it
`
`Express Mail Label No. EV 156 915 183 US
`
`UTILITY PATENT APPLICATION TRANSMITTAL
`(Large Entity)
`\ (Only for new nonprovisional applications under 37 CFR 1.53(b))
`
`Docket No.
`424751
`
`Total Pages in this Submissen
`
`TO THE ASSISTANT COMMISSIONER FOR PATENTS
`Box Patent Application
`Washington, D.C. 20231
`
`lllllllllllll
`11/18/0
`
`iiD
`
`PN c U
`
`}
`
`invention entitled: #
`ENHANCED VIDEO PROGRAMMING SYSTEM AND METHOD FOR INCORPORATING AND
`DISPLAYING RETRIEVED INTEGRATED INTERNET INFORMATION SEGMENTS
`
`d invented by:
`
`Crai ULLMAN
`Jack . HIDARY
`Nova T. SPIVACK
`
`. If a CONTINUATION APPLICATION, check appropriate box and supply the requisite information:
`
`3 Continuation
`
`Cl Divisional
`
`:l Continuation-in-part(ClP)
`
`of prior application No.:
`
`09i998,590
`
`,Which is a:
`
`XI Continuation ‘Cl Divisional
`
`:1 Continuation-in-part(C|P)
`
`of prior application No.:
`
`09/633,351
`
`Which is a:
`
`09/472,385
`of prior application No.:
`:l Continuation-in-part(ClP)
`Cl Divisional
`XI Continuation
`which is a continuation of U.S. application Serial No. 09/109,945, now U.S.
`Patent No. 6,018,768, which is a continuation—in—part of U.S- application Serial
`Enclosed are:
`08/615,143, now 11.5. Patent No. 5,778,181, which is a continuation—i—
`APP"°3ti°" Elements
`part of 08/613,144, abandoned.
`
`Filing fee as calculated and transmitted as described below
`
`Specification having H
`
`47
`
`pages and including the following:
`
`I Descriptive Title of the Invention
`
`E
`
`Cross References to Related Applications (if applicable)
`
`Statement Regarding Federally-sponsored Research/Development (if applicable)
`
`Reference to Sequence Listing. a Table. or a Computer Program Listing Appendix
`
`IZIJD Background of the Invention
`
`M Brief Summary of the Invention
`
`Bl
`
`Brief Description of the Drawings (if filed)
`
`K Detailed Description
`
`PS C|aim(s) as Classified Below
`
`Bl
`
`Abstract of the Disclosure
`
`Page I of4
`
`‘
`
`PO1ULRG/REV06
`
`
`
`NTFX-1002 / Page 1 of 1867
`
`

`
`UTILITY PATENT APPLICATION TRANSMITTAL
`Lar e Entit
`(
`g
`y)
`(Only for new nonprovisional applications under 37 CFR 1.53(b))
`
`I Drawing(s) (when necessary as prescribed by 35 USC 1 13)
`
`Application Elements (Continued)
`
`Total Pages in this Submission
`90
`
`.<1.o.U.n=U.U9=
`
`3]
`
`II
`
`Formal
`
`Informal
`
`Number of Sheets
`
`Number of Sheets
`
`Oath or Declaration
`
`:1 Newly executed (original or COPY)
`
`CI Unexecuted
`
`XI Copy from a prior application (37 CFR 1.63(d)) (for continuation/divisional application only)
`
`With Power of Attorney
`
`CI Without Power of Attorney
`
`_] DELETION OF lNVENTOR(S)
`Signed statement attached deleting inventor(s) named in the prior application,
`see 37 C.F.R. 1.63(d)(2) and 1.33(b).
`
`Incorporation By Reference (usable if Box 4b is checked)
`The entire disclosure of the prior application, from which a copy of the oath or declaration is supplied under
`Box 4b,
`is considered as being part of the disclosure of the accompanying application and is hereby
`incorporated by reference therein.
`
`CD ROM or CD-R in duplicate, large table or Computer Program (Appendix)
`
`Application Data Sheet (See 37 CFR 1.76)
`
`Nucleotide and/or Amino Acid Sequence Submission (if applicable, all must be included)
`
`. CI Computer Readable Form (CRF)
`
`CI
`
`Specification Sequence Listing on:
`
`i. 3 CD—ROM or CD-R (2 copies); or
`
`ii. 3 Paper
`
`_
`
`. C]
`
`Statement(s) Verifying identical Paper and Computer Readable Copy
`
`Accompanying Application Parts
`
`|>_<J
`
`Assignment Papers (cover sheet & document(s))
`
`37 CFR 3.73(B) Statement (when there is an assignee)
`
`English Translation Document (if applicable)
`
`Information Disclosure Statement/PTO—1449
`
`Cl Copies of IDS Citations
`
`HMJIJL?
