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`Uitiil'ED srArEs.,':4;pAnrMsm or commence
`Patent and Trademark Office
`Address: QMMISSIUNFJR OF PATENTS AND TRADEMARKS
`Washington. DC. 20231
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`8,219 , 30 1
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`$3/16/94
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`LIZICKUJDCID
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`new M '=HW*‘55‘°”
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`SAN DIEGO. CA 92109
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`This is a communication trom the examiner in charge of your application.
`COMMISSIONER OF PATENTS AND TRADEMARKS
`
`" ’°
`
`» 5
`me/25/95
`
`2411
`
`DATE MAILED:
`
`E] This action is made {Ina},
`aiitesponslve to communication filedon Q ’ )
`D This application has been examined
`
`A shortened statutory period tor response to this action is set to expire 3 month(s).
`---— days from the date oi this letter.
`Failure to respond within the period ior response will cause the application to become abandoned. 35 U.S.C. 133
`Part I THE FOLLOWING ATTACHM_ENT(S) ARE PART OF THIS ACTION:
`MENotice of Fieierenoes Cited by Examiner, PTO-892.
`3. Ci Notice of Art Cited by Applicant, PTO—1449.
`5. D iniormation on How to Etiect Drawing Changes, PTO-1474-
`Part II
`SUMMARY OF ACTION
`
`2. Xmtice orDraftsman's Patent Drawing Review, PTO-948.
`4. El Notice of iniomtal Patent Application. 970152.
`6.
`
`1. Eclaims
`01 the above, claims
`
`I ’ i C;-a
`
`
`are pending in the application.
`are withdrawn trom consideration.
`
`I
`
`.
`I " i g
`
`’
`
`are allowed.
`3. D Claims
`are rejected.
`flmciaims
`are objected to.
`I
`5. D Claims
`are subject to restriction or election requirement.
`.
`6. D Claims
`7. D This application has been tiled with lniorrnai drawings under37 C.F.Fi. 1.85 which are acceptable for examination purposes.
`8. D Formal drawings are required in response to this Oifice action.
`. Under 37 C.F.i'-i. 1.84 these drawings
`- :'
`9. E] The corrected orsubstitutedrawings have been received on
`are D acceptable: D not acceptable (see explanation or Notice oi Draftsman's Patent Drawing Review, PT0948).
`10. D The proposed additional or substitute sheet(s) ol drawings. filed on
`. has (have) been Dapproved by the
`examiner; D disapproved by the examiner (see explanation).
`
`has been Dapproved; Ddisapproved (see explanation).
`11. E] The proposed drawing correction, filed
`12. D Acknowledgement is made of the‘claim ior priority under 35 U.S.C. 119. The certified copy has El been received U not been received
`;iiled on .
`
`U been tiled in parent application, serial no.
`13. D Since this application apppears to be in condition ior allowance except foriormal matters. prosecution as to the merits is closed in
`accordance with the practice. under Ex parte Quayle, 1935 CD, 11: 453 O.G. 213.
`14. D Other
`
`._.__..._
`
`
`. ‘
`
`1
`
`.
`
`1/;
`.
`,
`.
`’ Landmark Exhibit 2006
`"Ebay and GSI V. Landmark
`
`1PR2014-00026
`
`1
`
`Landmark Exhibit 2006
`Ebay and GSI v. Landmark
`IPR2014-00026
`
`

`
`Serial Number: 08/210,301
`
`-2-
`
`Art Unit: 2411
`
`Part III DETAILED ACTION
`
`Response to Amendment
`
`1.
`
`Applicant's arguments with respect to claims 1-12 have been considered but
`
`are deemed to be moot in view of the new grounds of rejection.
`
`2.
`
`The following is a quotation of the first paragraph of 35 U.S.C. § 112:
`
`Specification
`
`The specification shall contain a written description of the invention, and of
`the manner and process of making and using it, in such full, clear, concise,
`and exact terms as to enable any person skilled in the art to which it
`pertains, or with which it is most nearly connected, to make and use the
`same and shall set forth the best mode contemplated by the inventor of
`carrying out‘ his invention.
`
`The specification is objected to under 35 U.S.C. § 112, first paragraph, as
`
`the specification, as originally filed in the parent applications of this case, fails to
`
`provide support for the invention as now claimed. Moreover, the specification is
`
`further objected to under this section of the statute because the specification of the
`
`instant case fails to provide an adequate written description of the claimed
`
`invention.
`
`A)
`
`Parent applications fail to provide support
`
`for the invention as now claimed.
`
`As stated in the previous Office action, the claims recite "entry path means,
`
`"textual search entry path means," "graphics entry path means," "title finder entry
`
`2
`
`

