`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
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`CONF {MATION NO.
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`12/114,286
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`05/02/2008
`
`Martin Weel
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`1116—065B
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`2773
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`06/18/2010
`7590
`71739
`WITHROWWRRANOVACT
`100 REGENCY FOREST DRIVE , SUITE 160
`CARY, NC 27518
`
`WASEL, MOHAMED A
`ART UNIT
`PAPER NUMBER
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`2454
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`MAIL DATE
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`06/18/2010
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL-90A (Rev. 04/07)
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`Yamaha Corporation of America
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`Exhibit 1005
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`Page 1
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`Yamaha Corporation of America Exhibit 1005 Page 1
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`

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`Office Action Summary
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`Application No.
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`Applicant(s)
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`12/114,286
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`WEEL, MARTIN
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`Examiner
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`MOHAMED WASEL
`
`Art Unit
`
`2454 -
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)IXI Responsive to communication(s) filed on 22 April 2010.
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`2a)IZI This action is FINAL.
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`2b)I:I This action is non-final.
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`3)I:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under EX parte Quayle, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)IZI Claim(s) 1-12 is/are pending in the application.
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`is/are withdrawn from consideration.
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`4a) Of the above Claim(s)
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`5)I:I Claim(s)
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`is/are allowed.
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`6)IXI Claim(s)1-_12 is/are rejected.
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`7)I:I Claim(s) _ is/are objected to.
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`8)I:I Claim(s) _ are subject to restriction and/or election requirement.
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`Application Papers
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`9)I:I The specification is objected to by the Examiner.
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`10)I:I The drawing(s) filed on
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`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
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`11)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
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`a)I:I All
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`b)I:I Some * c)I:I None of:
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`1.I:I Certified copies of the priority documents have been received.
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`2.I:I Certified copies of the priority documents have been received in Application No.
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`
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`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`4) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date. _
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`5) I:I Notice of Informal Patent Application
`3) IZI Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date 3/10/2010. 6) D Other:
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`U.S. Patent and Trademark Office
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`PTOL-326 (Rev. 08-06)
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`Part of Pa er No .lMail Date 20100615
`Office Action Summayy
`amaha Corporation of America
`xhibit 1005
`Page 2
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`Yamaha Corporation of America Exhibit 1005 Page 2
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`

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`Application/Control Number: 12/114,286
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`Page 2
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`Art Unit: 2454
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`Response to Amendment
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`This action is responsive to amendment filed on April 22, 2010. Claims 1-12 are pending and presented
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`for examination.
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 USC. 102 that form the basis for
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`the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(e) the invention was described in (1) an application for patent, published under section 122(b), by another
`filed in the United States before the invention by the applicant for patent or (2) a patent granted on an
`application for patent by another filed in the United States before the invention by the applicant for patent,
`except that an international application filed under the treaty defined in section 351(a) shall have the effects
`for purposes of this subsection of an application filed in the United States only if the international application
`designated the United States and was published under Article 21(2) of such treaty in the English language.
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`Claims 1-3 and 6-12 are rejected under 35 USC. 102(e) as being anticipated by Hawkins et al
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`(hereinafter referred to as "Hawkins"), US Patent Application Pub. No. 2005/0210507.
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`1.
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`As per claim 1, Hawkins teaches a method comprising:
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`receiving, at a remote control, a playlist from a remote source (Paragraph(s) [0006], [0015]); and
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`presenting the playlist to a first user associated with the remote control such that the first user is
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`enabled to select at least one item from the playlist for playback by a media player device associated with
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`the remote control (Paragraph(s) [0007], [0015], [0031]).
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`2.
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`As per claim 2, Hawkins teaches the method wherein the playlist is further communicated from
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`the remote source to the media player device (Paragraph(s) [0015]).
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`3.
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`As per claim 3, Hawkins teaches the method further comprising communicating the playlist from
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`the remote control to the media player device (Paragraph(s) [0015]).
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`4.
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`As per claim 6, Hawkins teaches the method wherein the remote source is a central server
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`(Paragraph(s) [0015]).
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`5.
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`As per claim 7, Hawkins teaches the method wherein the remote source is a peer-to-peer
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`network formed by a plurality of user devices, and receiving the playlist comprises receiving the playlist
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`from one of the plurality of user devices (Paragraph(s) [0036]).
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`Yamaha Corporation of America
`
`Exhibit 1005
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`Page 3
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`Yamaha Corporation of America Exhibit 1005 Page 3
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`

