66548 U.S. PTO
`ImmIllllflull/‘fllfllll‘fllflm"mmm“
`
`'
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`.
`
`PATENT
`
`In re the patent of:
`
`Arthur R. HAIR
`
`US. Patent No. 5,191,573
`
`Issued: March 2, 1993
`
`Application No. 07/586,391
`
`Filed: September 18, 1990
`
`For: METHOD FOR TRANSMITTING A DESIRED
`DIGITAL VIDEO OR AUDIO SIGNAL
`
`56548 Us. PTO
`90007402
`
`lllllllllllllllllllllllllllllllllllllllllllllllll
`01/31/05
`
`Docket No. NAPSPOOI
`
`Date: January 31, 2005
`
`vvvvvvvvvvvvvv
`
`QERTIFIQATE OF EXPRESS MAILING
`I hereby certify that this paper and the documents and/or fees referred to as
`attached herein are being deposited with the United States Postal Service on
`Janugg 31 2005 in an envelope as “Express Mail Post Office to Addresses"
`service under 37 CFR § 1.10, Mailing Label Number EV 577446420 US,
`addressed to th
`‘ssioner for Patents, P.0. Box 1450, Alexandria, VA
`22313-1450.
`
`
`REQUEST FOR EX PAR TE REEXAMINATION
`TRANSMITTAL FORM
`
`Commissioner for Patents
`
`Mail Stop Ex Parte Reexam
`PO. Box 1450
`
`Alexandria, VA 223 1 3- 1450
`
`’
`
`1. This is a request for ex parte reexamination pursuant to 37 CFR 1.510 of US. Patent No.
`5,191,573, which issued March 2, 1993 (the ‘573 patent). The request is made by a third-party
`requester.
`
`2. The name and address of the person requesting reexamination is:
`
`Napster, Inc. (formerly Roxio, Inc. and majority owner of Napster, L.L.C.)
`L08 Angeles Office
`02/09/2095 01mm 00330305 90007402
`9044 Melrose Ave.
`
`Los Angeles, CA 90069.
`
`
`3. A check in the amount of $2 520.00 to cover the ex wmmexamination fee is enmeflflp
`37 CFR 120(c)(1).
`
`Atty. Docket No. NAPSP001
`
`Page 1 of3
`
`Apple Exhibit 1003 Page 00001
`
`Apple Exhibit 1003 Page 00001
`
`

`

`4. The Commissioner is authorized to charge any fees beyond the amount enclosed which
`may be required, or to credit any overpayment, to Deposit Account No. 50-0805 (Order No.
`NAPSPOOI ).
`
`5. A copy of the ‘573 patent to be reexamined having a double column format on one side
`of a separate paper is enclosed (a Certificate of Correction for the ‘573 patent also is enclosed). 37
`CFR 1.510(b)(4).
`
`6. Reexamination of claims 1-6 is requested.
`
`7. A copy of every patent or printed publication relied upon is submitted herewith including
`a listing thereof on Form PTO-1449.
`
`8. The attached detailed request includes at least the following items:
`
`_a. A statement identifying each substantial new question of patentability based on prior
`patents and printed publications. 37 CFR 1.510(b)(1); and
`
`b. An identification of every claim for which reexamination is requested, and a detailed
`explanation of the pertinency and manner of applying the cited art to every claim for which
`reexamination is requested. 37 CFR 1.510(b)(2).
`
`9. It is certified that a copy of this request has been served in its entirety on the patent owner
`as provided in 37 CFR 1.33(c). The name and address of the party served and the date of service
`are:
`
`Ansel M. Schwartz, Registration No. 30,587
`201 N. Craig Street, Suite 304
`Pittsburgh, PA 15213
`Date of Service: January 31, 2005 (by overnight courier).
`
`10. Correspondence Address: Direct all communication about the reexamination to:
`
`Albert S. Penilla
`
`MARTINE PENILLA & GENCARELLA, LLP
`
`710 Lakeway Drive, Suite 200
`Sunnyvale, CA 94085
`(408) 749-6900
`Customer Number 25920.
`
`Atty. Docket No. NAPSP001
`
`Page 2 of 3
`
`Page 00002
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`Page 00002
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`

