foil18/L0
`
`6':911111111ll“11111illillllllllllllll
`
` Exhibit 1303
`
`2km re the patent of:
`8W R' “A“
`
`Issued: October 12, 1999
`
`Application No. 08/471,964
`
`Filed: June 6, 1995
`
`For:
`
`SYSTEM AND METHOD FOR
`
`TRANSMITTING DESIRED DIGITAL
`
`VIDEO OR DIGITAL AUDIO SIGNALS
`
`4
`
`64968?)0#14305T0
`mm111111111111111111111
`
`Docket No. NAPSP003
`
`Date: January 31, 2005
`
`CERTIFICATE 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 Addressee”
`service under 37 CFR § 1,10 Mailing Label Number EV 577446447 US,
`addressed to the Co
`er for Patents, PO. Box 1450, Alexandria, VA
`22313- 1450.
`
`
`
`Albert S. Penilla
`
`
`
`REQUEST FOR EX PARTE REEXAMINATION
`TRANSMITTAL FORM
`
`Commissioner for Patents
`
`Mail Stop Ex Parte Reexam
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`:0I‘D
`
`1. This iéEa request for ex parte reexamination pursuant to 37 CFR 1.510 of U. S. Patent No.
`5,966,440, whichdssued October 12,1999 (“the ‘440 patent”). The request is made by a third--party
`requester.
`I.“
`E
`2. The n§ne and address of the person requesting reexmflpaqrhfiibmn 1111833384 98887487
`
`Naéter, Inc. (formerly Roxio, Inc. and majority owner of Napster, L.L.C)
`E
`Los Angeles Office
`2
`9044 Melrose Ave.
`D
`5;
`E
`
`61 FC:1812
`Los Angeles, CA 90069.
`
`8528.08 0P
`.
`
`Atty. Docket No. NAPSP003
`
`Page 1 of 3
`
`Page 00001
`
`Page 00001
`
`

`

`3. A check in the amount of $6,870.00 to cover the ex parte reexamination fee ($2,520.00)
`and the excess claim fees ($4,350.00 for 11 extra independent claims ($2,200.00) and 43 claims in
`excess of 20 claims ($2,150.00)) is enclosed. 37 CFR 1.20(c)(1).
`
`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.
`NAPSP003).
`
`5. A copy of the ‘440 patent to be reexamined having a double column format on one side
`of a separate paper is enclosed. 37 CFR 1.510(b)(4).
`.
`
`6. Reexamination of claims 1-63 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. NAPSP003
`
`Page 2 of3
`
`Page 00002
`
`Page 00002
`
`

`

`11. 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,
`MARTINE PENILLA & GENCARELLA, LLP
`
` .
`
`11a (for third-party requester)
`Reg. No. 39,487
`
`710 Lakeway Drive, Suite 200
`Sunnyvale, CA 94085
`(408) 749-6900
`Customer No. 25920
`
`Any. Docket No. NAPSP003
`
`' Page 3 of 3
`
`Page 00003
`
`Page 00003
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Ex Parte Reexamination of:
`
`Arthur R. Hair
`
`1
`US. Patent No. 5,966,440
`
`Issued: Oct. 12, 1999
`
`For:
`
`SYSTEM AND METHOD FOR
`TRANSMITTING DESIRED
`
`Examiner: Nguyen, Hoa T.
`(Prior Examiner)
`
`Group Art Unit: 2516
`(Prior Examination)
`
`REQUEST FOR Ex Parte
`REEXAMINATION
`
`UNDER 37 CFR § 1.510
`
`DIGITAL VIDEO OR DIGITAL
`AUDIO SIGNALS
`
`
`Date: January 31, 2005
`
`,
`
`Mail Stop Ex Parte Reexam
`Honorable Commissioner of Patents and Trademarks
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .............................................................................................................. 1
`
`A.
`
`B.
`
`Anticipation and Obviousness ............................................................................... 1
`
`Double Patenting .................................................................................................... 2
`
`RELATED AND CO-FEED REQUESTS FOR REEXAMINATION ............................ 5
`
`CURRENT STATUS OF THE ‘440 PATENT ................................................................. 5 '
`
`CLAIMS FOR WHICH REEXAMINATION IS REQUESTED ...................................... 5
`
`PRIOR ART PATENTS AND PUBLICATIONS ............................................................. 6
`
`STATEMENT POINTING OUT SUBSTANTIAL NEW QUESTIONS OF
`PATENTABHJTY ............................................................................................................. 7
`
`H.
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`VH.
`
`DESCRH’TION OF THE RELEVANT PRIOR ART ....................................................... 7
`
`A.
`
`GALLAGHER (GB 2 178 275 A): Claims 1 — 63 of the Hair ‘440 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, Schwartz, Hellman, Ferrarini, Rosch, Elmer-Dewitt,
`Jared, Kramer, Jordan, Waters, McDonnell, Fishcher and/or Zilber. .................... 9
`
`REQUEST FOR REEXAMINATION
`OF US. PATENT NO. 5,966,440
`
`Page 00004
`
`Page 00004
`
`