`
`E E
`
`Preliminary Amendment
`Return Receipt Postcard (MPEP 503) (Should be specifically itemized)
`l Certified Copy of Priority Document(s) (if foreign priority is claimed)
`8
`
`Certificate of Mailing
`
`Cl
`
`First Class
`
`Express Mail (Specify Label No.): EV 156 915 183 US
`
`Page 2 ()f4
`
`P01ULRG/REV06
`
`
`
`NTFX-1002 / Page 2 of 1867
`
`

`
`
`
`'
`
`“:3
`
`13
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`
`UTILITY PATENT APPLICATION TRANSMITTAL
`
` Docket No.
`
`4247.51
`
`(Large Entity)
`(Only for new nonprovisional applications under 37 CFR 1.53(b))
`
`Total Pages in this Submission
`90
`
`17. CI Additional Enclosures (please identify below):
`
`Accompanying Application Parts (Continued)
`
`
`
`7
`
`Request That Application Not Be Published Pursuant To 35 U.S.C. 122(b)(2)
`
`18. C] Pursuant to 35 U.S.C. 122(b)(2), Applicant hereby requests that this patent application not be
`published pursuant to 35 U.S.C. 122(b)(1). Applicant hereby certifies that the invention disclosed in
`this application has not and will not be the subject of an application filed in another country, or under
`a multilateral international agreement, that requires publication of applications 18 months after filing
`of the application.
`
`Warning
`
`An applicant who makes a request not to publish, but who subsequently files in a foreign
`country or under a multilateral international agreement specified in 35 U.S. C. 122(b)(2)(B)(i),
`must notify the Director of such filing not later than 45 days after the date of the filing of
`such foreign or international application. A failure of the applicant to provide such notice
`within the prescribed period shall result in the application being regarded as abandoned,
`unless it is shown to the satisfaction of the Director that the delay in submitting the notice
`was unintentional.
`
`Page 3 of4
`
`PO1ULRG/REV06
`
`
`
`NTFX-1002 / Page 3 of 1867
`
`

`
`UTILITY PATENT APPLICATION TRANSMITTAL
`
`(Large Entity)
`,
`_
`_
`_
`(Only for new nonprovlslonal applications under 37 CFR 1.53(b))
`
`Docket No.
`
`_
`_
`_
`,
`Total Pages in this Submission
`90
`
`Fee Calculation and Transmittal
`
`CLAIMS AS FILED
`
`#Allowed
`
`#Extra
`
`Total Claims
`
`lndep. Claims
`
`Multiple Dependent Claims (check if applicable)
`
`OTHER FEE (specify purpose)
`
`Fee
`
`$2,502.00
`
`$168.00
`
`$0.00
`
`$740.00
`
`$0.00
`
`BASIC FEE
`
`TOTAL FILING FEE
`
`$3,410.00
`
`A check in the amount of
`
`$3,410.00
`
`to cover the filing fee is enclosed.
`
`The Commissioner is hereby authorized to charge and credit Deposit Account No.
`as described below. A duplicate copy of this sheet is enclosed.
`Charge the amount of
`as filing fee.
`Credit any overpayment.
`
`Charge any additional filing fees required under 37 C.F.R. 1.16 and 1.17.
`
`04-1415
`
`Charge the issue fee set in 37 C.F.R. 1.18 at the mailing of the Notice of Allowance,
`pursuant to 37 C.F.R. 1.311(b).
`
`Dated:
`
`,/ 37
`
`’
`
`"'-’
`
` }-“T.Signature
`
`John T. Kennedy, Esq.
`
`Reg. No. 42,717
`
`DORSEY & WHITNEY LLP
`Customer No. 20686
`
`Page 4 of4
`
`F‘01ULRG/REV06
`
`
`
`NTFX-1002 / Page 4 of 1867
`
`

`
`
`
`Attorney Docket No. 4247.51
`Express Mail Label No. EV 156 915 183 US
`
`PATENT
`
`IN TIIE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent Application of:
`
`ULLMAN et al.
