IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Serial No. 13/328,743
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`Inventor: Martin David Hoyle
`
`PROVIDING ACCESS TO INFORMATION RESOURCES
`
`USING A DIGITAL NETWORK PROTOCOL
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`Filed: December 16, 2011
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`Group Art Unit: 3622
`
`Examiner: Stacie D. Gatling
`
`Attorney Docket No. 5 153-3001-9
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`RESPONSE UNDER 37 CFR 1.111
`
`Commissioner for Patents
`
`PO. Box 1450
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`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`This response is being filed in reply to the Office Action mailed February 27,
`
`2013.
`
`A claims listing begins on page 2.
`
`Remarks follow the claims.
`
`Petitioner Samsung - Ex. 1013, p. 1
`
`Petitioner Samsung - Ex. 1013, p. 1
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`

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`U.S.S.N. 13/328,743
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`May 28, 2013
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`CLAIMS:
`
`The following is a listing of the claims showing their current status.
`
`1.
`
`(Original) Apparatus for use in providing a user of a computer with access to
`
`information resources via a digital network protocol, the apparatus comprising:
`
`a data storage device;
`
`a first program module stored on the data storage device in a computer-readable
`
`format;
`
`said first program module being operable upon execution by the computer to
`
`cause the display of a graphical user interface comprising a window separated into a
`
`number of regions;
`
`a first one of said regions including a number of user-selectable items, one or
`
`more of which are each associated with a different data set, said data set(s) each
`
`representative of a different category of information and each of said data set(s)
`
`comprising a number of user-selectable links to different information resources;
`
`a second one of said regions comprising an information display region;
`
`a second program module operable upon execution to request informational data
`
`to be displayed in said information display region;
`
`wherein said first program module is operable in response to user input to use a
`
`digital network protocol and retrieve an associated information resource using the digital
`
`network protocol, said first program module further being operable in response to the
`
`user input
`
`to notify said second program module of the user input, whereby said
`
`informational data is displayed in said second region of the graphical user interface of
`
`said first program module; and
`
`wherein said second program module is operable in response to notifications from
`
`said first program module to request the informational data to be displayed from among a
`
`larger amount of said informational data, said second program module filrther being
`
`operable to store statistical data regarding the display of said requested informational
`
`data.
`
`Petitioner Samsung - Ex. 1013, p. 2
`
`Petitioner Samsung - Ex. 1013, p. 2
`
`

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`U.S.S.N. 13/328,743
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`May 28, 2013
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`2.
`
`(Original) Apparatus as defined in claim 1, wherein the digital network
`
`protocol is a hypertext transfer protocol (HTTP), Transmission Control Protocol/Intemet
`
`Protocol (TCP/IP), or both.
`
`3.
`
`(Original) Apparatus as defined in claim 1, wherein the user input filrther
`
`comprises one or more keywords received at the computer from the user.
`
`4.
`
`(Original) Apparatus as defined in claim 1, wherein the user input filrther
`
`comprises user selection of one of the links.
`
`5.
`
`(Original) Apparatus as defined in claim 1, wherein the second program
`
`module is stored on the data storage deVice in computer readable form for execution by
`
`the computer.
`
`6.
`
`(Original) Apparatus as defined in claim 5, wherein the first program module
`
`further comprises a graphical user interface (GUI) and the second program module
`
`further comprises an advertising and data management (ADM) module.
`
`7.
`
`(Original) Apparatus as defined in claim 5, wherein the data storage deVice
`
`includes an update program module containing programming used to update one or both
`
`of the first and second program modules.
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`8.
`
`(Original) Apparatus as defined in claim 7, wherein the update program
`
`module comprises a third program module separate from the first and second program
`
`modules.
`
`9.
`
`(Original) Apparatus as defined in claim 1, wherein the data storage deVice
`
`includes an update program module containing programming used to update third party
`
`software stored on the data storage deVice.
`
`Petitioner Samsung - Ex. 1013, p. 3
`
`Petitioner Samsung - Ex. 1013, p. 3
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`