`

`B.
`
`GREMILLET (US. Pat. No. 4,499,568): Claims 1 — 63 of the Hair ‘440
`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, Schwartz, Hellman, Ferrarini, Rosch, Elmer-
`Dewitt, Jared, Kramer, Jordan, Waters, McDonnell, Fishcher and/or
`Zilber.................................................................................................................... 40
`
`VIII. DOUBLE PATENTING IS A PROPER BASIS FOR THE REEXAMINATION
`
`PROCEEDlNG ................................................................................................................ 78
`
`A.
`
`B.
`
`C.
`
`'
`
`The ‘440 Patent Is Invalid Over the ‘573 Patent for Obviousness-Type
`Nonstatutory Double Patenting.
`
`......... 79
`
`Double Patenting Analysis of the Claims of the ‘440 Patent ............................... 80
`
`Double Patenting Invalidity of the ‘440 Patent via the ‘734 Patent Alone,
`or via Combinations of the ‘573 and ‘734 Patents ............................................. 123
`
`CONCLUSION .......................................................................................................................... 125
`
`REQUEST FOR REEXAMINATION
`OF US. PATENT NO. 5,966,440
`
`Page 00005
`
`Page 00005
`
`

`

`I.
`
`INTRODUCTION
`
`This Request for Ex Parte Reexamination of US. Patent No. 5,966,440 (“the ‘440
`
`patent”) raises substantial new questions of patentability with respect to the ‘440 patent based on
`
`prior art not cited or considered during the prosecution of the ‘440 patent and based on double
`
`patenting in view of US. Patent Nos. 5,675,734 (“the ‘734 patent”) and 5,191,573 (“the ‘573
`
`patent”), all issued to Arthur R. Hair (collectively, the “Hair Patents”).
`
`A. Anticipation and Obviousness
`
`The ‘440 patent is directed to a method and system for transferring money and
`
`desired audio or video signals through telecommunications lines from a first memory of a first
`
`party to a second memory of a second party. During the prosecution of the ‘440 patent, prior art
`
`references Gallagher and Gremillet were neither disclosed nor considered by the Examiner.
`
`Gallagher, like the Hair Patents, teaches a method, system and apparatus for selling and
`
`transferring through telecommunications lines, recorded digital audio and video data between a
`
`source unit, 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 informatidn 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.
`
`Gallagher and Gremillet each individually anticipate all of the claims of the ‘440
`patent. Additionally, Gallagher and Gremillet in combination with other prior art references,
`
`cited below, render all claims of the ‘440 patent obvious.
`
`Accordingly, because Gallager and Gremillet alone and in combination with other
`
`1
`
`REQUEST FOR REEXAMINATION
`-
`OF US. PATENT NO. 5,966,440
`
`Page 00006
`
`Page 00006
`
`