`
`Examiner:
`
`Not Yet Assigned
`
`Serial No. Not Yet Assigned
`
`Art Unit:
`
`Not Yet Assigned
`
`INFORMATION SEGMENTS
`
`Filed: November 18, 2002
`
`For:
`
`ENHANCED VIDEO PROGRAMMING
`SYSTEM AND METHOD FOR
`INCORPORATING AND DISPLAYING
`RETRIEVED INTEGRATED INTERNET
`
`CERTIFICATE OF MAILING BY EXPRESS MAIL
`
`Commissioner for Patents
`
`Washington, I).C. 20231
`
`'
`
`Sir:
`
`I
`
`The undersigned hereby certifies that the following documents:
`
`
`
`.‘O9°.\‘E3‘S":*>‘*°‘\”“
`
`10.
`
`11.
`
`12.
`13.
`
`Utility Patent Application Transmittal (Large) Entity (4 pages);
`Utility Patent Application (47 pages);
`7 Sheets of Drawing;
`Application Data Sheet (2 pages);
`a copy of an executed Declaration and Power of Attorney for Patent Application
`(5 Pages);
`Preliminary Amendment (4 pages);
`Transmittal Letter and Two (2) compact discs (CDs);
`Information Disclosure Statement and PTO 1449 (9 pages);
`Certificate of Mailing by Express Mail, Recordation Fonn Cover Sheet and
`Assignment document (4 pages);
`Check for $ 40.00
`
`Check for $3,410.00;
`
`Return Acknowledgement Postcard; and
`Certificate of Mailing by Express Mail.
`
`relating to the above application, were deposited as “Express Mail,” Mailing Label
`No. EV 156 915 183 US with the United States Postal Service, addressed to Commissioner of
`Patents, Washington D.C. 20231, on this 16"" day of November 2002.
`
`November 18, 2002
`
`
`
`NTFX-1002 / Page 5 of 1867
`
`

`
`
`
`Express Mail No. EV 156 915 183 US
`Attorney Docket No. 4247 .51
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re: Application of
`
`I ULLMAN et al.
`
`Appl. No.:
`
`Not Yet Assigned
`
`Group Art Unit: Not Yet Assigned _
`
`Filed:
`
`For:
`
`November 18, 2002
`
`Examiner: Not Yet Assigned
`
`ENHANCED VIDEO PROGRAMMING SYSTEM AND METHOD FOR
`INCORPORATING AND DISPLAYING RETRIEVED INTEGRATED INTERNET
`INFORMATION SEGMENTS
`
`CERTIFICATE OF MAILING BY EXPRESS MAIL
`
`BOX Assignment V
`Commissioner for Patents
`
`Washington, D.C. 20231
`
`Sir:
`
`The undersigned hereby certifies that the attached: RECORDATION FORM COVER
`SHEET, ASSIGNMENT DOCUMENT, $40.00 CHECK; and this CERTIFICATE OF
`MAILING BY EXPRESS MAIL, all relating to the above application were deposited as
`“Express Mail”, Mailing Label No. EV 156 915 183 US with the United States Postal Service,
`addressed to BOX Assignment, Commissioner for Patents, Washington, D.C. 20231, on
`November I8, 2002.
`
`Le I\1M»g« Zuz
`Date
`
` ORS Y & WHITNEY LLP
`
`stomer No. 20686
`
`
`
`NTFX-1002 / Page 6 of 1867
`
`

`
` 9
`
`
`
`«.4
`
`'/
`
`Attorney Docket No. 4247.51
`Express Mail Label No. EV 156 915 183 US
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent Application of:
`
`ULLMAN et 211.
`
`.
`.
`Serial No. Not Yet Assigned
`
`1;’;
`0
`‘i:
`"‘
`‘E9, E0.
`‘on E19
`‘”.0‘- £3
`pg‘, ’='”__=-._’.—:
`xogi‘:
`0‘
`L:-"'*‘——;
`‘{‘,"" gr
`.,.,
`..
`
`.
`.
`Examiner: Not Yet Assigned
`
`Filed: November 18, 2002
`
`Art Unit: Not Yet Assigned
`
`For:
`
`ENHANCED VIDEO PROGRAMMING SYSTEM AND METHOD FOR
`INCORPORATING AND DISPLAYING RETRIEVED INTEGRATED INTERNET
`INFORMATION SEGMENTS
`
`TRANSMITTAL OF COMPACT DISCS (Cns)
`
`Commissioner for Patents
`
`Washington, D.C. 20231
`
`Sir:
`
`Applicant submits herewith two (2) compact discs (CD5) prepared in lBM—PC format for
`
`MS-Windows containing a computer program listing in one file entitled “Appendix A.txt”. The
`
`file is 27KB and was created on July 21, 2002. The two (2) compact discs are identical.