`
`Serial Number: 08/210,301
`
`-3-
`
`Art Unit: 2411
`
`path means," "means for searching through the entry path means," and 'ineans for
`
`searching for and retrieving interrelated textual or graphical information after
`
`searching and retrieving the graphical or textual information firstll respectively,
`
`which are not supported by the previous disclosures from which the applicant is
`
`claiming priority.
`
`The applicant has amended the specification of the instant case to correct
`
`the continuity of the disclosures. In doing so, the applicant has now stated that
`
`the current applicant is a continuation-in-part of the two parent applications.
`
`Within the string of continuity, there are several.CIP applications. However, the
`
`applicant then alleges, in a very confusing manner, that "the instant application is
`
`a straight continuation of '115 through '856, ‘O26 and '610, as well as a straight
`
`continuation of '283 through '654. Moreover, Patent Number '359 which issued
`
`from '525 was fully incorporated by reference into '283." Amdt. A, page 3. The
`
`examiner is unsure of what the applicant meant by these statements. The
`
`applicant appears to be stating that the instant application is actually a straight
`
`continuation of these applications, but the examiner does not understand the
`
`reasoning. The instant application cannot be a CIP and a "straight continuation"
`
`at the same time.
`
`The applicant went even further in his arguments that the parent
`
`applications provide support for the claimed means by providing a chart, Exhibit
`
`3
`
`

`
`Serial Number: 08/210,301
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`-4-
`
`Art Unit: 2411
`
`II, which allegedly points out the support for the claimed means in one of the
`
`strings of continuity. However, the examiner respectfully asserts that this chart
`
`fails to point out specific structural elements in the disclosures of those
`
`applications which correspond to the recited means of the instant claims. In fact,
`
`the applicant has pointed to, in many of the instances, at least 2 and sometimes
`
`up to 6 figures and large portions of the specification which allegedly provide
`
`support for each listed means in the claims. The examiner has begun to review
`
`the cited figures and portions of specification pointed to by the applicant in the
`
`chart, and is unable to determine where the support should be found. The
`
`examiner cannot be expected to guess which elements in those figures or the
`
`portions of the specification are the intended support for the recited means. If the
`
`applicant wants to continue with this argument, then specific elements in the
`
`figures and their related description in the specifications should be pointed to so
`
`that the examiner can make a determination as to the sufficiency of the alleged
`
`support.
`
`In response to the chart as it has been submitted, the examiner
`
`maintains that the parent cases do not provide support for the above-listed means
`
`in the instant claims.
`
`Since the examiner does not see any convincing reason why the parent
`
`applicants provide support for the means recited in the instant claims, the
`
`objection under this section is maintained for the reasons stated above.
`
`4
`
`

`
`Serial Number: 08/210,301
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`-5-
`
`Art Unit: 2411
`
`NOTE: In light of the amendments to the continuity and the arguments
`
`relating to the application being a straight continuation, the examiner requests
`
`that the applicant explain exactly why the current application has been changed
`
`to a CIP.
`
`In other words, by doing so, the applicant has admitted that there is
`
`disclosure in the current application that did not have support in the parent cases.
`
`The examiner would like to know what the applicant considers to be that new
`
`disclosure as opposed to that part of the disclosure which finds support in the
`
`parent cases.
`
`B)
`
`The instant sgecification fails to Qrouide an adequate written descrigtion 3f
`
`the claimed invention.
`
`a)
`
`The claims recite "entry path means," "textual search entry path
`
`means," "graphics entry path means," and "title finder entry path means," but the
`
`specification does not make it clear what these means are. In other words, it is
`
`not clear from the description in the specification what the recited means
`
`represent structurally. Since there is no mention of an entry path means in the
`
`specification in association with any structure which is represented by that
`
`recitation, a sufficient description as to the interpretation of these means has not
`
`been provided.
`
`For the purposes of advancing prosecution on the case, the examiner has
`
`made an attempt to interpret the meanings of these recitations. The examiner
`
`5
`
`