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`Application/Control Number: 12/114,286
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`Page 3
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`Art Unit: 2454
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`6.
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`As per claim 8, Hawkins teaches the method wherein each of the plurality of user devices forming
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`the peer-to-peer network is a user device selected from a group consisting of: a media player device and
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`a remote control (Paragraph(s) [0015]).
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`7.
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`As per claim 9, Hawkins teaches the method wherein the remote source is the media player
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`device (Paragraph(s) [0017]).
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`8.
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`As per claim 10, Hawkins teaches a remote control comprising:
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`a communication interface communicatively coupling the remote control to a remote source via a
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`network (Paragraph(s) [0015], [0020]); and
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`a control system associated with the communication interface (Paragraph(s) [0020]) and
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`adapted to:
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`receive a playlist from the remote source (Paragraph(s) [0006], [0015]); and
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`present the playlist to a first user associated with the remote control such that the first user is
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`enabled to select at least one item from the playlist for playback by a media player device associated with
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`the remote control (Paragraph(s) [0007], [0015], [0031]).
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`9.
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`As per claim 11, Hawkins teaches a method comprising:
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`receiving, at a media player device, a playlist from a remote source (Paragraph(s) [0006],
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`[0015]); and
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`communicating the playlist from the media player device to a remote control associated with the
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`media player device (Paragraph(s) [0015]), wherein, at the remote control, the playlist is presented to a
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`first user associated with the remote control and used by the first user to select at least one item from the
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`playlist for playback by the media player device (Paragraph(s) [0007], [0015], [0031]).
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`10.
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`As per claim 12, Hawkins teaches a media player device comprising:
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`a communication interface communicatively coupling the media player device to a remote source
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`via a network (Paragraph(s) [0015]); and
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`a control system associated with the communication interface (Paragraph(s) [0020]) and
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`adapted to:
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`receive a playlist from the remote source (Paragraph(s) [0006], [0015]); and
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`Yamaha Corporation of America
`
`Exhibit 1005
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`Page 4
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`Yamaha Corporation of America Exhibit 1005 Page 4
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`

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`Application/Control Number: 12/114,286
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`Page 4
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`Art Unit: 2454
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`communicate the playlist from the media player device to a remote control associated with the
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`media player device (Paragraph(s) [0015]), wherein, at the remote control, the playlist is presented to a
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`first user associated with the remote control and used by the first user to select at least one item from the
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`playlist for playback by the media player device (Paragraph(s) [0007], [0015], [0031]).
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`(a) 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.
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`Claims 4 and 5 are rejected under 35 U.S.C. 103(a) as being unpatentable over Hawkins et al
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`(hereinafter referred to as "Hawkins"), US Patent Application Pub. No. 2005/0210507 in view of Gang et
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`al (hereinafter referred to as “Gang”), US Patent No. 7,075,000
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`11.
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`As per claim 4, Hawkins teaches the method wherein the remote source stores a plurality of
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`playlists including the playlist and the plurality of playlists are associated with a plurality of users
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`(Paragraph(s) [0024]).
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`Hawkins fails to explicitly teach comparing each of a plurality of user profiles of the plurality of
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`users with a target user profile of the first user associated with the remote control to select a matching
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`user profile from the plurality of user profiles and effecting selection of a playlist of a matching user
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`associated with the matching user profile from the plurality of playlist as the playlist to be communicated
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`to the remote control.
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`However, Gang discloses comparing each of a plurality of user profiles of the plurality of users
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`with a target user profile of the first user associated with the remote control to select a matching user
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`profile from the plurality of user profiles (col. 2 lines 28-41, col. 5 lines 35-49, col. 11 lines 10-20) and
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`effecting selection of a playlist of a matching user associated with the matching user profile from the
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`plurality of playlist as the playlist to be communicated to the remote control (col. 3 lines 34-39).
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`Yamaha Corporation of America
`
`Exhibit 1005
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`Page 5
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`Yamaha Corporation of America Exhibit 1005 Page 5
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`