`
`Any questions pertaining to the enclosed CDs should be addressed to the undersigned
`
`attorney at (303) 629-3400.
`
`Respectfully submitted,
`
`Dated:
`
`//;/43'/(7),,
`
`By:
`
`.ohn T. Kennedy, Esq.
`Reg. No. 42,717
`Dorsey & Whitney LLP
`Customer No. 20686
`
`
`
`NTFX-1002 / Page 7 of 1867
`
`

`
`
`
`¥L,li <:£;i ‘hi?
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`
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`1:ia‘gi‘é%f1‘2(3f:2
`
`APPLICATION DATA SH EET
`
`Electronic Version 0.0.11
`
`Stylesheet Version: 1.0
`Publication Filing Type:
`
`Application Type:
`
`Title of Invention:
`
`Attorney Docket Number: 4247.51
`
`'
`
`new—uti|ity
`
`utility
`ENHANCED VIDEO PROGRAMMING SYSTEM AND METHOD FOR
`INCORPORATING AND DISPLAYING RETRIEVED INTEGRATED
`INTERNET INFORMATION SEGMENT5
`
`Customer Number Attorney:
`
`20686
`
`*20686*
`
`Customer Number Correspondence Address:
`
`20686
`
`‘
`
`*2 06 86*
`
`Continuity Data:
`
`This application is a continuation of 09/998,590 A 2001-11-16 US pending
`
`which is a continuation of 09/633,351 A 2000-08-04 US abandoned
`
`which is a continuation of 09/472,385 A 1999-12-23 US abandoned
`
`which is a continuation of 09/109,945 A 1998-07-06 US now, U.S. Patent No. 6,018,768
`
`which is a continuation in part of 08/615,143 A 1996 »O3—14 US now, U.S. Patent No. 5,778,181
`
`which is a continuation in part of 08/61 3,144 A 1996~O3—08 US abandoned, and is related to U.S.
`Application No. 08/622,474, filed March 25, 1996, now U.S. Patent No. 5,774,664, which is herein
`incorporated by reference.
`
`Assignee (Publish): ACTV, Inc.
`10th Floor
`233 Park Avenue South
`New York 10003 NY US
`
`|NVENTOR(s):
`
`Primary Citizenship:
`
`US
`
`Given Name:
`
`Family Name:
`
`Residence City:
`Residence State:
`
`Craig
`
`Ullman
`
`Brooklyn
`NY
`
`Residence Country:
`Address:
`
`US
`112 Willow Street, #4A
`
`Brooklyn NY, 11201 US
`
`file://C:\Program Fi1es\U SPTO\ePAVE\TmpXML.xm1
`
`11/15/2002
`
`
`
`NTFX-1002 / Page 8 of 1867
`
`

`
`
`
`Primary Citizenship:
`Given Name:
`
`Middle Name:
`
`Family Name:
`
`Residence City:
`Residence State:
`
`Residence Country:
`Address:
`
`Primary Citizenship:
`Given Name:
`
`Middle Name:
`
`Family Name:
`
`Residence City:
`Residence State:
`
`Residence Country:
`Address:
`
`US
`
`320 East 46th Street, Apt. 8A
`
`New York NY, 10017 US
`
`US
`
`Nova
`
`T.
`
`Spivack
`New York
`NY
`
`US
`
`184 Thompson Street, Apt. 4G
`
`New York NY, 10012 US
`
`file://C :\Program Files\USPTO\ePAVE\TmpXML.xml
`
`11/15/2002
`
`
`
`NTFX-1002 / Page 9 of 1867
`
`

`
`
`
`m-.1.‘
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`
`
`Express Mail Label No.: EV 156 915 183 US
`Attorney Docket No.: 4247.51
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant(s): ULLMAN et al.
`
`Serial No.: Not Yet Assigned
`
`Examiner: Not Yet Assigned
`
`Filed: November 18, 2002
`
`Group Art Unit: Not Yet Assigned
`
`For:
`
`ENHANCED VIDEO PROGRAMMING SYSTEM AND METHOD FOR
`INCORPORATING AND DISPLAYING RETRIEVED INTEGRATED
`INTERNET INFORMATION SEGMENTS
`
`Express Mailing label number EV 156 915 183 US
`
`Date of Deposit:
`
`November I 8. 2002
`
`/DORSEY & WHITNEY LLP
`
`_
`_
`C01T11'n1SS10I1C1' F01‘ Patents
`Washin ton
`' 2 2 1
`g
`O 3
`’
`C
`
`I hereby certify that this paper or fee is being deposited with the United
`States Postal Service “express Mai] Post Ofticc to Addrcssee” service
`under 37 CFR 1 10 on the date indicated above and is addressed to the
`Commissioner for Patents, Washington, D.C. 20231.
