Case 5:15-cv-02008-EJD Document 81-5 Filed 03/29/16 Page 1 of 7
`Case 5:l5—cv—O2008—EJD Document 81-5 Filed 03/29/16 Page 1 of 7
`
`
`
`EXHIBIT 4
`
`EXHIBIT 4
`
`

`
`f
`
`Case 5:15-cv-02008-EJD Document 81-5 Filed 03/29/16 Page 2 of 7
`
`12/05/00 TUE 18: 03 FAX 303 0
`
`3450
`
`DORSEY & WHITNEY
`
`·....:., /
`Express Mail No. EL 759 367 709 US·
`Attorney Docket No. 4942.02 ,/: __ -,;
`
`.Jtl°ll/8
`!)). ~.edCJJ1.-­
`-;;;· /,v 1
`!>/Cl;
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE OFFIC.IAL
`{2.({1
`
`In re Patent Application of:
`
`WOLZEIN
`
`Serial No.; 09/054,740
`
`Filed: April 3, 1998
`
`r;~~
`
`Group Art: 2711
`
`Examiner: John W. :Miller
`
`Title: MEDIA ONLINE SERVICES ACCESS SYSTEM AND METHOD
`
`Assistant Commissioner for Patents
`Washington, D.C. 20231
`
`Ex pre"" Mailing !<Wei number: m. 759 167 709 US
`
`Dnre of 1)<0posit: December ~ 2000
`
`I hcn=by certify th"t this imper or fee is being deposlced wirh the United
`S~ Postal Service "E><press Mail Pose Office 10 Address=" service
`llilder 37 CFn. 1.1 O on the date indicated above and is addressed to the
`A>sistant Commissioner For Patents. Washington. ri.C- :2()'.!31
`
`4
`
`i
`
`' 8
`i
`i
`' f ;
`I
`" I I
`
`[.
`
`RESPONSE TO OFFICE ACTION
`
`Dear Assistant Commissioner:
`
`This Response is filed in reply to the Office Action mailed June 7, 2000, in regard to the
`
`above-referenced application rejecting claims 18-29. Applicant respectfully requests
`
`reconsideration of all pending claims and entry of the fol1owing claim amendments as well as the
`
`issuance of a Notice of Allowance.
`
`Please amend the above-identified application as follows.
`
`~-----~--_. _. ~~Claims
`{J'S':
`(Amended) A method of providing to a user of online information services automatic and
`
`direct access to online information through an address associated with an online information
`
`source provided with a video program comprising:
`
`OPENTV2008-00001622
`
`

`
`Case 5:15-cv-02008-EJD Document 81-5 Filed 03/29/16 Page 3 of 7
`
`12/05/00 TUE 18:04 FAX 303 0
`
`3450
`
`DORSEY & WHITNEY
`
`l4J 003
`
`indicat!ng to the user that an address bas been provided with said video program; and
`
`electronically extracting said address [to establish] and automatically e~t<;!.])lishing in
`
`respt)nse to a user initiated command a direct communication link with the online information
`
`slcc associated with said address so that the user has direct access to the online information.
`
`------\&.
`
`(Amended) A method of providing to a user of online information services [to a user of
`
`such online services] automatic and direct access to online information, comprising the steps of:
`
`receiving a television broadcast signal having an information signal representing the
`
`address of an onllne information source;
`
`extracting the address of said online information source from said received television
`
`broadcast signal;
`
`automatically using said a~ess, in response to a user initiated command, to transmit a
`
`signal to connect said user directly with the online information source associated with said
`,...··
`/?
`/a:ddress so that the use/ has direct access to the online information; and
`/
`L,/
`
`receiving online information signals from said online information provider.
`
`(Amended) A method of providing to a user of online information services, at the time of
`
`viewing a video program represented by an electronic signal, automatic and direct access to
`
`online information through a link provided in said video program, comprising:
`
`indicating to the user that an address is available for establishing communication with an
`
`online information source;
`
`electronically extracting, in response to a user initiated command, an address associated
`
`with an online information source from an information signal embedded in said electronic signal,
`
`and automatically using said extracted address to establish a direct communication link with the
`
`OPENTV2008-00001623
`
`

`
`Case 5:15-cv-02008-EJD Document 81-5 Filed 03/29/16 Page 4 of 7
`
`12/05/00 TUE 18: 04 FAX 303 '
`
`n
`
`. 3450
`
`DORSEY & WHITNEY
`
`@004
`
`Serial No.: 09/054,740
`Page3
`
`online information source associated with said extracted address so that the user has direct access
`
`to the online information.
`
`'6
`,,£5':
`
`(Amended) A method of providing to a user of online information services automatic and
`
`direct access to online information through a link provided in a video program? comprising:
`
`indicating to the user that a link to online information services is available for receiving
`
`the Online information; and
`
`automatically and directly electronically accessing said online information associated
`
`with said link in response to a user initiated command so that the user has direct access to the
`
`online information.
`
`(Amended) A media online services access system for providing to a user of online
`
`information services while viewing or listening to a video or audio program represented by an
`
`electronic signal, automatic and direct access to Online information by establishing a direct digital
`
`communication link with an online information source through a link provided in said electronic
`
`signal, comprising:
`
`means for indicating to the user that an address is available for extraction from said
`
`electtonic signal which permits communication with an online information source; and
`
`means for extracting an address associated with an online information source from an
`
`information signal embedded in said electronic signal, and for automatically establishing__,_jn
`
`response to a user initiated command, a direct link with the online information source associated
`
`~ with said extracted address so that the user has direct access. to the online information.
`-----------
`-
`-
`-
`.
`
`OPENTV2008-00001624
`
`

