Apple, Inc. v. Motorola, Inc. et al

Filing 97

Declaration of Carlos A. Rodriguez filed by Defendants Motorola Mobility, Inc., Motorola, Inc. re: 96 Claims Construction Initial Brief, 95 Motion Requesting Claims Construction (Attachments: # 1 Exhibit 1 - Patent No. 6,275,983, # 2 Exhibit 2 - Patent No. 5,969,705, # 3 Exhibit 3 - Patent No. 5,566,337, # 4 Exhibit 4 - Patent No. 5,455,599, # 5 Exhibit 5 - Patent No. 6,424,354, # 6 Exhibit 6 - Reissued Patent No. RE 39,486, # 7 Exhibit 7 - Patent No. 5,929,852, # 8 Exhibit 8 - Patent No. 5,946,647, # 9 Exhibit 9 - Patent No. 5,481,721, # 10 Exhibit 10 - Patent No. 6,493,002, # 11 Exhibit 11 - Patent No. 6,175,559, # 12 Exhibit 12 - Patent No. 5,490,230, # 13 Exhibit 13 - Patent No. 5,319,712, # 14 Exhibit 14 - Patent No. 5,572,193, # 15 Exhibit 15 - Excerpts from '983 Patent Prosecution History, # 16 Exhibit 16 - Excerpts from '354 Patent Prosecution History, # 17 Exhibit 17 - Excerpts from '486 Patent Prosecution History, # 18 Exhibit 18 - Excerpts from '230 Patent Prosecution History, # 19 Exhibit 19 - Apple's Infringement Contentions Claim Chart for '983 Patent, # 20 Exhibit 20 - Apple's Infringement Contentions Claim Chart for '705 Patent, # 21 Exhibit 21 - Apple's Infringement Contentions Claim Chart for '337 Patent, # 22 Exhibit 22 - Apple's Infringement Contentions Claim Chart for '599 Patent, # 23 Exhibit 23 - Apple's Infringement Contentions Claim Chart for '354 Patent, # 24 Exhibit 24 - Apple's Infringement Contentions Claim Chart for '486 Patent, # 25 Exhibit 25 - Apple's Infringement Contentions Claim Chart for '852 Patent, # 26 Exhibit 26 - Apple's Infringement Contentions Claim Chart for '647 Patent, # 27 Exhibit 27 - Apple's Infringement Contentions Claim Chart for '721 Patent, # 28 Exhibit 28 - Apple's Infringement Contentions Claim Chart for '002 Patent, # 29 Exhibit 29 - Excerpts from NeXTSTEP Object-Oriented Programming and the Objective C Language, # 30 Exhibit 30 - July 30, 2010 ITC Order Construing Terms of Asserted Claims in Inv. No. 337-TA-704, # 31 Exhibit 31 - April 4, 2011 Joint Motion to Amend Filed in ITC Inv. No. 337-TA-710, # 32 Exhibit 32 - Excerpts from '002 Patent Prosecution History, # 33 Exhibit 33 - Patent No. 5,588,105, # 34 Exhibit 34 - Patent No. 5,659,693, # 35 Exhibit 35 - Henderson & Card Article, # 36 Exhibit 36 - Patent No. 5,202,961, # 37 Exhibit 37 - Patent App. No. 08/316,237) (Hansen, Scott)

EXHIBIT 17

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

Address:

P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspio.gov

I

APPLICATION NO.
10/408,789

I

FILING DATE

04/03/2003

758 7590 03/09/2004

FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041

FIRST NAMED INVENTOR

Michael A. Cleron

I ATTORNEY DOCKET NO. I CONFIRMATION NO.

18602-07124

1
1

3683
EXAMINER

COURTENAY III, ST JOHN

ART UNIT

I

2126

DATE MAILED: 03/09/2004

PAPER NUMBER

3

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

PTO-90C (Rev. 10/03)

1
I

Application No.

Applicant(s)

10/408,789

CLERON ET AL.

Examiner

Office Action Summary

Art Unit

2126
-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --

St. John Courtenay III

Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 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, may a 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)Z Responsive to communication(s) filed on 03 April 2003.
2a u This action is FINAL.
2b)Z This action is non-final.
3)u 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

42]

Claim(s) 1-22 is/are pending in the application.
4a) Of the above claim(s)

is/are withdrawn from consideration.

5 u Claim(s)
is/are allowed.
6)Z Claim(s) 1-22 is/are rejected.
7)u Claim(s)
is/are objected to.
8)u Claim(s)

are subject to restriction and/or election requirement.