`
`Serial Number: O8/210,301
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`-6-
`
`Art Unit: 241 1
`
`has interpreted the entry path means to represent the menu driven system, i.e.
`
`the broad topics associated with more specific information, such as items or
`
`services for which the system will search, after selection of those topics.
`
`b)
`
`Claim 7 recites an assisting means. Similarly to the means discussed
`
`in paragraph a, it is unclear what the structural equivalent of this means is from
`
`the specification. There is no discussion in the specification of "assisting the user
`
`in searching" the information.
`
`In fact, it appears that the system performs the
`
`searching, and therefore, there would be no logical reason to have a means for
`
`assisting the ysgj in searching.
`
`Again, for the purposes of advancing the prosecution of the case, the
`
`examiner will interpret this means to be related to the menu driven system and
`
`the screens provided to the user in order to assist in collecting the necessary
`
`information to perform a correct search.
`
`Claim Rejections - 35 USC § 112
`
`3.
`
`Claims 1-12 are rejected under 35 U.S.C. § 112, first paragraph, for the
`
`reasons set forth in the objection to the specification.
`
`6
`
`

`
`Serial Number: 08/210,301
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`-7-
`
`Art Unit: 2411
`
`4.
`
`Claims 1-12 are rejected under 35 U.S.C. § 112, second paragraph, as being
`
`indefinite for failing to particularly point out and distinctly claim the subject
`
`matter which applicant regards as the invention.
`
`A)
`
`Claims 1-12 are rejected for the reasons stated above in paragraphs 2-3. "If
`
`an applicant fails to set forth an adequate disclosure, the applicant has in effect
`
`failed to particularly point out and distinctly claim the invention required by the
`
`second paragraph of section 112." In;Donaldson @._l_1&, 29 USPQ 2d at 1850.
`
`B)
`
`As per claim 12, line 17, the claim recites that the program means displays
`
`inquiries and acceptable answers. However, the display must perform this
`
`function. The examiner suggests that "displaying" be changed to "controlling the
`
`display" or something similar. Also, on the same line, in appears that "display"
`
`should be inserted before "device." Otherwise, it would be unclear to which device
`
`that limitation was referring.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. § 103 which forms the basis for all
`5.
`obviousness rejections set forth in this Office action:
`
`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.
`
`7
`
`

`
`Serial Number: 08/210,301
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`-8-
`
`Art Unit: 241 1
`
`Subject matter developed by another person, which qualifies as prior art
`only under subsection (0 or (g) of section 102 of this title, shall not preclude
`patentability under this section where the subject matter and the claimed
`invention were, at the time the invention was made, owned by the same
`person or subject to an obligation of assignment to the same person.
`
`6.
`
`Claims 1-12 are rejected under 35 U.S.C. § 103 as being unpatentable over
`
`Lockwood et al. (4,359,631).
`
`The details of the applicant's claims are seen to correspond to the cited
`
`reference as follows:
`
`A)
`
`As per claim 1:
`
`a)
`
`The means for storing interrelated textual information and graphical
`
`information and the means for interrelating said textual and graphical
`
`information are shown by the video storage and playback unit 27 and the mass
`
`storage unit 28. Lockwood, col. 3, lines 12-25. While the Lockwood disclosure
`
`does not specifically discuss the interrelation of textual and graphical information,
`
`it is clear that the system presents both types of data and that those types of data
`
`must be interrelated in order to provide the customer with the full amount of
`
`information available on their selected topic. Therefore, one of ordinary skill in
`
`the art at the time of the invention would have been motivated to interrelate the
`
`textual and graphical information of Lockwood in order to enable the system to
`
`retrieve all relevant information during one search.
`
`8
`
`