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`U.S.S.N. 13/328,743
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`May 28, 2013
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`10.
`
`(Original) Apparatus as defined in claim 1, wherein the data storage device
`
`includes a program module that enables distribution of third party software to the
`
`computer.
`
`11.
`
`(Original) Apparatus as defined in claim 1, wherein one of the program
`
`modules stored on said data storage device is operable upon execution to cause user
`
`financial information to be securely stored within a user profile and to enable the user to
`
`initiate a commercial transaction involving the transfer of the financial
`
`information
`
`between computers.
`
`12.
`
`(Original) Apparatus as defined in claim 1, wherein one of the program
`
`modules stored on said data storage device is operable upon execution to locate a URL or
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`product information within recognized text obtained from a scanned document via an
`
`optical character recognition program.
`
`13.
`
`(Original) Apparatus as defined in claim 1, wherein one of the program
`
`modules stored on said data storage device is operable upon execution to download
`
`electronic copies of published materials from a network or a non-volatile storage device.
`
`14.
`
`(Original) Apparatus as defined in claim 1, wherein one of the program
`
`modules stored on said data storage device is operable upon execution to work in
`
`conjunction with suitable server software to provide a virtual pre-paid cash card for use
`
`by the user.
`
`15.
`
`(Withdrawn) A method of providing a user of a computer that uses the
`
`apparatus of claim 1 with access to information resources via a digital network protocol,
`
`comprising the steps of:
`
`(a)
`
`(b)
`
`obtaining advertiser registration information;
`
`receiving advertising material associated with the advertiser;
`
`Petitioner Samsung - Ex. 1013, p. 4
`
`Petitioner Samsung - Ex. 1013, p. 4
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`

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`U.S.S.N. 13/328,743
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`May 28, 2013
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`(c)
`
`obtaining from the advertiser information used in combination with user
`
`demographic data to provide reactive targeting of the advertising material to one or more
`
`users over one or more networks;
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`(d)
`
`sending the advertising material to the computer over the one or more
`
`networks for purposes of presentation to the user as informational data selected by the
`
`second program module;
`
`(e)
`
`providing information to the advertiser concerning the sent advertising
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`material; and
`
`(f)
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`carrying out a financial transaction with the advertiser related to the sent
`
`advertising material.
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`16.
`
`(Withdrawn) The method of claim 15, wherein the receiving step further
`
`comprises receiving from the advertiser one or more criteria used in selecting advertising
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`material to be presented to the users.
`
`17.
`
`(Withdrawn) The method of claim 15, wherein step (c) further comprises
`
`providing a keyword that is associated with the advertising material and is used to
`
`provide reactive targeting of the advertising material to one or more users.
`
`18.
`
`(Withdrawn) The method of claim 17, wherein the computer comprises a
`
`portable phone and wherein step (d) further comprises sending advertising material
`
`wirelessly to the portable phone over the one or more networks.
`
`19.
`
`(Withdrawn) A method of providing a user of a computer that uses the
`
`apparatus of claim 1 with access to information resources via a digital network protocol,
`
`comprising the steps of:
`
`(a)
`
`receiving user demographic information at an advertising and data
`
`management (ADM) server, wherein the user demographic information is received from
`
`the computer using a digital network protocol;
`
`(b)
`
`storing advertisements associated with advertisers on the ADM server;
`
`Petitioner Samsung - Ex. 1013, p. 5
`
`Petitioner Samsung - Ex. 1013, p. 5
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`