`1]. The patent is the subject of the following concurrent proceeding:
`
`Copending litigation styled: SightSound Technologies, Inc. v. Roxio, Inc. and Napster,
`L.L.C., US. District Court for the Western District of Pennsylvania, Civil Action No. 04-1549.
`
`Respectfully submitted,
`
`
`
`Reg. No. 39,487
`
`710 Lakeway Drive, Suite 200
`Sunnyvale, CA 94085
`(408) 749-6900
`Customer No. 25920
`
`Atty. Docket No. NAPSP001
`
`Page 3 of 3
`
`Page 00003
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`Page 00003
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Ex Parte Reexamination of:
`
`Arthur R. Hair
`
`US. Patent No. 5,191,573
`
`Examiner: Nguyen, Hoa T.
`(Prior Examiner)
`
`Group Art Unit: 2413
`(Prior Examination)
`
`Issued: March 2, 1993
`
`.
`
`REQUEST FOR Ex Parte
`REEXAMINATION
`
`'
`
`UNDER 37 CFR§ 1.510
`
`For: METHOD FOR TRANSMITTING
`A DESIRED DIGITAL VIDEO OR
`Date: JanuAUDIO SIGNAL 31, 2005
`
`
`
`
`
`Mail Stop Ex Parte Reexam
`Honorable Commissioner of Patents and Trademarks
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`
`TABLE OF CONTENTS
`
`I.
`
`11.
`
`Ill.
`
`IV.
`
`V.
`
`VI.
`
`INTRODUCTION"; ........................................................................................................... 1
`
`RELATED AND CO-FILED REQUESTS FOR REEXAMINATION ............................ 2
`
`CURRENT STATUS OF THE '573 PATENT .................................................................. 2
`
`CLAJMS FOR WHICH REEXAMINATION IS REQUESTED ...................................... 3
`
`PRIOR ART PATENTS AND PUBLICATIONS ............................................................. 3
`
`STATEMENT POINTING OUT SUBSTANTIAL NEW QUESTIONS OF
`PATENTABILlTY AND DESCRIPTION OF THE RELEVANT PRIOR ART ............. 4
`
`A.
`
`_ B.
`
`GALLAGHER (GB 2 178 275 A): Claims 1 — 6 of the Hair ‘573 Patent
`Are Anticipated Under 35 U.S.C. § 102 by Gallagher and/or Are Rendered
`Obvious Under 35 U.S.C. § 103 by Gallagher in view of Gremillet,
`Freeny, Akashi, Hellman, Elmer-Dewitt or Ferrarini. ........................................... 5
`
`GREMILLET (US. Pat. No. 4,499,568): Claims 1 — 6 ofthe Hair ‘573
`Patent Are Anticipated Under 35 U.S.C. § 102 by Gremillet and/or Are
`Rendered Obvious Under 35 U.S.C. § 103 by Gremillet in view of
`Gallagher, Freeny, Akashi, Hellman, Elmer-Dewitt or Ferrarini......................... 13
`
`C.
`
`FREENY, JR. (US. Pat. No. 4,528,643): Claims 1 — 6 ofthe Hair ‘573
`Patent Are Anticipated Under 35 U.S.C. § 102 by Freeny. ................................. 22
`
`VII.
`
`CONCLUSION ................................................................................................................ 26
`
`REQUEST FOR REEXAMINATION
`OF US. PATENT NO. 5,191,573
`
`Page 00004
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`

`

`I.
`
`INTRODUCTION
`
`This Request for Ex Parte Reexamination of US. Patent No. 5,191,573 (“the ‘573
`
`patent”) raises substantial new questions of patentability with respect to the ‘573 patent based on
`
`prior art not cited or considered during the prosecution of the ‘573 patent. During the
`
`prosecution of the ‘573 patent, prior art references Gallagher, Gremillet and Freeny were neither
`
`disclosed nor considered by the Examiner.
`
`The ‘573 patent is directed to a method for electronically selling and transferring
`
`desired digital audio or video signals through telecommunications lines from a first memory of a
`
`first party to a second memory of a second party. The Gallagher prior art reference also teaches a
`
`method, system and apparatus for selling and transferring through telecommunications lines,
`
`recorded digital audio and video data between a source unit, which may belong to an artist, a
`
`database, which may be housed by a record company, and user units, which belong to the general
`public.
`‘
`
`Similarly, Gremillet teaches a method and system for the electronic sale of digital
`
`audio signals and recorded information over telecommunications lines, including telephone lines,
`
`cables and optical fibres. The digital audio signals are stored in an information bank at a
`
`distribution center and are distributed to user equipment that includes a recording device.
`
`In addition, Freeny teaches a method and system of transferring digital
`
`information which includes forming a connection through telecommunications lines between a
`
`first memory of a first party and a second memory of a second party, the first memory having the
`
`digital signals, selling electronically by the first party to the second party through the
`
`telecommunications lines the desired digital signals, transfening the desired digital signals from
`
`the first party to the second party through those lines while the second memory is in possession
`
`1
`
`REQUEST FOR REEXAMINATION
`OF US. PATENT NO. 5,191,573
`
`Page 00005
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`