`

`prior art references raise substantial new questions of patentability, this Request for
`
`Reexamination of the ‘440 patent should be granted.
`
`B. Double Patenting
`
`The ‘440 patent is also invalid under the doctrine of obviousness-type double
`
`patenting. The ‘440 patent claims the same innovation as set forth in the ‘573 patent. The only
`
`limitations that do not represent a mere change in wording that the patentee added in the ‘440
`
`I patent are: (1) control unit; (2) speakers; (3) video display; (4) electronic coding or, encryption,
`
`of the signal; (5) hard disk; (6) control panel; (7) integrated circuit; and (8) sales, incoming or
`
`playback RAM chip. As Requestor will demonstrate in the detailed analysis in Section V111 of
`this Request, none of these limitations is patentably distinct and all of them would have been
`
`obvious to the person of ordinary skill in the art, in 1988.
`
`The addition of “control unit” and “control panel” is not patentably distinct. It
`
`would have been obvious to one skilled in the art in light of claims 1 and 4 of the '573 patent to
`
`have the second memory included in some type of collection of hardware and software called a
`
`"control unit" and to have the digital signals on the second memory to be played through speakers
`
`connected to the second memory. In addition, the limitation of having the second memory
`
`included in some type of collection of hardware and sofiware called a “control unit” was obvious
`
`in view of at least Gallagher, Akashi, Freeny, Schwartz. A control unit for the first party too
`
`would be understood to one of skill in the art. The "first party control unit" was obvious in view
`
`of the “first memory with a transmitter in control and possession of the first party,” of Claim 10f
`
`the ‘57 3 Patent. In order to exercise the “control” disclosed some means for control would have
`
`to exist. Viewed together a “control unit”.was disclosed.
`
`2
`
`REQUEST FOR REEXAMINATION
`OF US. PATENT NO. 5,966,440
`
`Page 00007
`
`Page 00007
`
`

`

`It would have been obvious to have a “control panel” on the user’s unit. Hair's claimed
`
`invention as described in the original '573 specification was an "advanced stereo system." '573
`
`Prosecution History, Original Patent Application Filing at p.6. It is well known, was well known
`
`in 1988, that a stereo system must have a control panel in order to accept user commands (for
`
`example to “play” music).
`
`The addition of “speakers” is not patentably distinct. The limitation of having the
`
`digital signals on the second memory played through speakers connected to the seCond memory
`
`was obvious to a person skilled in the-art in 1988. Namely, it .was obvious that a customer would
`
`want to play the purchased music through speakers. Moreover, the addition of this limitation is
`
`obvious in view of at least Gallagher, Schwartz and Gremillet. Finally, Hair's claimed invention
`
`as described in the original '573 specification was an "advanced stereo system" capable of
`
`playing digital audio.
`
`'573 Prosecution History, Original Patent Application Filing at p.6. Such a
`
`unit would obviously be connected to speakers as this was customary for stereo systems and
`
`without speakers such a stereo system would be unable to produce sound.
`
`The addition of “video display” is not patentably distinct. A vidEo display was
`
`obviously required to’playback the digital video data disclosed in the claims of the ‘573. As Hair
`
`in prosecution claimed an “advanced stereo System” a person of skill in the art would know that
`
`the analogous video system would be a machine akin to a videocassette recorder, which would
`
`naturally be connected to a TV monitor, or something similar. Moreover, digital video was well
`
`known in the late 1980s. Gallagher and Rosch each illustrate the obviousness of a video display
`
`in the context of digital video in that time period.
`
`The addition of “coding” the signal to prevent unauthorized reproduction, or
`
`“encryption,” is not patentably distinctT One skilled in the art would have known in light of
`
`claims 3 and 6 of the '573 patent to code or encrypt the signals in a way to prevent unauthorized
`
`reproduction. Encryption was widely known and practiced in 1988. Specifically, the limitation
`
`of electronically coding the desired digital video or audio signals was obvious in view of at least
`REQUEST FOR REEXAMINATION
`OF US. PATENT NO. 5,966,440
`
`3
`
`Page 00008
`
`Page 00008
`
`