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`U.S.S.N. 13/328,743
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`May 28, 2013
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`(c)
`
`sending at least some of the advertisements to the computer using a digital
`
`network protocol;
`
`(d)
`
`(e)
`
`receiving user input entered at the computer via the first program module;
`
`selecting one of the advertisements based on the user demographic
`
`information, the user input, or both; and
`
`(f)
`
`displaying the selected advertisement in the second region of the graphical
`
`user interface.
`
`20.
`
`(Withdrawn) The method of claim 19, wherein step (e) further comprises
`
`selecting the one or more advertisements using the second program module.
`
`21.
`
`(Withdrawn) The method of claim 20, wherein step (e) further comprises
`
`selecting the one or more advertisements at the computer using the second program
`
`module.
`
`22.
`
`(Withdrawn) The method of claim 19, wherein steps (d) and (e) are carried out
`
`at a server remote from the computer and wherein step (c) fiarther comprises sending the
`
`selected advertisement to the computer after step (e).
`
`23.
`
`(Original) Apparatus for providing a user of the apparatus with access to
`
`information resources via a digital network protocol, the apparatus comprising:
`
`a computer having a processing device, display, and a data storage device storing
`
`program modules including first and second program modules;
`
`said first program module presenting, on said display upon execution by said
`
`processing device, a graphical user interface (GUI) having a number of regions on said
`
`display including a first region containing a number of user-selectable items and a second
`
`region comprising an information display region;
`
`said second program module, upon execution by said processing device, being
`
`operable to obtain informational data at said computer, said informational data being
`
`received at said computer via a wireless communication path using a digital network
`
`protocol;
`
`Petitioner Samsung - Ex. 1013, p. 6
`
`Petitioner Samsung - Ex. 1013, p. 6
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`

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`U.S.S.N. 13/328,743
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`May 28, 2013
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`wherein, said first program module is operable to access an information resource,
`
`the information resource being presented on the display and the informational data being
`
`presented on the display in the information display region of the graphical user interface.
`
`24.
`
`(Original) Apparatus as defined in claim 23, wherein said first program
`
`module is operable to access the information resource in response to user selection of one
`
`of the user-selectable items.
`
`25.
`
`(Original) Apparatus as defined in claim 23, wherein said data storage deVice
`
`is a non-volatile data storage deVice.
`
`26.
`
`(Original) Apparatus as defined in claim 23, wherein said first program
`
`module is operable to access the information resource over the wireless communication
`
`path.
`
`27.
`
`(Original) Apparatus as defined in claim 23, wherein the computer comprises
`
`a portable phone.
`
`28.
`
`(Original) Apparatus as defined in claim 27, wherein said first and second
`
`program modules together comprise an application stored on said phone.
`
`29.
`
`(Original) Apparatus as defined in claim 27, wherein the data storage deVice
`
`includes an update program module containing programming used to update third party
`
`software stored on the data storage deVice.
`
`30.
`
`(Original) Apparatus as defined in claim 27, wherein one of the program
`
`modules stored on said data storage deVice is operable upon execution to download
`
`electronic copies of printed materials from a network or a non-volatile storage deVice.
`
`Petitioner Samsung - Ex. 1013, p. 7
`
`Petitioner Samsung - Ex. 1013, p. 7
`
`

