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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`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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`CONF {MATION NO.
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`13/555,557
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`07/23/2012
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`Martin Weel
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`1116—065C
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`1317
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`10/01/2012
`7590
`71739
`WITHROWWRRANOVACT
`100 REGENCY FOREST DRIVE , SUITE 160
`CARY, NC 27518
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`WASEL, MOHAMED A
`ART UNIT
`PAPER NUMBER
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`2454
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`MAIL DATE
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`10/01/2012
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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 1008
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`Page 1
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`Yamaha Corporation of America Exhibit 1008 Page 1
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`Office Action Summary
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`Application No.
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`Applicant(s)
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`13/555,557
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`WEEL, MARTIN
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`Examiner
`MOHAMED WASEL
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`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 CFR1. 136( a).
`In no event however may a reply be timely filed
`after SIX () 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.
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`- 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)|Zl Responsive to communication(s) filed on 23 July 2012.
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`2a)I:l This action is FINAL.
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`2b)IZ| This action is non-final.
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`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:l 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 Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)|Zl Claim(s) 1-34 is/are pending in the application.
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`5a) Of the above claim(s) _ is/are withdrawn from consideration.
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`6)I:| Claim(s) _ is/are allowed.
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`7)|Zl Claim(s)_134 Is/are rejected.
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`8)I:| Claim(s) _ is/are objected to.
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`9)I:l Claim(s) _ are subject to restriction and/or election requirement.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
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`11)|X| The drawing(s) filed on 23 July 2012 is/are: a)IZl accepted or b)I:l 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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`12)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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`13)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)|:l AII
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`b)I:| Some * c)|:l 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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`3.|: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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`1) X Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) IZI Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date 8/9/12 & 8/10/12.
`US. Patent and Trademark Office
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`4) D Interview Summary (PTO-413)
`Paper N°(5 )/Mai| Date. _
`5)I:I Notice of Informal Patent Application
`)6|:| Other:
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`PTOL-326 (Rev. 03-11)
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`Part of Pa er No ./Mai| Date 20120926
`Office Action Summary
`Yamaha Corporation of America
`xhibit 1008
`Page 2
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`Yamaha Corporation of America Exhibit 1008 Page 2
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`Application/Control Number: 13/555,557
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`Art Unit: 2454
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`Page 2
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`DETAILED ACTION
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`This action is responsive to application filed on July 23, 2012. Claims 1-34 are pending and presented for
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`examination.
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`Double Patenting
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`The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in
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`public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise
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`extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple
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`assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the
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`conflicting claims are not identical, but at least one examined application claim is not patentably distinct
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`from the reference claim(s) because the examined application claim is either anticipated by, or would
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`have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226
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`(Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d
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`887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re
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`Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644
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`(CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1 .321 (d) may be used to
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`overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided
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`the conflicting application or patent either is shown to be commonly owned with this application, or claims
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`an invention made as a result of activities undertaken within the scope of a joint research agreement.
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`Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer.
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`A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
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`Claims 1-34 are rejected on the ground of nonstatutory obviousness-type double patenting as
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`being unpatentable over claims 1-12 of U.S. Patent No. 8,230,099. Although the conflicting claims are
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`not identical, they are not patentably distinct from each other because they both recite similar limitations
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`as shown in the table below. Claim 1 of the instant application and claim 1 of the U.S. Patent will be used
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`as an exemplary to show similarly among the conflicting claims.
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`Yamaha Corporation of America
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`Exhibit 1008
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`Page 3
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`Yamaha Corporation of America Exhibit 1008 Page 3
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`Application/Control Number: 13/555,557
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`Page 3
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`Art Unit: 2454
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`Instant Application 13/555,557
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`U.S. Patent No. 8,230,099
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`1. A method comprising:
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`1. A method comprising:
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`receiving, at a first media player device, a playlist
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`receiving, at a wireless handheld remote control,
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`from a remote source, the playlist comprising at least
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`a playlist from a remote source; and
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`one item identifier that identifies at least one item;
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`presenting, at the wireless handheld remote
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`from the wireless handheld remote control.
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`communicating the playlist from the first media player
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`control, the playlist to a first user associated with
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`device to a wireless handheld remote control
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`the wireless handheld remote control such that
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`associated with and separate from the first media
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`the first user is enabled to select at least one item
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`player device;
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`from the playlist for playback by a media player
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`receiving, from the wireless handheld remote control,
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`device which is associated with and separate
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`the at least one item identifier; and rendering, by the
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`first media player device, the at least one item.
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`Claims 1-34 are rejected on the ground of nonstatutory obviousness-type double patenting as
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`being unpatentable over claims 1-21 of U.S. Patent No. 8,028,038. Although the conflicting claims are
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`not identical, they are not patentably distinct from each other because they both recite similar limitations
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`as shown in the table below. Claim 22 of the instant application and claim 1 of the U.S. Patent will be
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`used as an exemplary to show similarly among the conflicting claims.
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` Instant Application 13/555,557
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`U.S. Patent No. 8,028,038
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`22. The method of claim 1, further comprising:
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`1. A computer-implemented method comprising:
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`prior to receiving, at the first media player device, the
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`comparing, by a media player device, each of a
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`playlist from the remote source:
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`plurality of user profiles with a target user profile
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`comparing, by the first media player device, each of a
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`of a first user associated with the media player
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`plurality of user profiles with a target user profile of a
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`device;
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`first user associated with the first media player
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`selecting, by the media player device, a matching
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`device;
`user profile from the plurality of user profiles;
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`Yamaha Corporation of America
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`Exhibit 1008
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`Page 4
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`Yamaha Corporation of America Exhibit 1008 Page 4
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`Application/Control Number: 13/555,557
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`Page 4
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`Art Unit: 2454
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`selecting, by the first media player device, a matching
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`selecting a playlist of a matching user associated
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`user profile from the plurality of user profiles;
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`with the matching user profile, wherein a plurality
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`selecting a playlist of a matching user associated with
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`of playlists including the selected playlist are
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`the matching user profile, wherein a plurality of
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`stored by at least one server, each of the plurality
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`playlists including the selected playlist is stored by at
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`of playlists is a playlist of one of a plurality of
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`least one server, each of the plurality of playlists is a
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`users including the matching user, and each of
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`playlist of one of a plurality of users including the
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`the plurality of users is associated with one of the
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`matching user, and each of the plurality of users is
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`plurality of user profiles; and
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`associated with one of the plurality of user profiles;
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`requesting, by the media player device, delivery
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`and
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`of the selected playlist of the matching user from
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`requesting, by the first media player device, delivery
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`the at least one server.
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`of the selected playlist of the matching user from the
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`remote SOUI’CG.
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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`Please refer to form PTO-892 (Notice of Reference Cited) for a list of relevant prior art.
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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-Thurs (7:00 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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`Joseph Avellino can be reached on (571) 272-3905. The fax phone number for the organization where
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`this application or proceeding is assigned is 571-273-8300.
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`Yamaha Corporation of America
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`Exhibit 1008
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`Page 5
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`Yamaha Corporation of America Exhibit 1008 Page 5
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`Application/Control Number: 13/555,557
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`Art Unit: 2454
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`Page 5
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`Information regarding the status of an application may be obtained from the Patent Application
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`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-
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`1000.
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`/Mohamed Wasel/
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`Primary Examiner, Art Unit 2454
`September 26, 2012
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`Yamaha Corporation of America
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`Exhibit 1008
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`Page 6
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`Yamaha Corporation of America Exhibit 1008 Page 6
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