`

`Freeny, Gallagher, Waters and a PC Weekly 1987 article. That article stated: “Several software
`
`firms are including encryption as an option for their spreadsheet or database users. Other
`
`developers sell encryption hardware and software to tighten the lid on computer security.”
`
`The addition of “hard disk” is not patentably distinct. Usage of hard disc was known
`
`in the art well before 1988. Hair himself argued during the prosecution that “[t]he use of
`
`transferring money across telecommunications 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 ‘5 73 Prosecution History 6/25/92 Hair
`
`Decl.
`
`The addition of “integrated circuit” is not patentably distinct. A second party control
`
`integrated circuit was inherent in the ‘573 teaching of electronic sales. During the prosecution,
`
`Hair argued that “the ‘second party’ must have a ‘receiver’ (the control IC of the user in figure 1)
`in his ‘possession’ in order to receive the music electronically from the hard disk of the agent
`
`over the telecommunications lines, such as telephone lines.”)
`
`‘734 Prosecution History, 1/3/94
`
`Hair Decl., p. 3-4 (emphasis added). The limitation of a second party integrated circuit and a
`
`control panel connected to the integrated circuit was further obvious in view of at least
`
`Gallagher, Freeny, Akashi, Schwartz and Gremillet.
`
`The addition of RAM chip is not patentably distinct. The limitation of the incoming
`
`random access memory chip to buffer incoming data before storage to a hard disk and a playback
`
`random access memory chip to buffer digital signals prior to playback was obvious to a person
`
`skilled in art. It was also obvious in view of at least Gallagher, Freeny, Akashi, Schwartz and
`
`Ferrarini. Moreover, the functions attributed by Hair to the seller’s “sales random access
`
`memory chip” were well known within the field of digital telecommunications.
`
`Accordingly, the ‘440 claims the same invention as the ‘573 patent, and adds only minor
`
`and obvious limitations, all of the claims of the ‘440 patent are invalid for obviousness-type of
`
`double patenting. Because the Examiner had not rejected the claims on the basis of double
`
`4
`
`REQUEST FOR REEXAMINATION
`OF US. PATENT No. 5,966,440
`
`Page 00009
`
`Page 00009
`
`

`

`patenting during the prosecution of the ‘440 patent, Requestor’s analysis presents substantial new ,
`
`questions of patentability.
`
`II.
`
`RELATED AND CO-FILED REQUESTS FOR REEXAMINATION
`
`In addition to this Request for reexamination of the ‘440 patent, separate Requests
`
`for reexamination of the ‘573 and ‘734 patents have also been concurrently filed. As stated, 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 ‘440 PATENT
`
`The ‘440 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 ‘440 patent was in litigation in another case, also in the District
`
`Court for the Western District of Pennsylvania, styled as SightSoundcom Incomorated v. N2K,
`
`
`Inc. CDnow Inc. and CDnow Online Inc., Civil Action No. 98-0118. That case settled before
`
`trial with no judicial determination of the invalidity ofthe ‘440 patent.
`
`The ‘573 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
`
`Reexamination is requested for all claims, 1 through 63.
`REQUEST FOR REEXAMINATION
`OF US. PATENT N0. 5,966,440
`
`5
`
`Page 00010
`
`Page 00010
`
`