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`U.S.S.N. 13/328,743
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`- 8 -
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`May 28, 2013
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`REMARKS
`
`This response is being filed in reply to the Office Action mailed February 27,
`
`2013 and following Applicant's previous election of claims 1-14 and 23-30 for further
`
`prosecution.
`
`In the Office Action, elected claims 1-14 and 23-30 were rejected and the
`
`non-elected claims 15-22 were not acted on. No claim amendments are being made.
`
`Accordingly, claims 1-30 remain pending in this application.
`
`Claims Status
`
`Claims 1-30 were previously subject
`
`to a restriction requirement for which
`
`Applicant elected claims 1-14 and 23-30 for further prosecution. Applicant notes that,
`
`although the Office Action indicates that only claims 1-14 and 23-30 are pending, non-
`
`elected claims 15-22 have not been canceled, such that the actual status of claims is that
`
`1-30 are pending with claims 15-22 being withdrawn from consideration.
`
`Claim Obiections for Priority
`
`Beginning on page 2 of the Office Action there is an objection to Applicant's
`
`claim for priority to Application No. 09/118,351.
`
`In particular,
`
`the Examiner has
`
`determined that adequate support for all of the limitations of claims 11, 14, 23, and 26-28
`
`is contained in Application No. PCT/US99/ 16135 filed July 16, 1999, but not in the
`
`priority Application No. 09/118,351 filed July 17, 1998.
`
`In this regard, Applicant agrees that all claims are properly supported under 35
`
`USC § 112 by Application No. PCT/US99/ 16135 and that, of the claims currently under
`
`consideration, at least claims 1-10, 12, 13, 24, 25, 29, and 30 are properly supported
`
`under 35 USC § 112 also by Application No. 09/ 118,351. However, Applicant
`
`respectfully submits that even though some claims may not be entitled to the July 17,
`
`1998 priority date, Applicant has in fact complied with all of the requirements for
`
`receiving the benefit of the filing date of Application No. 09/118,351 for those claims
`
`adequately disclosed by it. As stated in MPEP 201.11:
`
`Any claim in a continuation-in-part application which is directed solely to subject
`matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional
`
`Petitioner Samsung - Ex. 1013, p. 8
`
`Petitioner Samsung - Ex. 1013, p. 8
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`

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`May 28, 2013
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`application is entitled to the benefit of the filing date of the parent nonprovisional
`application. However, if a claim in a continuation-in-part application recites a
`feature which was not disclosed or adequately supported by a proper disclosure
`under 35 U.S.C. 112 in the parent nonprovisional application, but which was first
`introduced or adequately supported in the continuation-in-part application, such a
`claim is entitled only to the filing date of the continuation-in-part application; In
`re Cha, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); Transco Products, Inc. v.
`Performance Contracting Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994); In
`re Van Lagenhoven, 458 F.2d 132, 136, 173 USPQ 426, 429 (CCPA 1972); and
`Chromalloy American Corp. v. Alloy Surfaces Co., Inc., 339 F. Supp. 859, 874,
`173 USPQ 295, 306 (D. Del. 1972).
`
`To the extent that Application No. PCT/US99/ 16135 contains subject matter that
`
`would constitute new matter if it had been added after filing to Application No.
`
`09/118,351,
`
`it has the status of a continuation-in-part of Appl. No. 09/118,351, as
`
`indicated in the continuity status records of the Patent Office for this and other related
`
`applications. Thus, as noted above from MPEP 201.11, the priority date to which claims
`
`are entitled is determined on a claim-by-claim basis and, as such, the fact that some
`
`claims may not be entitled to the priority date of Appl. No. 09/118,351 does n_ot mean
`
`that Applicant's priority claim to Appl. No. 09/118,351 is defective or does not meet the
`
`requirements of 35 USC § 120; it merely means that not all claims are entitled to the
`
`priority of that application.
`
`Reiection under § 1 02
`
`Claims 1, 2, 4-10 and 13 are rejected under 35 U.S.C.
`
`§ 102(e) as being
`
`anticipated by Marsh et al. 5,848,397. This rejection is respectfully traversed for the
`
`reasons discussed below.
`
`It is noted that Marsh is being applied under § 102(e) and Applicant reserves the
`
`right to later present any suitable evidence demonstrating a date of invention prior to the
`
`April 19, 1996 filing date of Marsh so as to remove Marsh as prior art.
`
`Applicant respectfully submits that no prima facie case of anticipation by Marsh
`
`has been made in the Office Action. In particular, with respect to independent claim 1, it
`
`recites, inter alia:
`
`Petitioner Samsung - Ex. 1013, p. 9
`
`Petitioner Samsung - Ex. 1013, p. 9
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`