`

`and control of the second party and the step of storing the digital signals in the second memory.
`
`Gallagher, Gremillet and Freeny each individually anticipate all claims of the ‘5 73
`
`patent. Additionally, Gallagher, Gremillet and Freeny in combination with other prior art
`
`references, cited below, render all claims of the ‘573 patent obvious.
`
`Accordingly, because Gallager, Gremillet and Freeny alone and in combination
`
`with other prior art references raise substantial new questions of patentability, this Request for
`
`Reexamination of the ‘573 patent should be granted.
`
`II.
`
`RELATED AND CD-FILED REQUESTS FOR REEXAMINATION
`
`In addition to this Request for Reexamination of the ‘573 patent, separate
`
`Requests for Reexamination of US. Patent Nos. 5,675,734 (the “‘734 patent”) and 5,966,440
`
`(the “‘440 patent’i’) have also been concurrently filed. The ‘573, ‘734 and ‘440 patents are all
`
`related, disclose identical inventions, claim priority to the same June 13, 1988 earliest filing date,
`
`and were issued from continuation applications from the same parent application. Moreover, the
`
`three patents also share similar specifications and identical drawings.
`
`III.
`
`CURRENT STATUS OF THE ‘573 PATENT
`
`The ‘573 patent is currently in litigation in the District Court for the Western
`
`District of Pennsylvania in a case styled SightSound Technologies, Inc. v. Roxio, Inc. and
`
`Napster, L.L.C., Civil Action No. 04—1549. The case is in its infancy and no formal discovery
`
`has taken place. Pursuant to the Court’s request, Requestor has filed a Motion to Stay the case
`
`pending the outcome of the Reexamination proceedings.
`
`Previously, the ‘573 patent was in litigation in another case, also in the District
`
`Court for the Western District of Pennsylvania, styled as SightSoundcom Incorporated v. N2K,
`
`
`Inc. CDnow Inc. and CDnow Online Inc., Civil Action No. 98-0118. That case settled before
`
`2
`
`REQUEST FOR REEXAMINATION
`OF U.S. PATENT N0. 5,191,573
`
`Page 00006
`
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`
`

`

`trial with no judicial determination of the invalidity of the ‘573 patent.
`
`I
`
`The ‘440 and ‘734 patents are also at issue in the current litigation, and were also
`
`at issue in the previous litigation.
`
`IV.
`
`CLAIMS FOR WHICH REEXAMINATION IS REQUESTED
`
`7 Reexamination is requested for all claims, claims 1 through 6.
`
`V.
`
`PRIOR ART PATENTS AND PUBLICATIONS
`
`'Pursuant to 37 C.F.R. § 1.555 Requestor brings to the attention of the Examiner
`
`the following references, all of which are listed on the enclosed form PTO—1449, along with
`
`copies of the listed references:
`
`
`
`Reference Namev
`
`,_
`
`“Galla her”
`g
`
`Great Britain Patent GB 2 178 275 A, “Recorded Data Transfer
`System,” filed July 16, 1986, published February 4, 1937.
`
`,‘Referen_eeDescription ‘
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`“Akashi”
`
`
`
`
`
`m 13, 1983, issuedonApril 14, 1987.
`US. Pat. No. 4,65 8,093, Sofiware Distribution System, filed July I
`
`Ferrarini, “Direct Connections for Software Selections,” Business
`Computer Systems, February 1984.
`
`“Gremillet”
`
`
`
`US. Pat. No. 4,499,568, “Process for the Teledistribution of
`Recorded Information and a System for Performing This
`Process,” filed December 13, 1982, issued February 12, 1985.
`
`US. Patent No. 4,528,643, “System For Reproducing
`Information In Material Objects At a Point of Sale Location,”
`filed January 10, 1983, issued on July 9, 1985.
`
`Japanese Patent Application No. S62-284496 to H. Akashi,
`“Automated Music Purchasing System,” filed on June 3, 1986
`and published on December 10, 1987. (Translation included.)
`
`“Ferrarini”
`
`“ComNet for the PC,” PC Magazine, August 1983.
`
`“Calling Up an On-Line Cornucopia,” Time, April 7, 1986.
`
`
`
`
`3
`
`REQUEST FOR REEXAMINATION
`OF US. PATENT NO. 5,191,573
`
`Page 00007
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`
`