`

`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 Name
`
`Reference Description
`
`“Gall3 her”
`g
`
`“Gremillet”
`
`Great Britain Patent GB 2 178 275 A, “Recorded Data Transfer
`
`System,” filed July 16, 1986, published February 4, 1987.
`
`
`
`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.
`
`
`
`
`
`9
`
`“Freeny’
`
`9
`
`9
`
`US. Patent No. 4,528,643, “System For Reproducing
`Information InMaterial Objects At a Point of Sale Location,”
`filed January 10, 1983, issued on July 9, 1985.
`
`“Automated Music Purchasing System,” filed on June 3, 1986
`
`
`
`
`
`
`
`
` Japanese Patent Application No. S62-284496 to H. Akashi,
`
`
`and published on December 10, 1987. (Translation included.)
`
`
`US. Pat. No. 4,636,876, “Audio Digital Recording and Playback
`System,” filed April 19, 1983, issued January 13, 1987.
`
`m 13, 1983, issuedonApril 14, 1987.
`
`
`US. Pat. No. 4,658,093, Software Distribution System, filed July
`
`
`Ferrarini, “Direct Connections for Software Selections,” Business
`Computer Systems, February 1984.
`
`
`
`
`
`
`
`
`“Ferrarini’
`
`9
`
`.
`
`“ “ComNet for the PC,” PCMagazine, August 1983.
`
`“Elmer-Dewntt”
`
`‘6
`
`9
`
`9
`
`9
`
`“Calling Up an On-Line Cornucopia,” Time, April 7, 1986.
`
`“The Copy Protection Wars,” PC Magazine, January 14, 1986.
`
`“Network Applications Are Adding Encryption,” PC Week,
`MarCh 3, 1987.
`.
`‘
`
`Communications and Networkingfor the IBM PC, 1983.
`
`'
`
`“Waters”
`
`“Prospects for Standardization in Cable Audio,” Technical
`
`
`
`6
`
`REQUEST FOR REEXAMINATION
`OF US. PATENT NO. 5,966,440
`
`Page 0001 l
`
`
`
`
`
`Page 00011
`
`

`

`— Papers-NCTA Annual Convention, 1984.
`
`“McDonnell”
`
`“AT&T Breaks the Speed Barrier,” Computers & Electronics,
`September 1984.
`
`
`
`
`
`
`
`“Modems, Music, and Your Apple II,” A+, June 1988.
`
`"It's a Mac, Mac, Mac World," Manser, April 1988.
`
`For the reasons discussed below, the prior art patents and printed publications
`
`submitted herein raise substantial new questions of patentability of claims 1 through 63 of the
`
`'440 patent.
`
`VI.
`
`STATEMENT POINTING OUT SUBSTANTIAL NEW QUESTIONS OF
`PATENTABILITY
`'
`
`This Request for Ex Parte Reexamination of the ‘440 patent raises the following
`
`substantial new questions of patentability:
`
`1.
`
`2.
`
`3.
`
`Whether claims 1 — 63 are anticipated under 35 U.S.C. § 102 by Gallagher;
`
`Whether claims 1 — 63 are anticipated under 35 U.S.C. § 102 by Gremillet;
`
`Whether claims 1 — 63 are rendered obvious under 35 U.S.C. § 103 by
`Gallagher, in view of Gremillet, Freeny, Akashi, Schwartz, Hellman,
`Ferrarini, Rosch, Elmer-Dewitt, Jared, Kramer, Jordan, Waters,
`
`McDonnell, Fishcher and/or Zilber.
`
`4.
`
`Whether claims 1 — 63 are rendered obvious under 35 U.S.C. § 103 by
`
`Gremillet in view of Gallagher, Freeny, Akashi, Schwartz, Hellman,
`Ferrarini, Rosch, Elmer-Dewitt, Jared, Kramer, Jordan, Waters,
`
`McDonnell, Fishcher and/or Zilber.
`
`5.
`
`Whether claims 1 — 63 are unpatentable for double patenting in view of US.
`Patent No. 5,191,573, also issued to Arthur R. Hair.
`
`VII. DESCRIPTION OF THE RELEVANT PRIOR ART
`
`‘
`
`a
`
`In the following claim charts, the lefi hand column lists the claims of the ‘440
`
`patent and the right-hand column identifies the relevant portions of the cited references and
`
`7
`
`.
`
`REQUEST FOR REEXAMINATION
`OF US. PATENT NO. 5,966,440
`
`Page 00012
`
`Page 00012
`
`