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`U.S.S.N. 13/328,743
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`- lO -
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`May 28, 2013
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`[l] a first one of said regions including a number of user-selectable items, one or
`
`more of which are each associated with a different data set, said data set(s) each
`
`representative of a different category of information and each of said data set(s)
`
`comprising a number of user-selectable links to different information resources;
`
`[2] a second program module operable upon execution to request informational data
`
`to be displayed in said information display region; [and]
`
`[3] wherein said first program module is operable in response to user input to use a
`
`digital network protocol and retrieve an associated information resource using the
`
`digital network protocol, said first program module further being operable in
`
`response to the user input to notify said second program module of the user input,
`
`whereby said informational data is displayed in said second region of the
`
`graphical user interface of said first program module;
`
`The Office Action has not identified disclosure from Marsh that fully discloses these
`
`limitations, either expressly or inherently, as is required for anticipation.
`
`As to [l], the Office Action cites col. 6, lines 56-60 of Marsh. That portion of
`
`Marsh status that the disclosed client software may run in a GUI environment such as
`
`WindowsTM and that it can be launched by clicking on an icon representing the software.
`
`This excerpt does not disclose a region "including a number of user-selectable items, one
`
`or more of which are each associated with a different data set, said data set(s) each
`
`representative of a different category of information and each of said data set(s)
`
`comprising a number of user-selectable links to different information resources" as is
`
`recited in claim 1.
`
`With respect to [2],
`
`the Examiner has likened the recited "second program
`
`module" to Marsh's "ad program" (advertisement display scheduler 700), but has not
`
`shown that Marsh teaches (or even renders obvious) that the advertisement display
`
`scheduler 700 is operable upon execution to request ads or any other informational data
`
`to be displayed, as recited in the claim. The cited portion of Marsh at col. 6, lines 30-35
`
`states that advertisements are presented either as banner advertisements or showcase
`
`Petitioner Samsung - Ex. 1013, p. 10
`
`Petitioner Samsung - Ex. 1013, p. 10
`
`

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`May 28, 2013
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`advertisements and is controlled by the scheduler 700, but does not indicate that the
`
`scheduler 700 requests any of the advertisements, as recited in the claim.
`
`And, with respect to [3] recited above, the Office Action cites col. 6, lines 4-8 and
`
`49-60 and col. 7, lines 1-25; however, none of these cited excerpts state or otherwise
`
`indicate that the first program module (email program according to the Office Action) is
`
`"operable in response to user input to use a digital network protocol and retrieve an
`
`associated information resource" m that the first program module (email program) is
`
`also "operable in response to the user input to notify said second program module
`
`[scheduler 700 according to the Office Action] of the user inpu ." Rather, the cited
`
`portions disclose (a) that Marsh's system includes input and output devices (monitor,
`
`keyboard, mouse),
`
`(b) installation of Marsh's client software, (c) operation in a GUI
`
`environment and use of an icon for launching the client software, and (d) display and
`
`recording of advertisement display, none of which meets the above-quoted limitations
`
`from claim 1.
`
`Accordingly, for at least the foregoing reasons, Applicant respectfully submits
`
`that claim 1 is not anticipated by Marsh. Further, it is submitted that there is nothing
`
`from Marsh that would lead one of ordinary skill in the art to create a system that
`
`includes all of these limitations fiom claim 1 or that would otherwise render obvious the
`
`subject matter of that claim. Rejected claims 2, 4-10 and 13 each ultimately depend from
`
`claim 1 and the rejection of these claims is deficient at least for the reasons discussed
`
`above in connection with claim 1. Accordingly, withdrawal of the rejection is requested.
`
`Reiections under § 1 03
`
`Claims 3 and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
`
`over Marsh in view of LeMole et al. 6,009,410. Claim 12 stands rejected under 35
`
`U.S.C. 103(a) as being unpatentable over Marsh and Browning 6,081,629. Claim 14
`
`stands rejected under 35 U.S.C. 103(a) as being unpatentable over Marsh in view of
`
`Tavor et al. 6,070,149. And claims 23-30 stand rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Marsh and Hanson et al. 5,974,398. The rejections of these claims are
`
`respectfully traversed for the reasons discussed below.
`
`Petitioner Samsung - Ex. 1013, p. 11
`
`Petitioner Samsung - Ex. 1013, p. 11
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`