`
`Commissioner of Patents
`
`Washington, D.C. 20231
`
`Dear Sir:
`
`Applicant respectfully requests entry of this Preliminary Amendment before
`
`commencement of examination of the above—identif1ed patent application. Two (2) compact
`
`discs (CD5) containing the computer program listing in accordance with 37 CFR 1.96(c)
`
`accompany this Preliminary Amendment.
`
`AMENDMENT
`
`In the Specification:
`
`On page 2, after the section entitled “Cross-Reference to Related Applications” and
`
`before the Section entitled “Background of the lnvention,” please insert the following paragraph:
`
`
`
`NTFX-1002 / Page 10 of 1867
`
`

`
`
`
`
`
`Express Mail Label No.: EV 156 915 183 US
`Attorney Docket No.: 4247.51
`
`—— REFERENCE TO A COMPUTER PROGRAM LISTING
`
`One compact disc containing a computer program listing appendix in one file entitled
`“Appendix A.txt” created July 21, 2002, (27 KB) forms a part of this application and is herein
`incorporated by reference.
`-—
`«
`
`Please replace the paragraph beginning on page 12 at line 18 with the following rewritten
`
`paragraph:
`
`—— In a preferred embodiment, a JAVA enabled browser 98 as well as specialized software
`106 for performing part of the method of the present invention are installed on the computer 16.
`The JAVA enabled browser 98 allows the computer 16 to retrieve the Web pages 102 and is
`preferred software, since it is platform independent, and thus, enables efficient and flexible
`transfer of programs, images, etc., over the Internet 20. The specialized interface software 106
`(hereinafter, “client software”) acts as an interface between the video programming and the
`Internet fiinctions of the present invention. Attached on one compact disc is a computer program
`listing appendix (“Appendix A.txt”). The client software 106 retrieves URLs from the video
`program (embodiment of Figure 1) or directly from the Internet connection (embodiments of
`Figures 2 and 4), interprets these URLs and directs the JAVA enabled browser 98 to retrieve the
`particular relevant Web pages 102, and synchronizes the retrieved Web pages to the video
`content for display on the user’s computer 16, as shown in Figures 3 and 4 and explained in more
`detail below.
`--
`
`
`
`NTFX-1002 / Page 11 of 1867
`
`

`
`=* M a:;!: ‘l:.=.‘sI ..,',li- :€;::=.
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`..llL.
`
`..:%.1.. =1-;:li 31.2% :‘.‘..:1‘.
`
`Express Mail Label No.: EV 156 915 183 US
`Attorney Docket No.: 4247.51
`
`REMARKS
`
`Attached hereto is a marked—up version of the changes made to the specification and
`
`claims by the current amendment. The attached page is captioned “Version with markings to
`
`show changes made.”
`
`Applicant has amended the specification to correctly reference submission of Appendix
`
`A on a compact disc at the beginning of the specification and on page 12 thereof. Two (2)
`
`identical compact discs containing one file are submitted herewith.
`
`Applicant thanks the Examiner for his thorough review of the claims in this application.
`
`Further, Applicant submits that the application is in condition for allowance and respectfiilly
`
`requests that the application be passed to allowance. 1n the event the Examiner has questions or
`
`comments and a telephone conversation would expedite resolution of same, Applicant invites the
`
`Examiner to contact the undersigned attorney at (303) 629-3400.
`
`Respectfully submitted,
`
`Dated:
`
`1'/
`
`0L
`
`By:
`
`John T. Kennedy, Esq.
`Reg. No. 42,717
`Dorsey & Whitney LLP
`Customer No. 20686
`
`
`
`NTFX-1002 / Page 12 of 1867
`
`

`
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`
`Express Mail Label No.1 EV 156 915 183 US
`Attorney Docket No.: 424751
`
`VERSION WITH MARKINGS TO SHOW CHANGES MADE
`
`ln the specification:
`
`The paragraph beginning on page 12, line 18, has been amended as follows:
`
`In a preferred embodiment, a JAVA enabled browser 98 as well as specialized software
`106 for performing part of the method of the present invention are installed on the computer 16.