`

`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 ‘440 patent
`
`obvious under 35 U.S.C. § 103, as specifically described below.
`
`8
`
`REQUEST FOR REEXAMINATION
`. OF US. PATENT N0. 5,966,440
`
`Page 00013
`
`Page 00013
`
`

`

`A.
`
`GALLAGHER (GB 2 178 275 A): Claims 1 — 63 of the Hair ‘440 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, Schwartz, Hellman, Ferrarini, Rosch, Elmer-Dewitt, Jared, Kramer,
`Jordan, Waters, McDonnell, Fishcher and/or Zilber.
`
`Gallagher (GB 2 178 275 A) was not cited or considered by the Examiner during
`
`the prosecution of the Hair ‘440 Patent. Gallagher was filed on July 16, 1986 and published on
`
`February 4, 1987, prior to the earliest priority date of June 13, 1988 of the Hair patent.
`
`I
`
`Accordingly, Gallagher is prior art to the Hair patent.
`
`I
`
`Gallagher 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.
`
`_S_e_e 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 desired digital 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. In addition Gallagher also teaches encryption and decryption of
`
`the digital audio or Video signals for the prevention ofunlawful copying and piracy. gee
`
`Gallagher at 1. Moreover, Gallagher discloses that the sale of the digital audio or video signal is
`
`through the user units, for example through the user’s personal computer. & Gallagher at 1.
`
`Accordingly, the Gallagher reference raises substantial new questions of
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`REQUEST FOR REEXAMINATION
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`patentability of the Hair patent.
`
`
`
`
`Gallagher discloses the transfer of desired digital video audio in a
`1. A method for transferring desired
`“recorded data transfer system” of “digital data” in the “entertainment
`digital video or digital audio signals
`
`
`comprising the steps of:
`industry” such as “audio or visual” data. & Gallagher at 1:5, 1:8, 126-7,
`
`
`
`1:91, Figs. 2 & 3
`
`
`
`
`Gallagher discloses forming a connection through telecommunication
`forming a connection through
`telecommunications lines between a
`
`lines. Gallagher at 1:28-31 (“The media for data transfer is preferably
`
`
`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.”).
`
`
`
`
`
`
`
`first memory of a first party and a
`second memory of a second party
`control unit of a second party, said first
`memory having said desired digital
`
`video or digital audio signals;
`
`
`Gallagher at 1:13-16 (The first memory of a first party is a “database
`having a main computer, .
`.
`. a data storage and processing system, means
`for controlling the storage and processing of data .
`.
`. .”) Gallagher at
`1:67-69 (First party can be the “source unit” which can also contain the
`first memory, and it “comprises a storage medium 11.”). Gallagher at
`
`1:5, 1:8, 1:6-7, 1291, Figs. 1 & 2 (first memory has desired digital video
`
`or digital audio signals).
`
`
`
`
`
`
`Gallagher also discloses a second memory of a second party control unit
`of a second party. Gallagher at 1:21-22 (“means for storing/recalling
`and/or processing data received from the database”). Gallagher at 1:102-
`
`14, 2:104-107 (“The user .
`.
`. can log on to the data base and make her/his
`
`selection according to a supplied menu.”).
`
`
`
`
`
`
`
`
`
`selling electronically by the first party
`Gallagher at 1:49-50 (Gallagher discloses “sale to the general public via
`
`to the second party through
`their user units”). Gallagher at 2:92-93 (“home-buying of material” and
`telecommunications lines, the desired
`“immediate access to material.”). Gallagher at 1:28-31 (The
`
`
`telecommunication line is “high speed telephone links by way of
`digital video or digital audio signals in
`
`
`modems. However, nomial telephone links, fibre optic links, electro-
`the first memory; and
`
`
`
`magnetic waves or any other suitable medium may be used.”).
`
`
`
`To the extent that this limitation is not fully disclosed by Gallagher, it
`
`would have been obvious to a person skilled in the art to modify
`Gallagher to include this limitation in view of US. Patent No. 4,528,643
`
`to Freeny at 13:31-36 (“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”).
`Or, in view of 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.”). Or, in view of Hellman at 5:57-
`
`622 (“Base unit 12 generates and communicates to authorization and
`
`
`
`
`
`billin_ unit 13 a si nal re-_resentin a user ori