Application Papers

9 u The specification is objected to by the Examiner.
10)Z The drawing(s) filed on 03 April 2003 is/are: a)Z accepted or be 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).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
11)Z The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12)u Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
aCIAll be Some * c)u None of:
1. u Certified copies of the priority documents have been received.
2. u Certified copies of the priority documents have been received in Application No.

.
3. u 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.

ST JOR COURTEN AY III
PR!MARY EXAMIN

Attachment(s)

1)E]
[

Notice of References Cited (PTO-892)
2) u Notice of Draftsperson's Patent Drawing Review (PTO-948)
3) El Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08)
Paper No(s)/Mail Date Oct. 14. 2003.

4) u Interview Summary (PTO-413)
Paper No(s)/Mail Date.
5)0 Notice of Informal Patent Application (PTO-152)
6)
Other:

u

U.S. Patent and Trademark Office

PTOL-326 (Rev. 1-04)

Office Action Summary

Part of Paper No./Mail Date 7

Application/Control Number:
10/408,789
Art Unit: 2126

•

Page 2

Detailed Action
1. Claims 1-22 are presented for examination.
2. This reissue application was filed without the required offer to
surrender the original patent or, if the original is lost or
inaccessible, an affidavit or declaration to that effect. The original
patent, or an affidavit or declaration as to loss or inaccessibility of
the original patent, must be received before this reissue
application can be allowed. See 37 CFR 1.178.
3. The Certificate under 37 C.F.R. § 3.73(b) does not appear to
be proper in that it identifies the present reissue, and not the
patent that is the subject of the reissue, as being assigned.
4. The reissue oath/declaration filed with this application is
defective. It does not adequately identify at least one error as per
C.F.R. §1.175(a)(1).
5. Stating that one filed a broadening reissue to "further claim
subject matter disclosed in the specification" or to claim
additional claims because of a "failure to claim," without
identifying the specific feature is not adequate. See MPEP 1414
("Rather, the oath/declaration must specifically identify an
error.")
6. The statement of claiming subject matter "pertaining to types
of services provided by network components and interconnected
abstract classes" is not considered a specific identification of the
error, but a general statement of what was not claimed.
7. Furthermore, an exact copying of the new claim does not meet
the requirement. See MPEP 1414 ("it is not sufficient to merely

Paper #7 - First Office Action

•
Application/Control Number:
10/408,789
Art Unit: 2126

Page 3

reproduce the claims with brackets and underlining and state that
such will identify the error").
8. The reissue oath/declaration filed with this application is
further defective because none of the errors which are relied
upon to support the reissue application are errors upon which a
reissue can be based. See 37 CFR 1.175(a)(1) and MPEP § 1414.
The statement of error is directed to improper recapturing of
broadened claimed subject matter surrendered in the application
for the patent upon which the present reissue is based. See
explanation, below.
9. Claims 14-18 and 22 are rejected under 35 U.S.C. 251 as
being an improper recapture of broadened claimed subject matter
surrendered in the application for the patent upon which the
present reissue is based. See Hester Industries, Inc. v. Stein.
Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re
Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball
Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295
(Fed. Cir. 1984).

10. A broadening aspect is present in the reissue which was not
present in the application for patent. The record of the application
for the patent shows that the broadening aspect (in the reissue)
relates to subject matter that applicant previously surrendered
during the prosecution of the application. Accordingly, the narrow
scope of the claims in the patent was not an error within the
meaning of 35 U.S.C. 251, and the broader scope surrendered in
the application for the patent cannot be recaptured by the filing
of the present reissue application.

Paper #7 - First Office Action

•
Application/Control Number:
10/408,789
Art Unit: 2126

•
Page 4

11. Applicant's arguments on paper #31, page 4 (Amendment C,
received April 5, 2000), of the patent application 6,212,575 state:
"In particular, the limitation in claim 3 has been incorporated into
claim 1", this amendment and the cancellation of claim 3 being
made to overcome the prior art of record. With the
aforementioned amendment, Applicant added the limitations "the
network component layer includes application programming
interfaces" and, "a first class included in the application
programming interfaces to construct a first network navigation
object that represents different network resources available on
the computer network." Applicant has broadened claim 1 of the
patent with new reissue independent claim 14 that eliminates the
limitation of "a first class included in the application programming
interfaces ..." to more broadly claim the subject matter of the
patent by impermissibly recapturing previously surrendered
subject matter.
12. Claims 1-22 are rejected as being based upon a defective
reissue declaration under 35 U.S.C. §251, as set forth above. See
37 CFR 1.175. The nature of the defect(s) in the declaration is set
forth in the discussion above in this Office action.
13. 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.