`
`Serial Number: 08/210,301
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`-9-
`
`Art Unit: 2411
`
`b)
`
`The plurality of entry path means, textual search entry path means,
`
`and the graphics entry path means all relate to the system being menu driven and
`
`the interrelation of information to ease the searching process. The system of
`
`Lockwood is a menu-type system (col. 7, line 1 - col. 8, line 50), and therefore
`
`would likely arrange the information relating to one topic in the same searching
`
`pattern or the like. One of ordinary skill in the art at the time of the invention
`
`would have been motivated to store information within the same menu topic
`
`together for faster searching capabilities.
`
`c)
`
`The selecting means corresponds to the menu-type system of
`
`Lockwood. Lockwood, col. 7, line 1.
`
`d)
`
`The processing means for executing inquiries by a user to search for
`
`information corresponds to the discussion of the menu-type system and the specific
`
`examples of how the system accesses information requested from the user at the
`
`menu stage. Lockwood, col. 7, line 1 - col. 8, line 50.
`
`e)
`
`The accessing means is shown by the same discussion as mentioned
`
`above in paragraphs b and d. The purpose of the Lockwood system is to provide
`
`the customer with all relevant information in order to ultimately make some type
`
`of sale. Therefore, it would have been obvious to provide access to information in
`
`other entry path means if it were relevant to the user's inquiry.
`
`9
`
`

`
`Serial Number: O8/210,301
`
`-10-
`
`Art Unit: 241 1
`
`f)
`
`The output means corresponds to the CRT display device 10 (col. 5,
`
`lines" 19-21) or the printer 11 (col. 6, lines 16-21).
`
`B)
`
`As per claim 2, Lockwood discloses textual information including "alpha
`
`numerical information, symbols, graphic information, etc., typically associated
`
`with texts or word-oriented applications" which are stored in the mass storage
`
`unit 28. Lockwood, col. 3, lines 26-28 and col. 5, lines 29-33.
`
`C)
`
`As per claim 3, Lockwood also discloses the use of graphical or image
`
`information including travel videos and the like. Lockwood, col. 3, lines 28-32.
`
`While Lockwood does not specifically disclose the use of maps and charts, the
`
`examiner respectfully asserts that the use of maps and charts in the field of travel
`
`planning is common and well known (shown in travel brochures, etc.), and that
`
`the inclusion of these types of graphical information would have been obvious to
`
`one of ordinary skill in the art for the purpose of providing all information to the
`
`user of the system that they might receive in an actual travel agency.
`
`D)
`
`As per claim 4, Lockwood discloses that audio information is included in the
`
`operation of the system. Lockwood, col. 1, lines 40-44 and 64-66; col. 3, lines 3-6;
`
`col. 5, lines 22-24.
`
`E)
`
`As per claim 5, Lockwood discloses a video disc 27 which "can provide local
`
`storage of high resolution video image and audio information." Lockwood, col. 5,
`
`10
`
`10
`
`

`
`Serial Number: 08/210,301
`
`-11-
`
`Art Unit: 2411
`
`lines 49-56. This type of storage is equivalent to that of the CD-ROM disc recited
`
`in the claim.
`
`F)
`
`As per claim 6, the micro-computer is shown by the central processor 30.
`
`Lockwood, col 4, lines 39-68; col. 5, lines 7-14; col. 6, line 65 - col. 7, line 1.
`
`G)
`
`As per claim 7, since it is not clear what the "assisting means" is meant to
`
`represent (see 1] 2Bb above), the examiner has interpreted this recitation as best
`
`as possible. Therefore, the examiner asserts that the menu-type system and the
`
`questions presented to the user in Lockwood encompass this recitation. Lockwood,
`
`col. 3, lines 32-34.
`
`H)
`
`As per claim 8, as in claim 4, Lockwood discloses audio information.
`
`Lockwood, col. 4, lines 39-47.
`
`I)
`
`As per claim 9, as in claim 3, the types of graphical information are either
`
`disclosed by Lockwood or are obvious modification to the Lockwood system.
`
`Lockwood, col. 3, lines 28-32.
`
`J)
`
`As per claim 10, the examiner respectfully asserts that the discussion of the
`
`operation of the Lockwood system with respect to the menu-type system and the
`
`steps taken to collect information from the user and searching for relevant
`
`information encompass the recitations of topics and sub-topics in the entry path
`
`means recited in this claim. Lockwood, col. 7, line 1 - col. 8, line 38.
`
`11
`
`11
`
`