`

`Communications and Networkingfor the IBM PC, 1983.
`
`For the reasons discussed below, the prior art patents and printed publications
`
`submitted herein raise substantial new questions of patentability of claims 1 through 6 of the
`
`‘573 patent.
`
`VI.
`
`STATEMENT POINTING OUT SUBSTANTIAL NEW QUESTIONS OF
`PATENTABILITY AND DESCRIPTION OF THE RELEVANT PRIOR ART
`
`This Request for Ex Parte Reexamination of the ‘573 patent raises the following
`
`substantial new questions of patentability:
`
`1.
`
`2.
`
`Whether claims 1 — 6 are anticipated under 35 U.S.C. § 102 by Gallagher;
`
`Whether claims 1 — 6 are anticipated under 35 U.S.C. § 102 by Gremillet;
`
`Whether claims 1 — 6 are anticipated under 35 U.S.C. § 102 by Freeny;
`
`Whether claims 1 — 6 are rendered obvious under 35 U.S.C. § 103 by
`Gallagher in view of Gremillet, Freeny, Akashi, Hellman, Elmer-Dewitt
`or Ferrarini;
`
`Whether claims 1 — 6 are rendered obvious under 35 U.S.C. § 103 by
`Gremillet in view of Gallagher, Freeny, Akashi, Hellman, Elmer-Dewitt
`or Ferrarini;
`
`Whether claims 1 — 6 are rendered obvious under 35 U.S.C. § 103 by
`Freeny in view of Gallagher, Gremillet, Akashi, Hellman, Elmer-Dewitt
`or Ferrarini.
`
`In the following claim charts, the left hand column lists the claims of the ‘573
`
`patent and the right-hand column identifies the relevant portions of the cited references and
`
`explains their pertinence which anticipates under 35 U.S.C. § 102. The right hand column also
`
`explains how, in combination with other prior art, the cited references render the Hair ‘573 patent
`
`obvious under 35 U.S.C. § 103, as specifically described below.
`
`4
`
`REQUEST FOR REEXAMINATION
`OF US. PATENT N0. 5,191,573
`
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`

`

`A.
`
`GALLAGHER (GB 2 178 275 A): Claims 1 - 6 of the Hair ‘573
`Patent Are Anticipated Under 35 U.S.C. § 102 by Gallagher and/or
`Are Rendered Obvious Under 35 U.S.C. § 103 by Gallagher in view of
`Gremillet, Freeny, Akashi, Hellman, Elmer-Dewitt or Ferrarini.
`
`Gallagher (GB 2 178 275 A) was not cited or considered by the Examiner during
`
`'
`
`the prosecution of the Hair ‘573 patent. Gallagher was filed on July 16, 1986 and published on
`
`February 4, 1987, prior to the earliest priority date of June 13, 1988 ofthe Hair ‘573 patent.
`
`Accordingly, Gallagher is prior art to the Hair patent.
`
`Gallagher discloses and teaches a method, system and apparatus for transferring
`
`recorded digital audio and video data between a source unit, a database which may be housed by
`a record company and user units. Gallagher at Abstract. The system includes forming a
`
`connection through telecommunication lines (which include high speed telephone links by way
`
`of modems, or regular telephone links, fibre optic links, electro-magnetic waves or any other
`
`suitable medium) between a first memory of a first party and a second memory of a second party,
`
`the first memory having the digital audio or video signals, selling electronically by the first party
`
`to the second party through the telecommunications lines the desiredidigital audio or video
`
`signals,transferring the desired digital signals from the first party to the second party through the
`
`telecommunications lines while the second memory is in possession and control of the second
`
`party (at a remote location) and storing the digital signals in the second memory which includes
`hard disks. Gallagher at 1. Gallagher also teaches encryption and decryption of the digital audio
`or video signals for the prevention of unlawful copying and piracy. Gallagher at 1. Additionally,
`
`Gallagher discloses that the sale ofthe digital audio or video signal is through the user units, for
`
`example through the user’s personal computer. Gallagher at 1.
`
`Accordingly, the Gallagher patent raises substantial new questions of patentability
`
`5
`
`REQUEST FOR REEXAMINATION
`OF US. PATENT N0. 5,191,573
`
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`