Claim 22 is rejected under 35 U.S.C. 103(a) as being
unpatentable over Reinhardt, Andy, "The Network with Smarts"
BYTE, Oct. 1994, pages 51-64, in view of Lippman, Stanley B.,
"C++ Primer" 2 nd edition, Addison-Wesley, 1991, pages 394-397.
Paper #7 - First Office Action

•
Application/Control Number:
10/408,789
Art Unit: 2126

•
Page 5

As per claim 22:
Reinhardt discloses the invention substantially as claimed:
Reinhardt teaches a network navigation object coupled to a
computer network [i.e., agents used on a network, see Agent
Foundation description beginning p. 62 and entire agent
disclosure]. The computer readable medium is inherent in the
reference.
However, Reinhardt does not explicitly teach the following
additional limitations:
Lippman teaches the notoriously well known use of abstract
classes in the context of object-oriented hierarchies [e.g, see
"abstract base class" shown in fig. 8.3 (page 397), and defined
at the bottom of page 395 as "a class from which other classes
can be derived" ].
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to improve upon the system
taught by Reinhardt by implementing the improvements detailed
above because it would provide Reinhardt's agent system with
the enhanced capability of "a class from which other classes can
be derived" [page 395].

Paper #7 - First Office Action

•
Application/Control Number:
10/408,789
Art Unit: 2126

•

Page 6

How to Contact the Examiner:
Any inquiry concerning this communication or earlier communications from
the Examiner should be directed to St. John Courtenay III whose voice
telephone number is [phone]. A voice mail service is also available
at this number.
Normal Flex work schedule: M - F
7:30 AM - 4:00 PM
• All responses sent by U.S. Mail should be mailed to:
Commissioner for Patents
PO Box 1450
Alexandria, VA 22313-1450

Patent Customers advised to FAX communications to the USPTO
http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/f
axnotice.pdf
Effective Oct. 15, 2003, ALL patent application correspondence
transmitted by FAX must be directed to the new PTO central FAX
number:
NEW PTO CENTRAL FAX NUMBER:
703-872-9306

• Any inquiry of a general nature or relating to the status of this
application should be directed to the TC 2100 Group receptionist:
[phone].
Please direct inquiries regarding fees, paper matching, and other
issues not involving the Examiner to:
Technical Center 2100 CUSTOMER SERVICE: 703 306-5631
The Manual of Patent Examining Procedure (MPEP) is available online at:
http://www.uspto.gov/web/offices/pac/mpep/index.html

S . JOHN COURTENAY III
PRIMARY EXAMINER
Paper #7 - First Office Action

Application/Control No.
10/408,789
Examiner

Art Unit

St. John Courtenay III

Notice of References Cited

Applicant(s)/Patent Under
Reexamination
CLERON ET AL.

2126

Page 1 of 1

U.S. PATENT DOCUMENTS

Document Number
Country Code - Number- Kind Code

*
A

US-

E

US-

F

US-

G

US-

1-1

US-

1

US-

J

US-

K

US-

L

US-

M

,

US-

D

Classification

US-

C

Name

-

US-

B

Date
MM YYYY

USFOREIGN PATENT DOCUMENTS

Document Number
Country Code - Number- Kind Code

*

Date
MM-YYYY

Country

Name

Classification

N
0
P
Q
R
S
T
NON-PATENT DOCUMENTS

*

Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
U

Reinhardt, Andy, "The Network with Smarts" BYTE, Oct. 1994, pages 51-64

V

Lippman, Stanley B., "C++ Primer' 2nd edition, Addison-Wesley, 1991, pages 394-397

W

X
A copy of th s reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM YYYY format are publication dates. Classifications may be US or foreign.
U.S. Patent and Trademark Office

PTO-892 (Rev. 01-2001)

Notice of References Cited

Part of Paper No. 7

IN THE UNITED STATES
PATENT AND TRADEMARK OFFICE
Michael A. Cleron et al.
APPLICATION NO.:

10/408,789

FILING DATE:

April 3, 2003

TITLE:

EXTENSIBLE, REPLACEABLE NETWORK COMPONENT

EXAMINER:

St. John Courtenay

CE1VED

JUL 1 6 2004

GROUP ART UNIT: 2126
ATTY. DKT. NO.:

SiTt

Technology Center 2100

18602-07124
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: Mail Stop Amendment, Commissioner For Patents, P. O. Box 1450, Alexandria, VA 22313-1450, on
the date shown below. If the Express Mail Mailing Number is filled in below, then this correspondence is being deposited
with the United States Postal Service "Express Mail Post Office to Addressee" service pursuant to 37 CFR 1.10.

