Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 1 of 25
`
`EXHIBIT 10
`
`DECLARATION OF MELODY DRUMMOND HANSEN IN SUPPORT OF DEFENDANT’S
`RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`Case No. 5:15-CV-02008-EJD
`
`
`
`
`
`
`
`
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 2 of 25
`
`UNITED ST ATES PA TENT AND TRADEMARK OFFICE
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PA TENTS
`P.O. Box 1450
`Alexandria, Virginia 22J 13· 1450
`www.uspto.gov
`
`I ATTORNEY DOCKET NO. I CONFIRMATION NO.
`
`10/377,482
`
`02127/2003
`
`Thomas R. Wolzien
`
`4942.25
`
`6473
`
`06122/2005
`7590
`MORRISON & FOERSTER LLP
`1650 TYSONS BOULEVARD
`SUITE 300
`MCLEAN, VA 22102
`
`EXAMINER
`
`LONSBERRY, HUNTER B
`
`ART UNIT
`
`2611
`
`PAPER NUMBER
`
`DA TE MAILED: 06/2212005
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PT0-90C (Rev. 10/03)
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 3 of 25
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`10/377,482
`
`Examiner
`
`WGL.ZIEN, THOMAS R.
`
`Art Unit
`
`2611
`Hunter B. Lansberry
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE~ 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)12! Responsive to communication(s) filed on 04 Januarv 2005.
`2a)l2! This action is FINAL.
`2b)0 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)12! Claim(s) 18-37 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)12! Claim(s) 18-37 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).
`
`Replacement drawing sheet(s) induding the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`11 )0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PT0-152.
`
`Priority under 35 U.S.C. § 119
`
`12)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.
`
`Attachment(s)
`1) 0 Notice of References Cited (PT0-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`3) '211nformation Disclosure Statement(s) (PT0-1449 or PTO/SB/08)
`Paper No(s)/Mail Date 314105.
`
`4) 0 Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ .
`5) 0 Notice of Informal Patent Application (PT0-152)
`6) 0 Other: __ .
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 1-04)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20050612
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 4 of 25
`
`Application/Control Number: 10/377,482
`Art Unit: 2611
`
`Page 2
`
`DETAILED ACTION
`
`Response to Arguments
`
`1 .
`
`Applicant's arguments filed 1 /4/05 have been fully considered but they are
`
`not persuasive.
`
`Applicant argues that Throckmorton fails to disclose allowing 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, as
`
`claimed by applicant. Specifically it is important that the user not have to access
`
`links, which are stored in a directory or access a series of links in a menu ....
`
`Therefore, in applicants invention, the user never has to leave the screen to
`
`access additional content because access is "direct" from the user to the content.
`
`(response page 2).
`
`Regarding applicant's argument, Throckmorton does teach the use of a
`
`direct communications link, upon user instruction, with an online information
`
`source associated with the address, so that the user has direct access to the
`
`online information. In particular, Throckmorton teaches that a in response to user
`
`input via interface 88, a connection is automatically established with an online
`
`provider via a two way communications system 74, in order to access a website
`
`referenced from a received URL (column 8, line 25-column 9, line 15). As.the
`
`user merely determines what content they wish to view, and the connections are
`
`preformed by the user's terminal without any additional input by the user, the
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 5 of 25
`
`Application/Control Number: 10/377,482
`Art Unit: 2611
`
`Page 3
`
`user is provided with direct access to the content by an a communications link
`
`which is established automatically by users command, as required by claim 18
`
`and 34.
`
`Applicant argues that applicant's invention does not require a user to
`
`leave a screen to access additional content or choose amongst several links, and
`
`thus Throckmorton does not teach direct and automatic access to online
`
`information (response page 2).
`
`Regarding applicants argument, the claims are silent regarding the
`
`navigation of menus or leaving the screen. As noted above, Throckmorton
`
`teaches automatic and direct access in that the user the user merely determines
`
`what content they wish to view, and the connections are preformed by the user's
`
`terminal without any additional input by the user, the user is provided with direct
`
`access to the content by an a communications link which is established
`
`automatically by users command, as required by claim 18 and 34 (column 8, line
`
`25-column 9, line 15).