`of the Hair ‘573 patent.
`
`GREAT BRITAIN PATENT GB 2 178 275 A TO GALLAGHER
`
`Claim
`
`Prior Art Disclosure Rendering Hair Anticipated or Obvious, Including
`Motivation to Combine
`
`1. A method for transmitting a
`desired digital audio signal stored
`on a first memory of a first party to
`a second memory of a second party
`comprising the steps of:
`
`'
`
`transferring money electronically
`via a telecommunication lien [sic]
`to the first party at a location
`remote from the second membry
`and controlling use of the first
`memory from the second party
`financially distinct from the first
`party, said second party controlling
`use and in possession of the second
`memory;
`
`Gallagher teaches a “recorded data transfer system” of “digital data”
`in the “entertainment industry” such as “audio or visual” data.
`(Gallagher at 1:5, 1:8, 1:6—7, 1;91, Figs. 2 & 3). Gallagher also discloses
`that “the artist’s material is digitized before it reaches the buffer stage."
`(Gallagher at 1:72-73) The desired digital audio signal is stored on a first
`memory of a first party, which is a “database having a main computer, .
`.
`.
`a data storage and processing system, means for controlling the storage and
`processing of data. .
`. .” (Gallagher at 1:13-16) Additionally, the first party
`in Gallagher can be the “source unit” which can also contain the first
`memory, and it “comprises a storage medium 11.” (Gallagher at 1:67-69)
`Gallagher also discloses that the first memory “media for storage of data
`would be floppy disk, hard disk, optical or laser disk, magnetic tape,
`integrated circuit memory or any other suitable medium” (Gallagher at
`1:32—35) Gallagher teaches that the desired digital audio signal is
`transmitted to the second memory of a second party, a “user unit having .
`.
`. a means for storing/recalling and/or processing data received from the
`database.” (Gallagher at 1:21-22) Gallagher also discloses that'the second
`memory “media for storage of data would be floppy disk, hard disk, optical
`or laser disk, magnetic tape, integrated circuit memory or any other suitable
`medium.” (Gallagher at 1:32-35)
`
`Gallagher teaches the electronic transfer of money via a
`telecommunication line: Gallagher discloses “sale to the general public via
`their user units.” (Gallagher at 1:49-50) Gallagher also discloses “home-
`buying of material” and “immediate access to material.” (Gallagher at 2:92-
`93) Gallagher discloses that the telecommunication line is “high speed
`telephone links by way of modems. However, normal telephone links, fibre
`optic links, electro-magnetic waves or any Other suitable medium may be
`used.” (Gallagher at 1:28-31) Moreover, during prosecution of the ‘573
`Patent, the inventor, Mr. Hair filed a declaration under 37 CFR § 1.132 where
`he stated “One skilled in the art would know that an electronic sale inherently
`assumes a transferring of money by providing a credit card number (since that
`is the only way for electronic sales to occur) coupled with a transferring of a
`service or product. The use of transferring money across telecommunication
`connections, such as by telephoning the agent who has the hard disc over the
`phone lines, for obtaining data on the hard disc is well known to one skilled in
`the ‘art to be part of electronic sales.” & ‘573 Patent File Wrapper, Paper
`No. 27 at 2. Gallagher teaches that the first party is at a location remote
`from the second memory, that the first party is in controlling use of the
`first memory and that the second party is in controlling use and in
`possession of the second memroy: “The source unit (first party) could
`belong to a recording artist, the main unit (also called a database) to a major
`record company (first party) and user units to the general public (second party
`with the second memory)” (Gallagher at 1:44-46) The user unit/consumer
`‘
`can be at “home.” (Gallagher at 2:92) The database (first memory) is
`“housed b arecord co an ” first a
`Gallaher at 1:7—10
`
`6
`
`REQUEST FOR REEXAMINATION
`OF 0.8. PATENT N0. 5,191,573
`
`
`
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`