`The JAVA enabled browser 98 allows the computer 16 to retrieve the Web pages 102 and is
`preferred software, since it is platform independent, and thus, enables efficient and flexible
`transfer of programs, images, etc., over the Internet 20. The specialized interface software 106
`(hereinafter, “client sofiware”)[, attached as Appendix A,] acts as an interface between the video
`programming and the lntemet functions of the present invention. Attached on one compact disc
`is a com uter 'ro am listin a
`endix “A endix A.txt” . The client software 106 retrieves
`
`URLs from the video program (embodiment of Figure 1) or directly from the Internet connection
`(embodiments of Figures 2 and 4), interprets these URLs and directs the JAVA enabled browser
`98 to retrieve the particular relevant Web pages 102, and synchronizes the retrieved Web pages
`to the video content for display on the user’s computer 16, as shown in Figures 3 and 4 and
`explained in more detail below.
`
`
`
`NTFX-1002 / Page 13 of 1867
`
`

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`Express Mail Label No.: EV 156 915 183 US
`Attorney Docket No.: 4247.51
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant(s): ULLMAN et al.
`
`Serial No.: Not Yet Assigned
`
`Examiner: Not Yet Assigned
`
`Filed: November 18, 2002
`
`Group Art Unit: Not Yet Assigned
`
`For:
`
`ENHANCED VIDEO PROGRAMMING SYSTEM AND METHOD FOR
`INCORPORATING AND DISPLAYING RETRIEVED INTEGRATED
`INTERNET INFORMATION SEGMENTS
`
`Express Mailing label number EV 156 915 183 US
`
`Date of Deposit:
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`November 18, 2002
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`/DORSEY & WHITNEY LLP
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`.
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`COIUIUISSIOHBT for Patents
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`.
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`Washington D C
`1
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`I hereby certify that this paper or fee is being deposited with the United
`States Postal Service “express Mail Post Office to Addressee” service
`under 37 CFR l.l0 on the date indicated above and is addressed to the
`Commissioner for Patents, Washington, D.C. 20231.
`
`Commissioner of Patents
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`Washington, D.C. 20231
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`Dear Sir:
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`Applicant respectfiilly requests entry of this Preliminary Amendment before
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`, commencement of examination of the above-identified patent application. Two (2) compact
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`discs (CD5) containing the computer program listing in accordance with 37 CFR 1.96(c)
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`accompany this Preliminary Amendment.
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`AMENDMENT
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`In the Specification:
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`On page 2, afler the section entitled “Cross-Reference to Related Applications” and
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`before the Section entitled “Background of the Invention,” please insert the following paragraph:
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`NTFX-1002 / Page 14 of 1867
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`Express Mail Label No.: EV 156 915 183 US
`Attorney Docket No.: 4247.51
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`
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`-~ REFERENCE TO A COMPUTER PROGRAM LISTING
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`One compact disc containing a computer program listing appendix in one file entitled
`“Appendix A.txt” created July 21, 2002, (27 KB) forms a part of this application and is herein
`incorporated by reference. --
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`Please replace the paragraph beginning on page 12 at line 18 with the following rewritten
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`paragraph:
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`—- In a preferred embodiment, a JAVA enabled browser 98 as well as specialized soflware
`106 for performing part of the method of the present invention are installed on the computer 16.
`The JAVA enabled browser 98 allows the computer 16 to retrieve the Web pages 102 and is
`preferred sofiware, since it is platform independent, and thus, enables efficient and flexible
`transfer of programs, images, etc., over the Internet 20. The specialized interface sofiware 106
`(hereinafter, “client sofiware”) acts as an interface between the video programming and the
`, Internet functions of the present invention. Attached on one compact disc is a computer program
`listing appendix (“Appendix A.txt”). The client sofiware 106 retrieves URLs from the Video
`program (embodiment of Figure 1) or directly from the Internet connection (embodiments of
`Figures 2 and 4), interprets these URLs and directs the JAVA enabled browser 98 to retrieve the
`particular relevant Web pages 102, and synchronizes the retrieved Web pages to the video
`content for display on the user’s computer 16, as shown in Figures 3 and 4 and explained in more
`detail below. --
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`NTFX-1002 / Page 15 of 1867
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`Express Mail Label No.: EV 156 915 183 US
`Attorney Docket No.: 4247.51
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`REMARKS
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`Attached hereto is a marked-up version of the changes made to the specification and
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`claims by the current amendment. The attached page is captioned “Version with markings to
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`show changes made.”
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`Applicant has amended the specification to correctly reference submission of Appendix
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`A on a compact disc at the beginnirig of the specification and on page 12 thereof. Two (2)
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`identical compact discs containing one file are submitted herewith.
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`Applicant thanks the Examiner for his thorough review of the claims in this application.