`
`Applicant's failure to traverse the official notice taken in the previous office
`
`· action is taken to be an admission of prior art.
`
`Claim Rejections - 35 USC§ 102
`
`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:
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 6 of 25
`
`Application/Control Number: 10/377 ,482
`Art Unit: 2611
`
`A person shall be entitled to a patent unless -
`
`Page 4
`
`(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.
`
`2.
`
`Claims 18-30, and 32-38 are rejected under 35 U.S.C. 102(e) as being
`
`anticipated by U.S. Patent 5,818,441 to Throckmorton.
`
`Regarding claim 18, Throckmorton discloses a method (figure 4) of
`
`providing a programming signal (10) and automatic and direct access to online
`
`information (associated data 16) to a user via an address associated with an
`
`online information source comprising:
`
`receiving said programming signal 10 (column 5, line 19-47, column 6,
`
`lines 4-27, data received over the air),
`
`receiving said address (VBI data which contains webpages or URL links to
`
`web pages, column 8, line 14, lines 25-column 9, line 14); and
`
`automatically establishing a direct communication link, upon user
`
`instruction (two way communications subsystem 7 4 connects to the Internet to
`
`retrieve and access information which has been received by the client as a
`
`pointer which indicates where the information actually resides online, after
`
`receiving a request inputted by a user, column 8, lines 30-column 9, line 14), with
`
`an online information source (webpage referenced by URL) associated with said
`
`address so that the user has direct access to the online information.
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 7 of 25
`
`Application/Control Number: 10/377,482
`Art Unit: 2611
`
`Page S
`
`Regarding claims 19, 20, and 34, Throckmorton discloses that the
`
`programming signal may be a television program transmitted over a direct
`
`satellite broadcast (column 4, lines 16-20).
`
`Regarding claim 21, Throckmorton discloses that the associated data
`
`need not be sent in the same medium as the primary data stream (column 7,
`
`lines S9-6S).
`
`Regarding claims 22-23, Throckmorton discloses that the data may be
`
`transmitted in the VBI along with the primary data (column 7, line S3-66).
`
`Regarding claim 24, Throckmorton discloses the use of a two way
`
`communications signal 46 enables a user to retrieve webpages from the Internet,
`
`the associated data stream may include URLs for webpages, a user may then
`
`click on a link, the system automatically connects to an online resource providing
`
`the information directly to the user (column 3, line SS-column 4, line 39, column
`
`6, line 54-column 7, line 5, column 8, line 53-column 9, line 15).
`
`Regarding claim 25, Throckmorton discloses the use of a two way
`
`communications signal 46 enables a user to retrieve webpages from the Internet,
`
`the associated data stream may include URLs for webpages, a user may then
`
`click on a link, the system automatically connects to an online resource providing
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 8 of 25
`
`Application/Control Number: 10/377,482
`Art Unit: 2611
`
`Page 6
`
`the informatiori directly to the user (column 3, line 55-column 4, line 39, column
`
`6, line 54-column 7, line 5, column 8, line 53-column 9, line 15). As Throckmorton
`
`discloses that the programming signal may be a television program transmitted
`
`over a direct satellite broadcast or cable interface(column 4, lines 11-20) and
`
`that the URL and online content need not be sent in the same medium as the
`
`primary data stream {column 7, lines 59-65, column 8, line 45-column 9, line 14),
`
`Throckmorton may receive the address and content before the programming
`
`signal, because the address and content are not transmitted simultaneously with
`
`the programming signal.
`
`Regarding claims 26 and 27, Throckmorton discloses that the content may
`
`be webpages from the Internet (column 9, lines 1-14).
`
`Regarding claims 28-30, Throckmorton discloses that the programming
`
`signal may be an analog or digital television signal (column 4, lines 6-20, 34-39).