Dated:

3,(A

20 0 /
6

By:
Rimma Budnitskaya, Reg. No. 48,237

EXPRESS MAIL MAILING NUMBER: EL599907517US

MAIL STOP AMENDMENT
COMMISSIONER FOR PATENTS
P. O. BOX 1450
ALEXANDRIA, VA 22313-1450

AMENDMENT A
SIR:
This Amendment for the patent application identified above is in response to the Office
Action dated March 9, 2004.
Amendments to the Claims begin on page 2 of this paper.
Remarks begin on page 7 of this paper.
07/13/2004 WABRHAM1 00000057 192555 10408789
01 FC:1251

110.00 DA

1

18602/07124/SF/5122004.3

PATENT

AMENDMENTS TO THE CLAIMS
Please amend the claims as follows:

(Original) An extensible and replaceable layered component computing

1.

arrangement residing on a computer coupled to a computer network, the layered arrangement
comprising:
a software component architecture layer interfacing with an operating system to
control the operations of the computer, the software component architecture
layer defining a plurality of computing components; and
a network component layer for developing network navigation components that
provide services directed to the computer network, the network component
layer includes application programming interfaces; and
a first class included in the application programming interfaces to construct a first
network navigation object that represents different network resources
available on the computer network, wherein the network component layer
coupled to the software component architecture layer in integrating relation to
facilitate communication among the computing and network navigation
components.
2.

(Original) The computing arrangement of claim 1 wherein the network navigation

components are objects.
3.

(Original) The computing arrangement of claim 1 wherein the application

programming interfaces further comprise a second class for constructing a second network
navigation object representing a data stream for transferring information among objects of the
arrangement.
4.

(Original) The computing arrangement of claim 3 wherein the first network

navigation object is an Item object and the second network navigation object is a Stream object,

2

18602/07124/SF/5122004.3

PATENT
and wherein the Item object spawns the Stream object to obtain information from the network
resource that the Item object represents.
5.

(Original) The computing arrangement of claim 3 wherein the application

programming interfaces further comprise a third class for constructing a third network navigation
object representing additional behaviors provided to computing components of the software
component architecture layer to thereby enable communication between the computing
components and the network navigation components.
6.

(Original) An extensible and replaceable layered component computing

arrangement for providing services directed to information available on computer networks, the
computing arrangement comprising:
a processor;
an operating system;
a software component architecture layer coupled to the operating system to control the
operations of the processor, the software component architecture layer
defining a plurality of computing components; and
a network component layer for creating network navigation components configured to
search and obtain information available on the computer networks, the
network component layer includes application programming interfaces; and
means for constructing a network navigation component that represents different
resources available on the computer network, wherein the network component
layer is integrally coupled to the software component architecture layer to
ensure communication among the computing and network navigation
components.
7.

(Original) The computing arrangement of claim 6 wherein the network

component layer and software component architecture layer comprise means for embedding
components within one another to form a compound document having mixed data types and
formats.

3

18602/07124/SF/5122004.3

PATENT
8.

(Original) The computing arrangement of claim 6 wherein the application

programming interfaces comprise means for constructing a network navigation component that
implements a protocol.
9.

(Original) The computing arrangement of claim 6 wherein the application

programming interfaces comprise means for constructing a network navigation component that
provides additional functionality to existing computing components to enable communication
among the components.
10.

(Original) The computing arrangement of claim 9 wherein the computing

component comprises a computing part having a viewing editor and data content.
11.

(Original) The computing arrangement of claim 10 wherein the computing

component functions to one of transfer files over the networks, remotely log onto another
computer coupled to the networks and view images on a screen of the computing arrangement.
12.

(Original) The computing arrangement of claim 10 wherein the network

navigation component comprises a browsing component.
13.

