Case 5:15-cv-02008-EJD Document 83-4 Filed 04/12/16 Page 1 of 7
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`EXHIBIT 4
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`DECLARATION OF MELODY DRUMMOND HANSEN IN SUPPORT OF DEFENDANT’S
`RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`Case No. 5:15-CV-02008-EJD
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`12105100
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`DORSEY & WHITNEY
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`l))LouJ.e:J()}l
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`J3xpress Mall No. EL 759 367 709 us··
`Attorney Docket No. 4942.02 /:{)
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`!iii 002 )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE l'U""'l""l.r\I A
`urrn.,.fAL
`JR)~~'
`~tl~~lli
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`In re Patent Application of:
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`WOLZEIN
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`Serial No.; 09/054,740
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`Group Art: 2 711
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`Filed: April 3, 1998
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`Examiner: John W. Miller
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`Title: MEDIA ONLINE SERVICES ACCESS SYSTEM AND METHOD
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`Assistant Commissioner for Patents
`Washington, D.C. 20231
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`•
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`E:..f'l'1:'= Mailiris lab<:I n:umber: m. 759 1fi7702 lJS
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`Dnr.e r>f D~osit• ne=mhe.r _"\. 2000
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`: hcu::;b.y ,=,;;(,Y n,.,;. il1i,.- P"~' ..;, f;;.e .is beir.gdepoiiited wi<h the; tinitcci
`Sb!c5 Postll.I Servii:e "E;o;prei;s Mail Po:sc omee lO Address:=" Servi.CC!
`UIJdcr 37 CFR. l. l 0 on the date indi<:ated above !lnd_i~ nddn::=-i;t 10 tl;lc
`AssisWJt Commissioner for Patents. WMOhington. D.C- '.2:):.?31
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`~•moc /m I ~"'.J.!'. =1 Wh7"-;,i"'}' u;'- _.
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`Dear Assistant Comnlissione1·:
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`RESPONSE TO OFFICE ACTION
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`This Response is filed in reply to the Office Action mailed June 7, 2000, in regard to the
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`above-referenced application rejecting claims 18-29_ Applicant respectfully requests
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`reconsideration of nll pending clai1us ;;un..I t::Hlry of the following claim amendments as well as thr:
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`issuance of a 1'-1otice of i\1lov1ance.
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`Please amend the above-identified application as follows_
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`In the Claims
`{ ,,,(cid:173)
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`(Amended) A method of providing to a user of online information sorvices automatic_J!Ild
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`dire.ct acc:~ss to online information through an address associate<l with an on1ine inforrnation
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`source provided with a video program comprising:
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`OPENTV2008-00001622
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`indlca~ng to the user that au aUcJress bas been provided \Vith said video program; and
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`electronically extracting said address [to establish] and automatically establishing. in
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`res¥6nse to a user il1_itiated command a .ill,_rect communication link \Vith the online information
`s/:ircc associated with said address so tha~~tf1e user has dire.ct access to tl:!~ online information.
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`1 is.
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`(Amended) A method of providing to•- user nf nn!ine inforrnation services (tc a mer cf
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`such online services] automatic an<l direct.access to online infom:l~Ii_9J1. comprising the steps of:
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`receiving a television broadcast signal having an information signal representing the
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`address of an online information source;
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`c-Ai.n:tcting the address of said oniine information source from said received television
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`broadcast signal;
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`automatically using said adfiress? in response to a user initiated command, to transmit a
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`signal. to connect said user directly with the unline infor1natiort source associated with said
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`/ / address so that the use{ has direct acce__ss to the online information; and
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`receiving online information signals from said online information provider.
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`'7' fa.
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`(Amended) A method of providing to a user of online information services. at the time of
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`vic\\'ing a video program represented by an electronic signal, autornntic nnd dir~-~ access to
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`online information through a link provided in sa.id video program, co1nprising:
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`indicating to the user that an address is available for establishing communication with an
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`onl-ine. information source;
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`electronically extracting, in response to a user initiated conllland, an address associated
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`\Vith an online information source from an inforrnation signal embedded in .said eiectronic signrti,
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`and auto1natically uslng said extracted address to establish a _QJrect communication link with the
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`online information source associated with said extracted address so that the usi::_~hs_s Q_i~ct access
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`to the online information.
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`'ff
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`(Amended) A method of providing to a user of Online information services automatic and
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`direct access to on.line information through a link provided in a video program~ comprising:
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`indicating to the user that a link to onliue information services is available for receiving
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`the online information: and
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`automatically and directlv electronically accessing said online information associated
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`with said link in response to a user initiated commanrl :-io that the user has direct access to the
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`.Qnline ffifonnation.