`
`Regarding claim 32, Throckmorton discloses a media online services
`
`access system (figures 2- 5) for providing a user of online information services
`
`automatic and direct access (column 8, line 25-column 9, line 15) to online
`
`information relation to a program provided on the programming signal, said
`
`system comprising:
`
`Means for receiving 36 said programming signal 10 (column 5, line 19-47,
`
`column 6, lines 4-27, data received over the air),
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 9 of 25
`
`Application/Control Number: 10/377,482
`Art Unit: 2611
`
`Page 7
`
`Means for obtaining a second signal (decoder 58 in conjunction with
`
`receiver 36, column 6, lines 50-63), said signal comprising an address
`
`associated with an online information provider (URL, column 7, lines 36-44,
`
`column 8, line 35-column 9, line 15),
`
`An address extracting means 58 (column 6, lines 50-63), which extracts
`
`said address from said second signal,
`
`A communications means 7 4, which uses said extracted address (VBI
`
`data which contains webpages or URL links to web pages, column 8, line 14,
`
`lines 25-column 9, line 14); and
`
`automatically establishing a direct communication link, upon user instruction (two
`
`way communications subsystem 7 4 connects to the Internet to retrieve and
`
`access information which has been received by the client as a pointer which
`
`indicates where the information actually resides online, after receiving a request
`
`inputted by a user, column 8, lines 30-column 9, line 14), with an online
`
`information source (webpage referenced by URL) associated with said address
`
`so that the user has direct access to the online information.
`
`Regarding claim 33, Throckmorton discloses that the programming signal
`
`and second signal are transmitted together in a composite signal (column 5, line
`
`14-column 6, line 3).
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 10 of 25
`
`Application/Control Number: 10/377,482
`Art Unit: 2611
`
`Page 8
`
`Regarding claims 35 and 36, Throckmorton discloses that the delivery
`
`media may be a laserdisc or VCR tape, and that the media is played on a
`
`laserdisc player or VCR (column 6, lines 24-28).
`
`Regarding claim 37, Throckmorton discloses a method (figure 4) of
`
`providing an audio signal (10) and automatic and direct access to online
`
`information (associated data 16) to a user via an address associated with an
`
`online information source comprising:
`
`receiving said audio signal 10 (column 5, line 19-47, column 6, lines 4-27,
`
`data received via an audio CD player 36),
`
`receiving said address (digital data packets which contains webpages or
`
`URL links to web pages, column 8, line 14, lines 25-column 9, line 14 ); and
`
`automatically establishing a direct communication link, upon user instruction (two
`
`way communications subsystem 7 4 connects to the Internet to retrieve and
`
`access information which has been received by the client as a pointer which
`
`indicates where the information actually resides online, after receiving a request
`
`inputted by a user, column 8, lines 30-column 9, line 14), with an online
`
`information source (webpage referenced by URL) associated with said address
`
`so that the user has direct access to the online information.
`
`Claim Rejections - 35 USC§ 103
`
`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:
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 11 of 25
`
`Application/Control Number: 10/377 ,482
`Art Unit: 2611
`
`Page 9
`
`(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.
`
`3.
`
`Claim 31 is rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`U.S. Patent 5,818,441 to Throckmorton.
`
`Regarding claim 31, Throckmorton discloses that the video may be
`
`transmitted over a digital satellite system (column 5, line 65-column 6, line 11 ).
`
`Throckmorton does not disclose utilizing MPEG for transmitting the
`
`programming and address.
`
`The examiner takes official notice that the use of a DBS satellite to
`
`transmit an MPEG stream with additional information is well known in the art.
`
`MPEG video provides high quality video viewing experience to a viewer.
`
`Therefore, it would have been obvious to one skilled in the art at the time
`
`of invention to modify the DBS system of Throckmorton to transmit MPEG video
`
`in order to offer the improved video quality that MPEG video provides to a
`
`subscriber.
`
`Conclusion
`
`4.
`
`THIS ACTION IS MADE FINAL. 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
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 12 of 25
`
`Application/Control Number: 10/377,482
`Art Unit: 2611
`
`Page 10
`
`action is not mailed until after the end of the THREE-MONTH shortened statutory
`
`period, then the shortened statutory period will expire on the date the advisory
`
`action is mailed, and any extension fee pursuant to 37 CFR 1.136(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 mailing
`
`date of this final action.