`inated reuest for software
`
`'
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`use. . .BILLING INFORMATION is a credit car[d] number or similar
`means for billing the user of the software”).
`
`
` 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 ‘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”).
`
` & above this Claim, Gallagher disclosure re “desired digital video or
`digital audio signals” and re “first memory.”
`
`transferring the desired digital video or
`digital audio signals from the first
`memory of the first party to the second
`memory of the second party control unit
`of the second party through
`telecommunications lines while the
`
`
`
`
`Gallagher discloses transferring digital video or audio signals from the
`database to the user unit through telecommunication lines. Gallagher at
`
`
`
`1228-31, Figs. 1, 2. & 3 (“The media for data transfer is preferably 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.”).
`
`
`
`second party control unit with the
`
`
`second memory is in possession and
`Gallagher at 1:19-22 (“user unit having means for communication with
`
`control of the second party; and
`said database including a transmitter/receiver interface and means for
`
`
`
`storing/recalling and/or processing data received from the database”).
`
`is in possession and control).
` Gallagher at 1:49-50 (The general public has the user units and therefore
`
` playing through speakers of the second
`Gallagher discloses playback and speakers. Gallagher at Abstract, p.l
`(“Preferably the user unit includes playback apparatus”)
`party control unit the digital video or
`
`digital audio signals in the second
`
`memory, said speakers of the second
`Gallagher at 1:87-92 (“The user unit, Figure 3, comprises a .
`.
`. suitable
`
`party control unit connected with the
`conversion apparatus 34 for audio and/or visual reproduction”).
`second memory of the second party
`
`Gallagher also discloses a second memory of a second party control unit
` control unit.
`of a second party to which the speakers must be connected. Gallagher at
`1:19-22 (“user unit having means for communication with said database
`including a transmitter/receiver interface and means for storing/recalling
`
`and/or processing data received from the database”).
`
`
`
`
`2. A method as described in claim 1
`
`
`
`Gallagher discloses sale is to the general public. Gallagher at 1:49-50
`wherein the second party is at a second
`(“sale to the general public via their user units”)
`
`
`
`party location and the step of selling
`
`electronicall
`includes the ste. of
`Galla
`eneral oublic is at home and therefore at a
`
`
`
`
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` remote location. Gallagher at 2:92-93 (“home-buying of material” and
`
`charging a fee via telecommunications
`“immediate access to material”)
`lines by the first party to the second
`party at a first party location remote
`from the second party location.
`
`
`
`
`
`
`See also Claim 1, Gallagher disclosure re “selling electronically."
`
`
`
`
`
`
`
`3. A method as described -in claim 2
`
`
`wherein the second party has an account
`and the step of charging a fee includes
`the step of charging the account of the
`second party.
`
`Gallagher discloses that the first party is controlling use of the first
`memory and the second party is controlling the second memory.
`Gallagher at 1244-46 (“The source unit [first party] could belong to a
`recording artist, the main unit [database] to a major record company [also
`first party] and user units to the general public [second party].”).
`
`
`4. A method as described in claim 3
`
`
`SEQ Claim 1, Gallagher disclosure re “telecommunications lines.”
`wherein the step of charging the account
`
` m Claim 1, Gallagher disclosure re “selling electronically.” ‘
`of the second party includes the steps of
`telephoning the first party controlling
`
`
`
`use of the first memory by the second
`& Claim 1, Gallagher disclosure re “first party,” “first memory,” .
`party; providing a credit card number of
`“second party” and “second memory.”
`
`
`
`the second party controlling the second
`
`
`memory to the first party controlling the
`
`first memory so the second party is
`
`
`charged money.
`
`
`
`
`
`5. A method as described in claim 4
`
`
`Gallagher at 1:19-22 (“user unit having means for communication with
`said database including a transmitter/receiver inte