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`U.S.S.N. 13/328,743
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`With respect to the rejections of claims 3, ll, 12, and 14, each of these claims
`
`depends from claim 1 and the secondary references (LeMole, Browning, and Tavor) are
`
`each only cited on the basis that they disclose or render obvious the additional limitations
`
`expressly included in the dependent claims. As such, none of these references have been
`
`shown to make up for the above-noted deficiency of Marsh as it applies to the underlying
`
`base claim 1. Thus, because there are limitations of claim 1 not disclosed in Marsh or
`
`otherwise shown to be obvious from the prior art, no prima facie case of obviousness has
`
`been made out for these claims. Withdrawal of the rejections is therefore requested.
`
`As to claims 23-30, Applicant notes that claim 23 is independent and claims 24-
`
`30 each ultimately depend from claim 23. Claim 23 recites, inter alia,
`
`[4] said second program module, upon execution by said processing device, being
`
`operable to obtain informational data at said computer, said informational data
`
`being received at said computer via a wireless communication path using a digital
`
`network protocol;
`
`[5] wherein, said first program module is operable to access an information resource,
`
`the information resource being presented on the display and the informational
`
`data being presented on the display in the information display region of the
`
`graphical user interface.
`
`The Office Action has not identified disclosure from Marsh or Hanson that discloses,
`
`suggests or otherwise renders obvious these limitations.
`
`In particular, with respect to [4], the Office Action does not cite any portion of
`
`Marsh, but only asserts that it would be obvious to use wireless communication and
`
`identifies col. 3, lines 5-12 of Hanson as an example of using wireless communication in
`
`a specific electronically-supplied advertising application. Limitation [4] recites that it is
`
`the second program module that obtains informational data which is received at the
`
`computer. The fact that Hanson teaches use of a wireless device in lieu of its end-user
`
`PC 160 is not itself sufficient to meet these limitations.
`
`Petitioner Samsung - Ex. 1013, p. 12
`
`Petitioner Samsung - Ex. 1013, p. 12
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`

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`And, more significantly, with respect to [5],
`
`it recites that the first program
`
`module is operable to access an information resource that is presented on the display.
`
`The cited portions of Marsh contained in the Office Action disclose (a) that Marsh's
`
`system includes input and output devices (monitor, keyboard, mouse),
`
`(b) installation of
`
`Marsh's client software, (c) operation in a GUI environment and use of an icon for
`
`launching the client software, none of which teach or suggest a first program module that
`
`is operable to access an information resource that is presented on the display.
`
`Accordingly, Applicant
`
`respectfully submits
`
`that no prima facie case of
`
`obviousness has been made out for claim 23. Further, claims 24-30 each ultimately
`
`depend from claim 23 and so the rejection of these claims is improper for at least the
`
`same reasons as discussed above with respect to claim 23. Withdrawal of the rejection is
`
`therefore requested.
`
`Conclusion
`
`In view of the foregoing, Applicants respectfully submit that all claims are
`
`allowable over the prior art. Reconsideration is therefore requested. The Examiner is
`
`invited to telephone the undersigned if doing so would advance prosecution of this case.
`
`The Commissioner is hereby authorized to charge Deposit Account No. 50-0852
`
`for any required fees or to credit that same deposit account with any overpayment
`
`associated with this communication.
`
`Respectfully submitted,
`
`REISING ETHINGTON P.C.
`
`/James D. Stevens/
`
`
`James D. Stevens
`
`Registration No. 3 5,691
`PO. Box 4390
`
`Troy, Michigan 48099
`(248) 689-3500
`
`Date: May 28, 2013
`JDS/kc
`
`Petitioner Samsung - Ex. 1013, p. 13
`
`Petitioner Samsung - Ex. 1013, p. 13
`
`