1)-(2) are not adopted.
Second, Kjorsvik does not disclose "for each set the respective content provider

may provide scheduling instructions tailored to the set of content data to control at least
one of the duration, sequencing, and timing of the display of said image or images
generated from the set of content data". 3PR, however, argues this limitation is
anticipated at col. 3:30-43, col. 5: 1 4-17, and col. 3:58-65. (Request, pgs. 60-61. 65-66. 7/, 76,
84. and 92).

Kjorsvik discloses the duration, sequencing, and timing of the content data
(presentations) is controlled by either the administration module (col. 3:41-43. col.4: 17-18)
or the user of the individual PC. (col. 5:24-32) Kjorsvik, however, does not disclose the
duration, sequencing, and timing of the content data (presentations) is provided by a
content provider (other network server with a database of presentations). For least this
reason, proposed rejections (1)-(2) are not adopted.

IL DEFTS0008780

Control Number: 95/001,577

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Art Unit: 3992
REASONS FOR NOT ADOPTING
PROPOSED REJECTIONS (3)-(5) OVER RAKAVY
39.

First, Rakavy does not disclose the limitation "without the content data being

aggregated at a common physical location remote from the content display system prior
to being provided to the content display system". 3PR, however, argues this limitation is
anticipated at col. 5:54-57, col. 5:33-35, and co/. 12:6-15, which are reproduced below.
(Request. pgs. 99-101, 103,106-107,101,115, and 120)

"In an alternate embodiment of the present invention, the
selected advertisement may be stored on anyone of the
p1urality of advertising system servers connected to the
Network 700." (Rakavy, 5:54-57)
"The main roles of the Advertising System Server 600 are to

store Advertisements 50, transfer the Advertisements 50 to the
Loca] Computer 500, and collect user feedback." (Rakavy,
5:33-35)
"The Advertisement Feeder 250, is responsible for adding new
Advertisements 50 to the User Preference and Advertisement
Database 230. Advertisements 50 preferably are provided
from the Internet through the Internet Feeder 270, however,

the Advertisements Feeder 250 is not dependent on the type of
advertisement source and may receive Advertisements 50
from other sources, such as commercial on-line services, via
other feeder mechanisms and other types of polite agents. II
(Rakavy, 12:6-15)
Rakavy discloses the advertisement feeder #250 is responsible for adding new
advertisements to the advertisement database #230. (co/. 12:5-8). Rakavyalso
discloses the advertisement display manager #210 selects and displays advertisements

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Art Unit: 3992
#50 from the user preference and advertisements database #230. (col. 10:43-45) As

such, Rakavy discloses the content data (advertisements) are aggregated at a common
physical location (advertisement database #230) prior to being provided to the content
display system (local computer). Consequently, Rakavy does not anticipate this
limitation at col. 5:54-57, col. 5:33-35, and col. 12:6-15.
In addition, Rakavy does not make this claim limitation obvious because/lgure 4
discloses the only input to the Advertisements Display Manager #210 is the Interad
Database #230. As such, it would NOT be obvious to one of ordinary skill in the art to
modify the system of Rakavy so that the content data (advertisements) are NOT
aggregated at a common physical location (database #230) because.tlgure 4 discloses
other software modules are dependent upon the database #230 and such a modification
would impact the operation of the dependent software modules. Further, 3PR does not
rely on a secondary reference to teach this limitation because 3PR alleges this. limitation
is anticipated by Rakavy. For at least these reasons, proposed rejections (3)-(5) are
not adopted.
Second, proposed rejection (5) is not adopted because it does not set forth a
prima facie case of obviousness as required by Graham v. John Deere Co., 383 U.S. 1,
148 USPQ 459 (1966). The factual inquiries set forth in Graham v. John Deere Co that
are applied for establishing a background for determining obviousness under 35
U.S.C. 103(a) are summarized as follows:
1.
2.
3.

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.

IL DEFTS0008782

Control Number: 95/001,577
Art Unit: 3992
4.

l
I
~

t

f

Page 38

Considering objective evidence present in the application indicating
obviousness or nonobviousness.

However, 3PR does not ascertain the differences between Rakavy and the
claims at issue. (Request. pg. 125) For the reader's convenience, 3PR's statement on
this proposed rejection is set forth below

E.

U.S. Patent No. 5,913,040 to Rakavy and U.S. Patent No. 5,748,190 to Kjorsvik
Claims 1,3,5, 7,9, 10, 12, 13, and 15 are unpatentable under 35 U.S.C. § 103 as

being obvious over the combination of Rakavy and Kjorsvik as discussed below. As
described

above~

Rakavy and Kjorsvik individually disclose all of the limitations of

claims 1, 3, 5, 7, 9, 10, 12, 13, aild 15. However, to the extent the Examiner determines
that Rakavy is missing

~

limitation, Kjorsvik provides the missing feature. Additionally,

to the extent the Examiner 'determines that Kjorsvik is missing a limitation, Rakavy
provides the missing feature.
A person of ordinary skill in the art would ha.ve been motivated to combine
Rakavy and Kjorsvik because both are related to the display of content to a user during
idle periods. Furthermore, a person of ordinary skillin the a.rt could have combined the
elements taught be Rakavy and Kjorsvik by known methods and would have recognized
that the results of the combination were predictable.
In addition, 3PR alleges Rakavy anticipates' each and every limitation of claims

1, 3,5,7,9. 10. 12-13, and 15 while simultaneously arguing that these claims are also
obvious over Rakavy in view of Kjorsvik. (Request. pgs. 98-122) Since this proposed
rejection does not set forth the differences between Rakavy and the claims at issue as

IL DEFTS0008783

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Art Unit: 3992
required by Graham v. John Deere Co. to establish a prima facie case of obviousness,
proposed rejection (5) is not adopted.

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Conclusion
40.

All correspondence relating to this inter partes reexamination proceeding should

be directed:
By Mail to:

Mail Stop Inter Partes Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent.& Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450

By FAX to:

[phone]
Central Reexamination Unit

By hand:

Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314

Registered users of EFS-Web may alternatively submit such correspondence via the
electronic filing system EFS-Web, at:
https:l/sportal.uspto.gov/authenticateiauthenticateuserlocalepf.html.
EFS-Web offers the benefit of quick submission to the particular area of the
Office that needs to act on the correspondence. Also, EFS-Web submissions are "soft
scanned" (i.e., electronically uploaded) directly into the official file for the reexamination
proceeding, which offers parties the opportunity to review the content of their
submissions after the "soft scanning" process is complete.
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. 314(c) requires
that inter partes reexamination proceedings "will be conducted with special dispatch"

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Art Unit: 3992
(37 CFR 1.937). Patent Owner extensions of time in inter partes reexamination
proceedings are provided for in 37 CFR 1.956. Extensions of time are not available for
third party requester comments, because a comment period of 30 days from service of
patent owner's response is set by statute. 35 U.S.C. 314(b)(3).
The patent owner is reminded of the continuing responsibility under 37 CFR
1.985(a) to apprise the Office of any litigation activity, or other concurrent proceeding,
involving USP 7,400,274!throughout the course of this reexamination proceeding. The
third party requester is also reminded of the ability to similarly apprise the Office of any
such activity or proceeding throughout the course of this reexamination proceeding.
See MPEP §2686 and 2686.04.
Any inquiry concerning this communication or earlier communications from the
examiner, or as to the status of this proceeding, should be directed to the Central
Reexamination Unit at telephone number [phone].
Signed:
IDeandra M. Hughesl

Primary Examiner, AU 3992

Conferees:

MARK J. REINHART
CRU SPE-AU 3992

IL DEFTS0008786