`
`Any inquiry concerning this communication or earlier communications from
`
`the examiner should be directed to Hunter B. Lansberry whose telephone
`
`number is 571-272-7298. The examiner can normally be reached on Monday-
`
`Friday during normal business hours.
`
`If attempts to reach the examiner by telephone are unsuccessful, the
`
`examiner's supervisor, Christopher Grant can be reached on 571-272-7294. The
`
`fax phone number for the organization where this application or proceeding is
`
`assigned is 703-872-9306.
`
`Information regarding the status of an application may be obtained from
`
`the Patent Application Information Retrieval (PAIR) system. Status information
`
`for published applications may be obtained from either Private PAIR or Public
`
`PAIR. Status information for unpublished applications is available through
`
`Private PAIR only. For more information about the PAIR system, see http://pair-
`
`direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-
`
`free).
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 13 of 25
`
`Application/Control Number: 10/377,482
`Art Unit: 2611
`
`Page 11
`
`HBL
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 14 of 25
`v
`PATENT
`Cl
`J~M 0 4 11\05
`Attorney Docket No.: 559442000303
`'(';.
`
`l.1
`-0
`(.;
`k'
`~
`r.s--·
`<:.j,
`'J""
`,.P~~ ....
`« rR M'H::>.".;'""'
`N THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the application of:
`
`Thomas R. WOLZIEN
`
`Application No.:
`
`10/377,482
`
`Examiner: Hunter B. LONSBERRY
`
`Filing Date: February 27, 2003
`
`Group Art Unit: 2611
`
`For: MEDIA ONLINE SERVICE ACCESS
`SYSTEM AND METHOD
`
`RESPONSE UNDER37CFR1.111
`
`Mail Stop Amendment
`Commissioner for Patents
`PO Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`In response the Office Action dated August 4, 2004, please reconsider this application in
`
`view of the following remarks:
`
`REMARKS
`
`Claims 18-30 and 32-38 stand rejected under 35 USC 102(e) as being anticipated by
`
`Throckmorton. In addition, claim 31 stands rejected under 35 USC 103(a) as being
`
`unpatentable over Throckmorton. These rejections are respectfully traversed.
`
`In Applicants' last response dated April 7, 2004, all of the pending independent claims
`
`were amended to claim systems and methods which allow for a "direct communication link"
`
`which is "automatically" established upon user instruction "so that the user has direct access to
`
`online information" from an online provider. A similar limitation was introduced during
`
`prosecution of related application U.S. Serial No. 09/054,740 (now U.S. Patent 6,233,736). The
`
`introduction of these limitations in the related application overcame a rejection in view of the
`
`same Throckmorton patent that is presently at issue.
`
`va-84213 vl
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 15 of 25
`PATENT
`Attorney Docket No.: 559442000303
`
`As explained during prosecution of the '740 application, Throckmorton discloses a
`
`system which inserts data associated with a broadcast television 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, the user can access information of particular relevance to
`
`the television program.
`
`Throckmorton, however, does not describe or teach a system and method which allows 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, as set forth in all of
`
`the pending claims. Specifically, 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. As described and claimed by
`
`Applicants', 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 different 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
`
`"direct" 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.
`
`For the foregoing reasons a notice of allowance is solicited.
`
`va-84213 vl
`
`-2-
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 16 of 25
`PATENT
`Attorney Docket No.: 559442000303
`
`In the event that the transmittal letter is separated from this document and the Patent and
`
`Trademark Office determines that an extension and/or other relief is required, applicants petition
`
`for any required relief including extensions of time and authorizes the Commissioner to charge
`
`the cost of such petitions and/or other fees due in connection with the filing of this document to
`
`Deposit Account No. 03-1952. 559442000303.
`
`Dated:
`
`January 4, 2005
`
`Respectfully submitted,
`
`By:_~~_,,._,--~.,,_=--=--~~~~~ ~
`
`Registration No. 45,640
`
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard, Suite 300
`McLean, Virginia 22102
`Telephone: (703) 760-7769
`Facsimile: (703) 760-7777
`
`va-84213 vl
`
`-3-
`
`

`
`!