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`Application/Control Number: 12/114,286
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`Page 5
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`Art Unit: 2454
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`Therefore, it would have been obvious to one of the ordinary skill in the art at the time of the
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`applicants' invention to combine the teachings of Hawkins and Gang because it provides an efficient way
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`of matching a playlist of a target user profile with other users to better determine a playlist of interest to
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`the user based on the other users recommendations.
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`12.
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`As per claim 5, Hawkins teaches the method wherein the matching user profile is one of the
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`plurality of user profiles (Paragraph(s) [0036]) most similar to the target user profile (Paragraph(s)
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`[0007]).
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`Applicant's argument(s) filed on April 22, 2010 have been fully considered but they are not persuasive.
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`Response to Argument(s)
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`Therefore, rejection is maintained.
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`0
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`In the remarks, the Applicant argues in substance that:
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`a) Hawkins fails to teach or suggest receiving, at a remote control, a playlist from a remote
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`source and presenting the playlist to a first user associated with the remote control such that
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`the first user is enabled to select at least one item from the playlist for playback by a media
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`player device associated with the remote control as recited in the context of independent
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`claim 1.
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`b) Hawkins in combination with Gang fail to disclose or suggest comparing each of a plurality of
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`user profiles of the plurality of users with a target user profile of the first user associated with
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`the remote control to select a matching user profile from the plurality of user profiles as
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`recited in the context of claim 4.
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`o
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`In response to argument(s):
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`a) Examiner respectively disagrees. Applicant is reminded that claims must be given their
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`broadest reasonable interpretation. Hawkins discloses a method for generating a multimedia
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`playlist for display on a consumer operating a client device communicating with a network
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`includes accessing profile data associated with the consumer (Paragraph [0006]. In further
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`details, Hawkins discloses an application server (remote source) that communicates playlists
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`Yamaha Corporation of America
`
`Exhibit 1005
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`Page 6
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`Yamaha Corporation of America Exhibit 1005 Page 6
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`

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`Application/Control Number: 12/114,286
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`Page 6
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`Art Unit: 2454
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`over a network to a client device (remote control) and that receives input from the client
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`device over the network. The client device may be any consumer electronics device such as
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`a personal computer, a digital video recorder, a set-top box, a handheld computer, or a
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`mobile telephone. The playlist may be accessed by the consumer using any one of the
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`aforementioned client devices (Fig. 1, Paragraph [0015]). In addition, Hawkins discloses once
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`playlists have been created and stored in a playlist database the logic of FIG. 5 may be
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`invoked by the application server to recall a playlist for a particular consumer (based on the
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`consumer ID) and to present the playlist on the client device (Paragraph [0031]). Therefore,
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`Hawkins meets the scope of the claimed limitations as currently presented.
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`I0)
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`As previously mentioned on the Non-Final Office Action mailed on 1/22/2010, Hawkins fails to
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`explicitly teach comparing each of a plurality of user profiles of the plurality of users with a
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`target user profile of the first user associated with the remote control to select a matching
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`user profile from the plurality of user profiles and effecting selection of a playlist of a matching
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`user associated with the matching user profile from the plurality of playlist as the playlist to be
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`communicated to the remote control. To support the deficiencies of Hawkins's teaching, Gang
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`discloses gathering data of one or more types concerning the characteristic(s) of each song,
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`and the relationship between these characteristic(s) and the perception of the listeners, or
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`their musical taste to predict additional song(s) which may be of interest to the user.
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`It should
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`be noted that although the following description centers around prediction and
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`recommendation of songs (musical selections), in fact the present invention is also extensible
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`to other interests of users which involve subject issues of "taste" for any type of media
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`selection (col. 5 lines 35-49, col. 11 lines 10-20). Therefore, it would have been obvious to
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`one of the ordinary skill in the art at the time of the applicants' invention to combine the
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`teachings of Hawkins and Gang because it provides an efficient way of comparing a plurality
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`of user profiles to better determine a playlist of interest to the user based on the other users’
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`recommendations of simply by enabling the user to make manual musical selections.
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`Yamaha Corporation of America
`
`Exhibit 1005
`
`Page 7
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`Yamaha Corporation of America Exhibit 1005 Page 7
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`

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`Application/Control Number: 12/114,286
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`Page 7
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`Art Unit: 2454
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`Conclusion
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth
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`in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
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`the mailing date of this action.
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`In the event a first reply is filed within TWO MONTHS of the mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory action
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`is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later than SIX
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`MONTHS from the mailing date of this final action.
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`Any inquiry concerning this communication or earlier communications from the examiner should
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`be directed to Mohamed Wasel whose telephone number is (571 ) 272-2669. The examiner can normally
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`be reached on Mon-Fri (8:00 am - 5:30 pm).
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Nathan Flynn can be reached on (571) 272-1915. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for published applications may be obtained from
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`either Private PAIR or Public PAIR. Status information for unpublished applications is available through
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`Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC)
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`at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative
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`or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-
`
`1000.
`
`/Mohamed Wasel/
`
`Patent Examiner, Art Unit 2454
`June 15, 2010
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`Yamaha Corporation of America
`
`Exhibit 1005
`
`Page 8
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`Yamaha Corporation of America Exhibit 1005 Page 8
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`

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`Application/Control Number: 12/114,286
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`Page 8
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`Art Unit: 2454
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`/NATHAN FLYNN/
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`Supervisory Patent Examiner, Art Unit 2454
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`Yamaha Corporation of America
`
`Exhibit 1005
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`Page 9
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`Yamaha Corporation of America Exhibit 1005 Page 9
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`