(Original) The computing arrangement of claim 10 wherein the network

navigation component comprises a component for one of displaying text and displaying movies
on a screen of the computing arrangement.
14. (Cancelled).
15. (Currently Amended) The layered arrangement of claim 19 44, wherein the network
navigation object is adapted to browse the computer network.
16. (Currently Amended) The layered arrangement of claim 19 4-4, wherein the network
navigation object is adapted to display text on a computer display.
17. (Currently Amended) The layered arrangement of claim 19 4-4, wherein the network
navigation object is adapted to display images on a computer display.
4

18602/07124/SF/5122004.3

PATENT
18. (Currently Amended) The layered arrangement of claim 19 4-4, wherein the network
navigation object includes software commands for creating a datastream for transferring
information between objects in the layered component computing arrangement.
19. (Original) An extensible and replaceable layered component computing arrangement
residing on a computer adapted to be coupled on a computer network, the layered arrangement
comprising:
a software component architecture layer interfacing with an operating system to
control the operations of the computer, the software component architecture
layer defining a plurality of computing components;
a network component layer adapted to be coupled to at least one network navigation
component that provides a service directed to the computer network, the
network component layer including an application programming interface; and
a number of interconnected abstract classes included in the application programming
interface, at least one abstract class for defining a network navigation object
that represents a resource available on the computer network, the network
component layer coupled to the software component architecture layer to
facilitate communication among the network navigation component and at
least one computing component.
20. (Original) The layered arrangement of claim 19, wherein the abstract class defines a
network navigation object that represents a method of downloading information from a remote
location on the computer network.
21. (Original) The layered arrangement of claim 19, wherein the abstract class defines a
network navigation object that represents additional behaviors provided to the computing
components of the software component architecture layer for integrating with the network
component layer.
22. (Currently Amended)

A computer program
5

18602/07124/SF/5122004.3

PATENT
product for providing network information services to a user of a computer system coupled to
computer networks, the computer program product comprising a computer-readable medium
containing computer program code for performing the operations:
constructing a network navigation object based on at least one abstract class from a
set of interconnected abstract classes; and
using methods associated with the abstract class to enable interaction between the
network navigation object and at least one computing component in a software
component architecture layer interfacing with an operating system on the
computer system to control the operations of the computer system.
23. (New) The computer program product of claim 22, wherein the network navigation
object is adapted to browse the computer network.
24. (New) The computer program product of claim 22, wherein the network navigation
object is adapted to display text on a computer display.
25. (New) The computer program product of claim 22, wherein the network navigation
object is adapted to display images on a computer display.
26. (New) The computer program product of claim 22, wherein the network navigation
object includes software commands for creating a datastream for transferring information
between objects.

6

18602/07124/SF/5122004.3

REMARKS
Claims 1-22 were pending and stand rejected. In response, claim 14 has been cancelled;
claims 15-18 and 22 have been amended; and new claims 23-26 have been added.
In the second paragraph of the Office Action, Examiner indicated that the reissue
application was filed without the required offer to surrender the original patent or an Affidavit or
Declaration as to inaccessibility of the original patent. In response, Applicants submit original
U.S. Patent Serial No. 6,212,575 Bl.
In the third paragraph of the Office Action, Examiner indicated that Certificate under 37
C.F.R § 3.73 (b) is not proper in that it identifies the present reissue application instead of the
U.S. Patent upon which the present reissue application is based. Applicants submit the requisite
Certificate under 37 C.F.R § 3.73 (b) correctly identifying the U.S. Patent Serial No.
6,212,575B1.
In paragraphs four through eight of the Office Action, Examiner indicated that the
Reissue Declaration is defective because it does not adequately identify at least one error as
required by 37 C.F.R § 1.175 (a)(1). In response, Applicants submit a corrected original Reissue
Declaration that adequately identifies at least one error. The Declaration is signed by inventors
Michael Cleron and Timo Bruck. Applicants submit that the Petition under 37 C.F.R § 1.47 (a)
was filed on September 5, 2003 on behalf of the nonsigning inventor Stephen Fisher. The
petition was granted by the United States Patent and Trademark Office as indicated in the
Decision According Status Under 37 C.F.R § 1.47 (a), a copy of which is submitted.
In paragraph nine of the Office Action, Examiner rejected claims 14-18 and 22 under 35
U.S.C. § 251 as being improper recapture of the subject matter surrendered during the
prosecution of the U.S. Patent Serial No. 6,212,575B1 upon which the present reissue application
is based. In response, Applicants have cancelled claim 14 and amended claims 15-18 to depend
from the independent claim 19.
With respect to claim 22, Examiner has not provided any details on how claim 22 is being
an improper recapture of the subject matter surrendered during the prosecution of the original
patent. Indeed, in paragraph eleven of the Office Action, Examiner stated: "[a]pplicant has
broadened claim 1 of the patent with new reissue independent claim 14 that eliminates the
limitation of "a first class included in the application programming interfaces..." Nowhere in the
Office Action, however, did Examiner indicate how new independent claim 22 is an improper
7