`
`
` Accordingly, Gallagher discloses at least a first and second party at remote
`locations. Gallagher teaches that the first party and second party are
`financially distinct: Gallagher discloses a “record company” that would
`provide the digital data “for sale to the general public.” (Gallagher at 1:46-
`50). In addition, Hair admitted that “[o]ne skilled in the art would know since
`the music is distributed through electronic sale, ‘the second party must be
`financially distinct from the first party’ or there could be no sale.” m ‘734
`Patent File Wrapper, l/3/94 Hair Decl., p. 3-4.
`
`
`
`
`
`
`
`
`
`
`
`
`
` In addition, it would have been obvious to a person skilled in the art at the
`time to electronically sell digital audio and video signals via
`telecommunications lines. Freeny expressly discloses the combination of
`“selling electronically” digital audio and video signals over
`telecommunications'lines. Freeny at 12:31-36 (“a consumer credit card
`number also might be communicated .
`.
`. so the owner of the information
`could approve the sale and, in effect, charge the sale to the consumer credit
`card number”).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Hellman also discloses the combination of “selling electronically” digital
`
`audio and video signals over telecommunications lines. Hellman at 5257-62
`
`
`(“Base unit 12 generates and communicates to authorization and billing unit
`
`
`13 a signal representing a user originated request for software use. . .BILLING
`INFORMATION is a credit car[d] number or similar means for billing the
`
`user of the sofiware.”).
`
`
` Akashi also discloses the combination of “selling electronically” digital audio
`and video signals over telecommunications lines. Akashi at l (Akashi
`discloses an “Automated Music Purchasing System” which "communicates
`via telephone lines" and “sells recorded music via the telephone line.”).
`Akashi at 2 (Akashi distinguishes the “conventional system of selling
`recorded music,” that is, through “music sales outlets”). Akashi at 2, 5, Fig.
`2 (the “automated music purchasing system network"). Akashi at 4 (a record
`company need “not require the current distribution channels” [music sales
`outlets] and thus the ‘fiiser would be able to easily as well as freely search for
`and purchase desired musicfrom home.”).
`
`
`
`
`
`
`
`
`
`
`
`Elmer-Dewitt also discloses the combination of “selling electronically”
`digital audio and video signals over telecommunications lines. Elmer-Dewitt
`
`
`
`at 69 (“Today anybody with a computer, a modem and a deep line of credit
`can buy an airline ticket to Cleveland, rent a Hertz car at the airport, book a
`room at the Sheraton, buy a novel from Waldenbooks, check the closing
`
`prices on Wall Street and purchase 100 shares of IBM—without ever getting
`up fiom the computer.”)
`
`
`
`
`
`
`
`Ferrarini also discloses the combination of “selling electronically” digital
`audio and video signals over telecommunications lines. Ferrarini (“If you
`decide to buy, you receive the software, complete with documentation, via
`your microcomputer and the telephone lines. .
`.
`. Recently, a handful of
`companies have established services that allow users to purchase software just
`this way. If they are successful, delivering software via the telephone will
`become a major method of distribution within the next few years”).
`
`
`
`
`Gremillet also discloses the combination of “selling electronically” digital
`audio and video Si is over telecommunications lines. Gremillet at 2:32, 52,
`
`
`
`
`-
`
`7
`
`REQUEST FOR REEXAMINATION
`OF US. PATENT N0. 5,191,573
`
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`