`
`Serial Number: 08/210,301
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`-12-
`
`Art Unit: 2411
`
`K)
`
`As per claim 11, this claim recites essentially the same limitations as
`
`claim 1 and is therefore rejected for the same reasons stated above in paragraph
`
`_A. However, this claim further recites a "title finder entry path means." While
`
`the examiner is unsure of the exact meaning of this term (see 11 2A and 2Ba
`
`above), she alleges that Lockwood discloses the ability to retrieve a listing of
`
`available travel documentaries which the examiner feels encompasses this
`
`limitations. Lockwood, col. 7, lines 24-31.
`
`L)
`
`As per claim 12:
`
`a)
`
`The computerized data processing installations for processing orders
`
`corresponds to the remote site computer 42 of Lockwood's system.
`
`b)
`
`The computerized station corresponds to the self service terminal 1 of
`
`Lockwood.
`
`c)
`
`The micro-processor corresponds to the central processor 30 of
`
`Lockwood.
`
`d)
`
`The device for displaying graphical and textual material corresponds
`
`to the CRT display 10.
`
`e)
`
`The mass memory device corresponds to the video disc 27 and mass
`
`storage unit 28.
`
`f)
`
`The means for addressing the computerized data processing
`
`installations for sending and receiving coded messages and batches of data
`
`12
`
`12
`
`

`
`Serial Number: 08/210,301
`
`-13-
`
`Art Unit: 2411
`
`corresponds to the modems 38 and 39 and the remote interface disclosed by
`
`Lockwood. Lockwood, col. 4, lines 67-68 and col. 5, line 65 - col. 6, line 2.
`
`g)
`
`The program means for displaying inquiries and acceptable answers
`
`corresponds to the operational program disclosed from col. 6, line 65 through
`
`col. 7, line 3 of Lockwood.
`
`h)
`
`The user operated means, the means for accumulating acceptable
`
`answers, and the means for processing the answers correspond to the operations
`
`described in col. 7, line 1 through col. 8, line 18 of Lockwood.
`
`i)
`
`The means for storing corresponds to the video disc 27 and mass
`
`storage unit 28.
`
`j)
`
`The means for interrelating textual and graphical information and
`
`the plurality of entry path means were addressed in the rejection of claim 1 and
`
`are fully incorporated herein.
`
`k)
`
`The means for executing inquiries provided by the user corresponds
`
`to the discussion in col. 7, lines 45-49 as to how the Lockwood system searches for
`
`data.
`
`1)
`
`The means for executing and searching by addressing an installation
`
`and the means for transferring orders for goods and services to said installations
`
`correspond to the means discussed in the reservation sequence of Lockwood in
`
`col. 7, line 62 - col. 8, line 18.
`
`13
`
`13
`
`

`
`Serial Number: 08/210,301
`
`-14-
`
`Art Unit: 241]
`
`Conclusion
`
`7.
`
`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure.
`
`Many references have been included which disclose systems similar to that
`
`of the claimed invention.
`
`Any inquiry concerning this communication or earlier communications from
`8.
`the examiner should be directed to Jennifer (Hazard) Dixon, whose telephone
`number is (703) 305-9778. The examiner can normally be reached on Monday
`through Thursday from 7:00 AM to 5:00 PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the
`examiners’ supervisor, Gail Hayes, can be reached at (703) 305-9711. The fax
`phone number for this Group is (703) 305-9564 or (703) 305-9565.
`
`Any inquiry of a general nature or relating to the status of this application
`should be directed to the Group receptionist whose telephone number is (703)
`305-3800.
`'
`
`ennifer H. Dixon
`September 13, 1995
`
`suPERV\S0“;{oUp W,
`
`14
`
`14