`
`Case 5:15-cv-02008-EJD Document 81-5 Filed 03/29/16 Page 5 of 7
`
`12/05/00 TUE 18:04 FAX 303
`
`' 3450
`
`DORSEY & WHITNEY
`
`f4J 005
`
`Serial No.: 09/054,740
`Page4
`
`REMARKS
`
`Claims 18-29 are rejected by the Examiner. In particular, claims 18-29 are rejected under
`
`35 USC §103 as obvious over Throckmorton et al (5,818,441) (hereinafter, ''Throckmorton"). In
`
`the Office Action, the Examiner rejected clalms 18-29 under 35 U.S.C. 103(a) as being
`
`unpatentable over Throckmorton et al (U.S. Patent Number 5,818,441).
`
`With respect to such rejection, the Examiner stated that Tltrockmorton discloses a system
`
`which inserts data associated with a broadcast t~levision program into the vertical blanking
`
`interval of a television signal. When the associated data contains pointers (i.e, URLs) to
`
`locations across a two-way channel, as set forth by the Examiner, the user can access information
`
`of particular relevance to the television program. The Examiner also stated that while the
`
`reference differs from the claimed invention in that it is silent with respect to whether or not the
`
`user is provided with an explicit indication of the presence of an address, such distinction is not a
`
`"patentable distinction".
`
`Applicant respectfully disagrees with the rejection and Applicant appreciates that the
`
`Examiner agreed to an Interview regarding the case. The Applicant met with the Examiner on 27
`
`October 2000 to discuss the rejection and the Throckmorton reference and agreement was
`
`reached that the §103 rejection was overcome by proposed amended claims. The Applicant was
`
`represented by Scott Doyle and the inventor, Thomas Wolzein. Applicants representatives
`
`explained that Throck.Inorton does not describe or teach a system and method which allows
`
`"direct conununication link" which is "automatically" established by a user command "so that
`
`the user has direct access to online information" from an online provider, as set forth in amended
`
`OPENTV2008-00001625
`
`

`
`Case 5:15-cv-02008-EJD Document 81-5 Filed 03/29/16 Page 6 of 7
`
`12/05/00 TUE 18:04 FAX 303
`
`3450
`
`DORSEY & WHITNEY
`
`[4J 006
`
`Serial No.: 09/054,740
`Page5
`
`claims 18-29. As explained to the Examiner, it is important that the user not have to access links
`
`which are stored in a directory or access one of a series of links in a menu. In Applicant's
`
`amended claims, the choice for the user is from the video or audio program directly to the
`
`additional content, without the need of intermediate steps. In Applicant's invention, the user
`
`need not have to select amongst several diffe•ent links. Therefore, in Applicant's invention, the
`
`user never has to leave the screen to access additional content because access is "direct" from the
`...
`user to the content. Based on the above, the difference is substantial because Throckmorton does
`not teach "directn and "automatic" access to the online information from the primary video or
`
`audio program and thus. the differences between Wolzien's claims and the Throckmorton
`
`reference are such that the subject matter as a whole would not have been obvious to one of
`
`ordinary skill in the art.
`
`Regarding claims 18-22 and 24-29, these claims are additionally patentable because the
`
`"indicating means" or "indicating" step provides a subtle function of alerting the user that more
`
`content is directly and automatically available to the user through a simple user command. Thus,
`
`a user does not have to access storage or a menu to determine whether any addresses were
`
`delivered to the client device and if delivered, which of the addresses to select for establishing a
`
`communications link with an online site.
`
`As agreed to by the Examiner, Applicant has added the terms of a "direct"
`
`communication link which is "automatically" established by a user command "so that the user
`
`has direct access to online information" from an online provider to all independent claims, and
`
`thus all dependent claims, pending in the case. Therefore, Applicant respectfully requesrs that
`
`OPENTV2008-00001626
`
`

`
`Case 5:15-cv-02008-EJD Document 81-5 Filed 03/29/16 Page 7 of 7
`
`DORSEY & WHITNEY
`
`141007
`
`Serial No.: 09/054,740
`Page 6
`
`the rejection be withdrawn. In view of the above amendments, Applicant now believes that the
`claims to be in condition for allowance, and a Notice of Allowance is requested.
`Additionally. the Applicant has provided herewith a check in the amount of $ 890.00 to
`pay for the three month extension fee for filing this Response. Applicant requests the United
`States Patent Office to charge any overpayments or additional filing fees under 37 C.F.R. 1.16
`
`and 1.17 to the Applicants deposit account number 04-1415.
`If the Examiner believes that any issues remain unresqJ,.ved, he is invited to telephone
`Scott Doyle at (303) 628-1504 or the undersigned to expedite allowance.
`Respectfully submitted,
`
`Date: 5 December 2000
`
`fohn T. Kennedy, Esq.
`Attorney for Applicant
`USPTO Reg. No. 42,717
`Dorsey & Whitney LLP
`Customer No. 20686
`Republic Plaza Building, Suite 4700
`370 Seventeenth Street
`Denver, CO 80202-5644
`(303) 260~6362
`
`OPENTV2008-00001627