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`II
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`(Amended) A media online services access system for providlng to a USt:.r of online
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`information services \Vhile viewing or listening to a video or audio program represented by an
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`electronic signal. automatic and direct access to online information bv establishin~ a direct digital
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`communication link with an online information source through a link provided in said electronic
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`signal, corn.prising:
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`means for indicating to tr1Ie user that au aJUn:::~s i~ available for extraction from said
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`electronic signal which permits cornmunication with an online information source; and
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`means for extracting an address associated with an online information source from an
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`information signal en1h~dded in said electronic signal, and for autQJTI;!!i_c;:.,a.Jlx establishing _ in
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`response to a user initiat~d command, a direL:l link with the online information source associated
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`with said extracted address so that the user Pa.<: direct access to the_Qnline inforn1atiq_!!_
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`OPENTV2008-00001624
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`Serial No.: 09/054,740
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`REMARKS
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`Claims 18-29 are rejected by the Examiner. In particular, claims 18-29 are rejected under
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`35 USC §103 as obvious over Throckmorton et al (5,818,441) (hereinafter, "Throckmorton"). Jn
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`the Office Action, the Examiner rejected claim< 18-29 under 35 U.S.C. 103(a) as being
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`unpatentable over Throckmorton et al (U.S. Patent Number 5,818,44 l).
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`V/ith respect to such rejection, the Examiner stated that Tbrock..-rnorton disclc£e.s a system
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`which inserts data associated with a broadcast ttolevisioll program into the vertical blanking
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`interval of a television signal. When the associated data contains pointers (i.e, URLs) to
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`locations across a. two-way channel~ as set forth by the Examiner, lhe user can access information
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`of particular relevance to the television program. The Examiner also stated that while the
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`reference differs from the claimed invention in that it is silent with respect to whether or not the
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`user is provided with an explicit indication of the presence of an address, such distinction is 11ot a
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`"patentabie distinction".
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`Applicant respectfully~ disagrees with the rejection and Applicant appreciates that the
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`Examiner agreed to an Interview regarding the case. Tiw Applicant met with the Examiner on 27
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`October 2000 to discuss the rejection a..11d the Throckmorton refe-re.nce. and agreernent was
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`reached that the § 103 rejection was overcome by proposed amended claims. The Applicant was
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`represented by Scott Doyle and the inventor, Thomas Wolzein. Applicants representatives
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`explained that Throck.Inorton does not describe or teach a system ru1d method which allows
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`"direct communication link" which is "automatically" established by a user command "so that
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`the user has direct acces.s to online information" from an online provider. as set forth in ame11ded
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`claims 18-29. As explained to the Examiner. it is important that the user not have to access links
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`which are stored in a directory or access one of a series of links in a menu. In Applicant's
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`amended claims, the choice for the user is from the video or audio program directly to the
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`additional content, without the need of intumediate steps. fo Applicant's invention, the user
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`need not have to select runongst several different links. ThereforeJ in Applicant's invention~ the
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`user never has to leave the screen to access additional content because access is "clirect11 from the
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`user to the content. Based on the above, the difference is .s-ubstantial because Tl1rockmorton does
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`not teach "'direct" and 11automatic" access to the online information from the primary video or
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`audio program and thus. the differences between Wolzien's claims and the Throckmorton
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`reference are such that the sttbject matter as a whole would not have been obvious to one of
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`ordinary skill in the art.
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`Regarding claims 18-22 ~nd 24-29, these claims are additionally patentable because the
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`"indicating means" or "indicating" step provides a subtle function of alerting the user that more
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`content is directly and automatically available to the user through a simpie user corrunand. TllUSt
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`a user does not have to access storage or a menu to determine whether any addresses were
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`delivered io the client device and if delivered, which of the addresses to select for establishing a
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`corru"T1unications link v,:ith an ontine site.
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`As agreed to by the Examiner, Applicant has added the terms of a "direct"
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`' established by a user command 11 so that the user
`communication link which is 11 automatica1ly 1
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`hct.S direct access to online info1-mation" from an online provider to all independent claims, and
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`thus all dependent claims, pending in the case. Therefore, Applicant respectfully requests that
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`the rejection be wiihd.rawn. L1 view of the above a...'11.er1dments, J\_pplicant now believes that the
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`claims to be in condition for allowance, and a Notice of Allowance is requested.
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`Additionally. the Applicant has provided herewith a check in the amount of$ 890.00 to
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`P~-Y for thP. three month extension fee for filing this Re:."ponse. Applicant requests the United
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`States Patent Office to charge any overpayments or additional filing fees under 37 C.F.R. 1.16
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`and 1.17 to the Applicants deposit account number 04-1415.
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`If the Examiner believes that any issues rcu1aln unresql.ved, he is invited to telephone
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`Scott Doyle at (303) 628-1504 or the undersigned to expedite allowance.
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`Respectfully submitted,
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`fohn T. Kennedy, Esq.
`Attorney for Applicant
`USPTO Reg. No. 42,717
`Dorsey & Whitney LLP
`Customer No. 20686
`Republic Plaza Buiiding, Suite 4700
`370 Seventeenth Street
`Denver, CO 80202-5644
`(303) 260-6362
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`OPENTV2008-00001627