`
`
`58, 3:4-22 (“subscribers," “calls from subscribers"), Abstract (“vending
`recorded information”).
`
`See also ‘573 Prosecution History, Paper No. 27 at 2.: “One skilled in the art
`would know that an electronic sale inherently assumes a transferring of money
`by providing a credit card number (since that is the only way for electronic
`sales to occur) coupled with a transferring of a service or product. The use of
`transferring money across telecommunication connections, such as by
`telephoning the agent who has the hard disc over the phone lines, for
`obtaining data on the hard disc is well known to one skilled in the art to be
`part of electronic sales.”
`
`See also ‘573 Prosecution History, 5/5/94 IDS at 2 (Hair admits that “[t]his
`patent [U .8. Patent No. 4,789,863 to Bush] discloses a pay per view
`entertainment system”).
`
`See also ‘734 Prosecution History, 1/3/94 Hair Decl. at 5 (“‘[E]lectronic
`sales’ as disclosed refers to the well known practices of ‘transferring’ and
`verifying monies across telephone lines such as by a ‘credit card'; or by
`‘charging a fee’ to the second party, so the second party can gain access to the
`first party’s memory through telecommunications lines to select the desired
`digital video or digital audio signals”).
`
`Accordingly, the electronic sale of digital audio and video signals via
`telecommunications lines would have been obvious to one of ordinary skill in
`the art at the relevant time.
`
`
`
`connecting electronically via a
`Gallagher teaches connecting the first and second memories via the
`telecommunications line the first
`telecommunications line: Gallagher discloses that “[t]he media for data
`
`
`memory with the second memory
`transfer is preferably high speed telephone links by way of modems.
`
`
`However, normal telephone links, fibre optic links, electro~magnetic waves or
`such that the desired digital audio
`
`signal can pass therebetween;
`any other suitable medium may be used.” (Gallagher at 1:28-31) Gallagher
`
`
`discloses that “[t]he data is transferred from the source unit to the database
`
`where it is processed for storage in library form whereby selected data can be
`
`transmitted to any user and/or source unit in national or foreign territories.”
`
`(Gallagher at 1:39-43) The source unit, database and user units each have
`
`memories. (Gallagher at 1:67-69, 1:13-16, 1:21-22)
`
`
`transmitting the desired digital
`Gallagher discloses transmitting the desired digital audio signal from the
`
`
`first memory with a transmitter in control and possession of the first
`audio signal from the first memory
`
`with a transmitter in control and
`party: a “transmitter/receiver” at the source unit (Gallagher at 1:74, Fig. 1)
`
`
`and at the database (Gallagher at 1:81-82, Fig. 2) ”) to a receiver having the
`second memory in possession and control of the second party at a
`location determined by the second party: a ”transmitter/ receiver” at the
`user unit (Gallagher at 1:87-88, Fig. 3). Because the transmitter/receiver is at
`the source unit or at the database, it is inherently in possession of the first
`party. Similarly, the transmitter/receiver at the user unit is in the possession
`and control of the second party where the location of the second party is “in
`national or foreign territories” (Gallagher at 1:42-43), and that the user
`unit/consumer (second party) can be at “home” (Gallagher at 2:92).
`Therefore the location of the receiver and second memory is determined by
`the second party.
`
`
`
`
`
`
`
`
`
`possession of the first party to a
`receiver having the second memory
`at a location determined by the
`second party, said receiver in
`possession and control of the
`second party; and
`
`
`
`
`
`
`
`
`storin_ the diital si_nal in the
`
`Gallaher discloses the storin of the di_ital sinal in the second
`
`8
`
`REQUEST FOR REEXAMINATION
`OF US. PATENT NO. 5,191,573
`
`Page 00012
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`Page 00012
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`