`
`•
`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 17 of 25
`
`••
`
`IN THE UNITED STA TESJ'M. TENT AND TRADEMARK OFFICE
`
`;tJ/4
`(/379-t/-/5 ~
`
`In the applicqtien Of:
`
`,
`
`I
`
`., Examiner: Hunter B. Lonsberry
`
`Thomas R. WO~ZIEN
`
`Group Art Unit: 2611
`
`Serial No.:
`
`10/377,482
`
`Filing Date: February 27, 2003
`
`For: MEDIA ONLINE SERVICE ACCESS
`SYSTEM AND METHOD
`
`AMENDMENT UNDER 3 7 CFR 1.111
`
`RECEIVED
`APR 1 3 2004
`Technology Center 2600
`
`Mail Stop Amendment
`Commissioner for Patents
`PO Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`This is in response to the final Office Action dated October 7, 2003 (Paper No. 5).
`
`Reconsideration and allowance of the pending claims, as amended, in light of the remarks
`
`presented herein are respectfully reques~ed.
`
`Amendments to the Claims are reflected in the listing of claims which begins on page 2
`
`of this paper.
`
`Remarks/Arguments begin on page 6 of this paper.
`
`va-60083
`
`Serial No. 10/377,482
`Docket No. 559442000303
`
`

`
`r
`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 18 of 25
`
`•
`
`•
`
`AMENDMENTS TO THE CLAIMS
`
`.~·
`
`18. (currently amended)
`
`A method of providing a programming signal and
`
`automatic and direct access to online information to a user via an address associated with an
`
`online information source comprising:
`
`receiving said programming signal;
`
`receiving said address; and
`
`automatically establishing a direct communication link, upon user instruction, with an
`
`online information source associated with said address so that the user has direct access to the
`
`online information.
`
`19. (previously presented) The method of claim 18 wherein said programming signal
`
`comprises at least one selected from the group consisting of an audio signal, a video signal, and a
`
`combined audio and video signal.
`
`20. (previously presented) The method of claim 18 wherein said programming signal
`
`is received from a communications link comprising at least one of the group consisting of the
`
`·
`
`Internet, intranet, broadcast over radio frequencies, satellite broadcast, cable, fiber optics, and a
`
`private network.
`
`21. (previously presented) The method of claim 18 wherein said address is received
`
`independently of said programming signal.
`
`22. (previously presented) The method of claim 18 wherein said address is received in
`
`simulcast with said programming signal.
`
`va-60083
`
`2
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 19 of 25
`
`•
`
`•
`
`23. (previously presented) The method of claim 18 wherein said address is embedded
`
`in the programming signal.
`
`24. (previously presented) The method of claim 18 further comprising the step of
`
`receiving content over the communications link established with the online information provider.
`
`25. (previously presented) The method of claim 24, wherein the address and content is
`
`received prior to receiving the programming signal.
`
`26. (previously presented) The method of claim 24 wherein said content comprises at
`
`least one selected from the group consisting of text, an audio signal, a video signal, graphics and
`
`multimedia signal.
`
`27. (previously presented) The method of claim 18 wherein said online information
`
`provider comprises at least one selected from the group consisting of an Internet site, private
`
`network, public network, and an Intranet site.
`
`28. (previously presented) The method of claim 18 wherein said programming signal
`
`is a television signal.
`
`29. (previously presented) The method of claim 18 wherein said programming signal
`
`is an analog signal.
`
`30. (previously presented) The method of claim 18 wherein said programming signal
`
`is a digital signal.
`
`va-60083
`
`3
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 20 of 25
`
`•
`
`•
`
`31. (previously presented) The method of claim 30 wherein said programming signal
`
`and address are received as combined in an MPEG signal.
`
`32. (currently amended)
`
`A media online services access system for providing a user
`
`of online information services automatic and direct access to online information related to a
`
`program provided on a programming signal, said system comprising:
`
`a means for receiving said programming signal;
`
`a means for obtaining a second signal, said second signal comprising an address
`
`associated with an online information provider;
`
`an address extracting means which extracts said address from said second signal; and
`
`a communicating means which uses said extracted address upon user instruction to
`
`automatically establish a direct communications link with said online information provider
`
`associated with said address so that the user has direct access to the online information.