18602/07124/SF/5122004.3

PATENT
recapture of a surrendered subject matter. If Examiner continues to maintain his position with
respect to claim 22, Examiner is respectfully invited to provide further details in support of his
position.
In paragraph twelve of the Office Action, Examiner rejected claim 1-22 as being based
upon a defective reissue declaration under 35 U.S.0 § 251. In response, Applicants submit a
corrected Reissue Declaration that adequately identifies at least one error. Therefore, Applicants
respectfully request Examiner to remove the rejection to claims 1-22 under 35 U.S.C. § 251.
Response to Rejection Under 35 USC 4 103(a) in View of Reinhardt and Lippman
In the 13 th paragraph of the Office Action, Examiner rejected claim 22 under 35 U.S.C. §
103(a) as allegedly being unpatentable in view of Andy Reinhardt "The Network With Smarts",
Byte, October 1994, pages 51-64 ("Reinhardt") to Lippman, Stanley B, "C++ Primer" 2 nd edition,
Addison-Wesley, 1991, pages 394-394 ("Lippman"). This rejection is respectfully traversed.
Amended claim 22 recites, inter alia, a computer program product for providing network
information services to a user of a computer system..., the computer program product for
performing the operations:
constructing a network navigation object based on at least one
abstract class from a set of interconnected abstract
classes; and
using methods associated with the abstract class to enable
interaction between the network navigation object and
at least one computing component in a software
component architecture layer interfacing with an
operating system on the computer system to control the
operations of the computer system. (Emphasis added)

The claimed invention, as recited in claim 22, is directed to a computer program product
for providing network information services to a user of a computer system. The claimed
invention constructs a network navigation object based on at least one abstract class. The
claimed invention also advantageously uses methods associated with the abstract class to enable
interaction between the network navigation object and at least one computing component in a
software component architecture layer. The claimed invention beneficially employs a
"component-based" approach to browsing and retrieving network-oriented information as
opposed to the monolithic application-based approach of prior browsing systems.
8

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PATENT
Reinhardt does not disclose or suggest the claimed invention. Reinhardt is a publication
that discusses intelligent networks that utilize agent-based technology. Although Reinhardt
discloses networks "designed to host software agents, or proxies, that move around the network,
routing or filtering messages sent to a user and seeking out information or services on the user's
behalf' (Reinhardt, page 51, col. 2), there is no disclosure in Reinhardt with respect to employing
a component-based software architecture layer interfacing with an operating system of the
computer system to control the operations of the computer system. As a corollary to this,
Reinhardt does not disclose or suggest "interaction between the network navigation object and at
least one computing component in a software component architecture layer," as claimed.
Although Reinhardt suggests at page 64, col. 1 and col. 3 that the network agents are an
alternative to monolithic on-line services, the modular object-oriented architecture is mentioned
by Reinhardt with respect to the network agents and not software component architecture layer
interfacing with an operating system. Accordingly, claim 22 is patentable over Reinhardt.
Lippman similarly does not cure the deficiency of Reinhardt. Lippman is merely a C++
tutorial describing the features and programming usage of standard C++ language. Although
Lippman discloses at page 395 an abstract base class "designed as a class from which other
classes can be derived", Lippman does not disclose or suggest "a software component
architecture layer interfacing with an operating system on the computer system to control the
operations of the computer system."
Since neither Reinhardt nor Lippman disclose a component-based software architecture
layer interfacing with an operating system, a combination of the references does not produce the
claimed invention. Accordingly, a person of ordinary skill in the art, considering the teachings of
Reinhardt and Lippman would not find the claimed invention obvious.
Claims 23-26 depend either directly or indirectly from independent claim 22 and derive
their patentability from the independent claim from which they depend, in addition to reciting
their patentable features.

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For these reasons, Applicants respectfully submits that all the pending claims, claims 113 and 15-26, are allowable over the cited art of record and request that the Examiner allow the
case.

Respectfully submitted,
MICHAEL C. CLERON et al.
Dated:

0 y By:

/

Rimma Budnitskaya, Reg. No. 48,237
Attorney for Applicant
Fenwick & West LLP
Silicon Valley Center
801 California Street
Mountain View, CA 94041
Tel.: [phone]
Fax: [phone]
18602/07142/SF/5122004

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18602/07124/SF/5122004.3