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`Further, Applicant submits that the application is in condition for allowance and respectfully
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`requests that the application be passed to allowance. In the event the Examiner has questions or
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`comments and a telephone conversation would expedite resolution of same, Applicant invites the
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`Examiner to contact the undersigned attorney at (303) 629-3400.
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`Dated:
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`/7
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`0L.
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`Respectfully submitted,
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`By:
`John T. Kennedy, Esq.
`Reg. No. 42,717
`Dorsey & Whitney LLP
`Customer No. 20686
`
`
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`NTFX-1002 / Page 16 of 1867
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`Express Mail Label No.: EV 156 915 183 US
`Attorney Docket No.: 4247.51
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`VERSION WITH MARKINGS TO SHOW CHANGES MADE
`
`In the specification:
`
`The paragraph beginning on page 12, line 18, has been amended as follows:
`
`In a preferred embodiment, a JAVA enabled browser 98 as well as specialized software
`106 for performing part of the method of the present invention are installed on the computer 16.
`The JAVA enabled browser 98 allows the computer 16 to retrieve the Web pages 102 and is
`preferred software, since it is platform independent, and thus, enables cfficient and flexible
`transfer of programs, images, etc., over the Internet 20. The specialized interface sofiware 106
`(hereinafter, “client software”)[, attached as Appendix A,] acts as an interface between the Video
`programming and the Internet functions of the present invention. Attached on one compact disc
`is a corn uter ‘ro
`am listin a
`endix “A endix A.txt” . The client sofiware 106 retrieves
`URLs from the video program (embodiment of Figure 1) or directly from the Internet connection
`(embodiments of Figures 2 and 4), interprets these URLs and directs the JAVA enabled browser
`98 to retrieve the particular relevant Web pages 102, and synchronizes the retrieved Web pages
`to the video content for display on the user’s computer 16, as shown in Figures 3 and 4 and
`explained in more detail below.
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`
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`NTFX-1002 / Page 17 of 1867
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`Express Mail Label No.2 EL 156 915 183 US
`Atty. Docket No.: 4247.51
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`10
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`SPECIFICATION
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`TO ALL WHOM IT MAY CONCERN:
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`BE IT KNOWN, that we, Craig Ullman, Jack Hidary, and Nova Spivack, citizens of
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`the United States and residents of the State ofNew York, have invented certain new and
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`useful improvements in:
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`15
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`ENHANCED VIDEO PROGRAMMING SYSTEM AND METHOD FOR
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`INCORPORATING AND DISPLAYING RETRIEVED INTEGRATED INTERNET
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`INFORMATION SEGMENTS
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`of which the following is a specification.
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`NTFX-1002 / Page 18 of 1867
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`Express Mail Label No.: EL 156 915 183 US
`Atty. Docket No.: 4247.51
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`ENHANCED VIDEO PROGRAMMING SYSTEM AND METHOD FOR
`INCORPORATING AND DISPLAYING RETRIEVED INTEGRATED INTERNET
`INFORMATION SEGMENTS
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`CROSS-REFERENCE TO RELATED APPLICATIONS
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`This application is a continuation of U.S. application Serial No. 09/998,590, filed
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`November 16, 2001, which is a continuation of U.S. application Serial No. 09/633,351 filed
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`August 4, 2000, which is a continuation of U.S. application Serial No. 09/472,385 filed
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`December 23, 1999, which is a continuation of U.S. application Serial No. 09/109,945 filed
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`July 6, 1998, now U.S. Patent No. 6,018,768, which is a continuation—in—part ofU.S.
`
`application Serial No. 08/615,143 filed March 14, 1996, now U.S. Patent No. 5,778,181,
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`which is a continuation—in—part of U.S. application Serial No. 08/613,144 filed March 8,
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`1996, abandoned, and is related to U.S. application Serial No. 08/622,474 filed March 25,
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`1996, now U.S. Patent No. 5,774,664, which is herein incorporated by reference.
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`BACKGROUND OF THE INVENTION
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`. Today, the capabilities of computers to provide massive amounts of educational and
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`entertainment information has exploded with the Internet. The Internet has the power to
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`transform society through unprecedented levels of information flow between members.
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`Currently, on-line systems offer a variety of different services to users, including news feeds,
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`electronic databases (either searchable by the user directly on the on-line system, or
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`downloadable to the user’s own computer), private message services, electronic newsletters,
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`real time games for play by several users at the same time, and job placement services, to
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`name a few. However, today, most on-line communications occur merely through text. This
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`currently stands in great contrast to the audio/visual presentation of the alternative electronic
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`medium, television. However, it is expected that as multi—media’s incessant growth
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`NTFX-1002 / Page 19 of 1867
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`Express Mail Label No.: EL 156 915 183 US
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`continues, audio/visual programs will proliferate and text will become less and less dominant
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`in the on-line enviromnent. Even though these programs will be introduced, the Internet, will
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`remain essentially user unfriendly due to its very massiveness, organization, and randomness.