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`second memory.
`. a means for
`.
` memory: Gallagher discloses a "user unit having .
`
`storing/recalling and/or processing data received from the database.”
`
`
`
`(Gallagher at 1:21-22) Gallagher also discloses that “[t]he media for storage
`of data would be floppy disk, hard disk, optical or laser disk, magnetic tape,
`integrated circuit memory or any other suitable medium” (Gallagher at 1:32-
`
`2. A method as described in claim
`
`
`
`Gallagher discloses the steps of searching the first memory for the
`desired information (digital audio signal) after the transferring step and
`1 including after the transferring
`
`selecting the desired information from the first memory. Gallagher
`step, the steps of searching the first
`
`
`discloses that “[t]he user. .
`. can log on to the data base and make her/his
`memory for the desired digital
`
`selection according to a supplied menu.” (Gallagher at 12102—104)
`audio signal; and selecting the
`
`
`
`desired digital audio signal from
`
`the first memory.
`
`
`
`3. A method as described in claim
`
`
`
`Gallagher discloses that the transferring step includes the step of the
`2 wherein the transferring step
`second party “user unit/consumer” first telephoning the first party
`
`
`
`“source unit” or “database” controlling use of the first memory and
`includes the steps of telephoning
`
`
`
`providing the second party’s credit card number so the second party is
`the first party controlling use of the
`
`first memory by the second party;
`charged money. fl claim 1 above, Gallagher discloses “sale to the general
`
`
`
`public via their user units.” (Gallagher at 1:49-50) Gallagher also discloses
`providing a credit card number of
`
`“home-buying of material" and “immediate access to material.” (Gallagher at
`the second party controlling the
`
`
`2:92-93)
`second memory to the first party
`
`
`
`controlling the first memory so the
`
`
`
`In addition, it would have been obvious to a person skilled in the art at the
`second party is charged money.
`
`
`
`
`time to electronically sell digital audio and video signals via
`
`
`telecommunications lines. Gallagher expressly discloses the combination of
`“selling electronically” digital audio and video signals over
`telecommunications lines. Gallagher at 1:49-50 (“sale to the general public
`via their user units,” “home-buying of material” and “immediate access to
`material”).
`
`
` Additionally, Freeny discloses the combination of “selling electronically”
`digital audio and video signals over telecommunications lines. Freeny at
`.
`.
`12:31-36 (“a consumer credit card number also might be communicated .
`so the owner of the information could approve the sale and, in effect, charge
`the sale to the consumer credit card number”).
`
`
`
`
`
`
`
`
`Hellman also discloses the combination of “selling electronically” digital
`
`audio and video signals over telecommunications lines. Hellman at 5:57-6:2
`
`
`.(“Base unit 12 generates and communicates to authorization and billing unit
`
`
`13 a signal representing a user originated request for software use. . .BILLING
`INFORMATION is a credit car[d] number or similar means for billing the
`
`user of the software”).
`
` Akashi also discloses the combination of “selling electronically” digital audio
`
`
`and video signals over telecommunications lines. Akashi at l (Akashi
`discloses an “Automated Music Purchasing System” which "communicates
`via telephone lines" and “sells recorded music via the telephone line”).
`
`Akashi at 2 (Akashi dmuishes the “conventional s stem of sellin
`
`9
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`REQUEST FOR REEXAMINATION
`OF US. PATENT N0. 5,191,573
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`Page 00013
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`recorded music," that is, through “music sales outlets”). Akashi at 2, 5, Fig.
`2 (the “automated music purchasing system network”). Akashi at 4 (a record
`company need “not require the current distribution channels” [music sales
`
`
`outlets] and thus the “user would be able to easily as well as freely search for
`and purchase desired musicfi'om home”).
`
`Elmer-Dewitt also discloses the combination of “selling electronically”
`digital audio and video signals over telecommunications lines. Elmer-Dewitt
`at 69 (“Today anybody with a computer, a modem and a deep line of credit
`can buy an airline ticket to Cleveland, rent a Hertz car at the airport, book a
`room at the Sheraton, buy a novel from Waldenbooks, check the closing
`prices on Wall Street and purchase 100 shares of IBM—without ever getting
`up from the computer.”)
`
`Ferrarini also discloses the combination of “selling electronically” digital
`audio and video signals over telecommunications lines. Ferrarini (“If you
`decide to buy, you receive the software, complete with documentation, via
`your microcomputer and the telephone lines. .
`.
`. Recently, a handful of
`companies have established services that allow users to purchase soflware just
`this way. If they are successful, delivering software via the telephone will
`become a major method of distribution within the next few years”).
`
`Gremillet also discloses the combination of “selling electronically” digital
`audio and video signals over telecoMunications lines. Gremillet at 2:32, 52,
`58, 324—22 (“subscribers,” “calls from subscribers”), Abstract (“vending
`recorded information”).
`
`See also ‘573 Prosecution History, Paper No. 27 at 2.: “One skilled in the art
`would know that an electronic sale inherently assumes a transferring of money
`by providing a credit card number (since that is the only way for electronic
`sales to occur) coupled with a transferring of a service or product. The use of
`transferring money across telecommunication connections, such as by
`telephoning the agent who has the hard disc over the phone lines, for
`obtaining data on the hard disc is well known to one skilled