`
`33. (previously presented) The system of claim 32 wherein said programming signal
`
`and said second signal are transmitted together in a composite signal.
`
`34. (previously presented) The system of claim 32 wherein said programming signal
`
`comprises at least one selected from the group consisting of an audio signal, a video signal,
`
`graphics, multimedia and a combined audio and video signal.
`
`35. (previously presented) The system of claim 32 wherein said programming signal is
`
`a previously recorded program transmitted from a recorded media.
`
`36. (previously presented) The system of claim 35 wherein said recorded media
`
`comprises at least one selected from the group consisting of a storage device provided with a
`4
`
`va-60083
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 21 of 25
`
`•
`
`•
`
`computer workstation, magnetic tape, digital versatile disk, CD-ROM, and a hard drive in either
`
`a computer workstation or set top box.
`
`3 7. (currently amended)
`
`A method of providing an audio signal and automatic and
`
`direct access to online information to a user via an address associated with an online information
`
`source comprising:
`
`receiving said audio signal;
`
`receiving said address; and
`
`automatically establishing a direct communication link, upon user instruction, with an
`
`online information source associated with said address so that the user has access to the online
`
`information.
`
`va-60083
`
`5
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 22 of 25
`
`•
`
`•
`
`REMARKS
`
`Claims 18 and 32 stand rejected under the judicially created doctrine of obviousness-type
`
`double patenting as being unpatentable over claims 1 and 9 of U.S. Patent No. 5,761,606
`
`respectively. A terminal disclaimer in compliance with 37 CFR 1.321(c) accompanies this
`
`amendment. Accordingly, this rejection should be withdrawn.
`
`Claims 18-24, 26-30 and 32-37 stand rejected under 35 USC 102(e) as being anticipated
`
`by U.S. Patent No 5,905,865 to Palmer. As explained in detail below, this rejection should be
`
`withdrawn since Palmer is not a valid prior art reference to this application. Further, Palmer does
`
`not describe or teach a system or method which allows for a "direct communication link" which
`
`is "automatically" established upon user instruction "so that the user has direct access to online
`
`information" from an online provider, as set forth in amended claims 18-3 7.
`
`This application claims the benefit of U.S. Serial No. 08/597,432 filed February 8, 1996,
`
`now U.S. Patent No. 5,761,606. Accordingly, to be a valid prior art reference against this
`
`application, the reference must be a prior art reference prior to February 8, 1996.
`
`Palmer was filed October 30, 1996, after applicants' benefit date of February 8, 1996.
`
`Although Palmer claims the filing date of provisional application No. 60/008, 111, filed October
`
`30, 1995, Palmer is not entitled to this filing date because the provisional application does not
`
`support any of the claims of the Palmer patent.
`
`37 CFR l.78(a)(4) sets out the requirements for claiming the benefit to an earlier filed
`
`provisional application. 37 CFR 1.78 (a)(4) states that ""[i]n order for an application to claim the
`
`benefit of [a] ... provisional application[s], [the] ... provisional application must... disclose the ...
`
`invention claimed in at least one claim of the later-filed application in the manner provided by
`
`the first paragraph of 35 U.S.C. 112."
`
`This is supported by the Federal Circuit's holding in New Railhead Manufacturing,
`
`L.L.C v. Vermeer Manufacutring Co., 63 USPQ2d 1843, 1846 (2002). The Federal Circuit in
`
`New Railhead stated:
`
`va-60083
`
`6
`
`

`
`Case 5:15-cv-02008-EJD Document 83-10 Filed 04/12/16 Page 23 of 25
`
`•
`
`•
`
`[F]or the non-provisional utility application to be afforded the priority date of the
`provisional application, the two applications must share at least one common
`inventor and the written description of the provisional must adequately support
`the claims of the non-provisional application .... In other words, the
`specification of the provisional must "contain a written description of the
`invention and the manner and process of making and using it, in such full, clear,
`concise, and exa