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`Simply stated, there is no order or direction in the Internet. Specific pieces of information are
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`many times hard to find, and harder yet, is the ability to put that piccc of information into a
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`meaningful context.
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`Television, on the other hand, has been criticized for being a passive medium——
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`“chewing gum for the eyes,” as Fred Allen once observed. Television has always been
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`something you watched, not something you do. Many social critics believe that the passivity
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`television depends on has seeped into our entire culture, turning a nation of citizens into a
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`nation of viewers. While interactive television systems have increased the level of user
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`interaction, and thus, provided greater learning and entertainment opportunities, vast
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`information resources such as databases are inaccessible from such a medium.
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`What is needed is a means to close the gap between video programming and the
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`information superhighway of the Internet. What is needed is a wider, richer experience
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`integrating audio/visual and textual database elements into an organized unique interactive,
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`educational, entertainment experience. Currently, the Internet is a repository of information
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`on virtually any subject. However, what is needed is a mechanism for combining the user-
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`friendly visual experience of television with the vast information resources of the Internet.
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`SUMMARY OF THE INVENTION
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`The system of the present invention combines broadcast television programming
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`and/or video programming which appears on a VHS or Beta tape, CD-ROM, DVD or other
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`medium, or video programming at a video server (hereinafter “video programming”) with the
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`massive lntemet, creating a new and powerful educational and entertainrnent medium. The
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`system allows consumers to receive more information in a more efficient manner than either
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`NTFX-1002 / Page 20 of 1867
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`Express Mail Label No.: EL 156 915 183 US
`Atty. Docket No.: 4247.51
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`television or the Internet alone. Consumers not only can see a news report on television, but
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`they can also read pertinent infonnation about the report, as well as explore related
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`information about the story. The program becomes the introduction to a particular subject,
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`rather than the entire subject itself. The act of viewing a program has now become a more
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`engaging, enriching experience.
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`The system can also create a more intimate relationship between the viewer and the
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`program. The user might be solving problems or perfonning virtual experiments on the
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`Internet site that a teacher is discussing in an educational television program. Similarly, the
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`consumer might be solving problems that the fictional characters in a television program
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`must solve. In both cases, the consumer is an active participant in the process, rather than a
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`passive observer.
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`Instead of an undirected and unfocused exploration of Internet sites, by synching
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`specific Internet pages to the video signal, the system puts the Internet in context. The
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`television program producers now can decide what additional information to offer their
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`audience. This material can now be seen in the context of the television program.
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`An additional advantage is that consumers don’t have to search through the literally
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`hundreds of millions of pages on the Internet to find appropriate material. The material has
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`already been filtered by the program producers and delivered to the consumer automatically.
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`Another advantage of the system is that it changes the nature of advertising. Since
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`additional information can be given to consumers automatically, advertising can now be more
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`substantive, allowing customers to make more informed choices. Now, the act of purchasing
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`a product seen on television can be streamlined — the consumer can be given the choice of
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`buying the product instantly using the two-way capabilities of the system.
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`In addition, users can take advantage of the two-way capabilities of the Internet to
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`respond to polls, to send e—mail or to link to additional sites. For example, a viewer watching
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`NTFX-1002 / Page 21 of 1867
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`Express Mail Label No.: EL 156 915 183 US
`Atty. Docket No.: 4247.51
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`a television news program, through the system of the invention, can receive a stream of Web
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`pages which provide additional, specific information relating to the news content ——- whether
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`background on the Presidential primaries or the latest change in interest rates.
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`The video programming and corresponding Internet pages can be viewed on personal
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`computers equipped with a television card, but the open software-based approach enables
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`anyone with a television set and JAVA enabled PC to experience the system of the invention.
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`By marrying the appeal of video with the two-way data transfer capabilities of the
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`lntemet, the system creates a powerful new medium: Video producers and Internet site
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`creators can enhance their content to extend their brand identity and differentiate their
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`program offerings to the millions of people who are spending more time navigating through
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`the resources of the World Wide Web rather than watching television; advertisers can speak
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`more directly to consumers by directly sending Web pages to the consumer instead of only
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`displaying Web addresses in their commercials; and consumers