9877—0001—20
`
`\
`
`RESPONSE UNDER 37 C.F.R. §1.116 —
`EXPEDITED PROCEDURE EXAMINING GROUP 2773
`
`IN THE UNITED STATES PATENT & TRADEMARK O F C
`
`
`
`IN RE APPLICATION OF:
`
`Atle HEDLOY
`
`: EXAMINER: Dela Torre, C.
`
`SERIAL NO: 09/189,626
`
`FILED: November 10, 1998
`
`: GROUP ART UNIT: 2773
`
`FOR: METHOD, SYSTEM AND COMPUTER
`READABLE MEDIUM FOR”.
`
`
`WDMENT UNDER 37 C.F.R. §1. H6
`
`ASSISTANT COMMISSIONER FOR PATENTS
`WASHINGTON, DC. 20231
`
`SIR.
`
`5’
`3? § -
`2 \ «to
`[3»!
`03 Q]
`,3 E;
`if:
`81
`{1:3,
`537
`O
`
`In response to the Official Action mailed September 18. 2000, and further to the
`
`discussion with Examine Dela Torre on October 17, 2000, please amend the above-identified
`
`application as follows:
`
`Heme
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`
`
`IN THE CLAIMS
`
` ease amend independent Claim 8, as follows:
`
`78/ (Twice Amended) A computerized method for information handling within a
`
`document created using an application program, the document including first information
`
`provided therein, the method comprising:
`
`providing a record retrievai program;
`
`at
`
`providing an input device configured to enter an execute command which initiates a
`
`record retrieval from an information source using the record retrieval program;
`
`7 1i
`
`m
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`\
`
`‘
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`.//
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`v/’
`Arendi S.A.R.L. - Ex. 2005
`Page 1 of 5
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`Arendi S.A.R.L. - Ex. 2004
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`Arendi S.A.R.L. - Ex. 2005
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`\
`
`RESPONSE UNDER 37 C.F.R. §1.116 —
`EXPEDITED PROCEDURE EXAMINING GROUP 2773
`
`IN THE UNITED STATES PATENT & TRADEMARK O F C
`
`
`
`IN RE APPLICATION OF:
`
`Atle HEDLOY
`
`: EXAMINER: Dela Torre, C.
`
`SERIAL NO: 09/189,626
`
`FILED: November 10, 1998
`
`: GROUP ART UNIT: 2773
`
`FOR: METHOD, SYSTEM AND COMPUTER
`READABLE MEDIUM FOR”.
`
`
`WDMENT UNDER 37 C.F.R. §1. H6
`
`ASSISTANT COMMISSIONER FOR PATENTS
`WASHINGTON, DC. 20231
`
`SIR.
`
`5’
`3? § -
`2 \ «to
`[3»!
`03 Q]
`,3 E;
`if:
`81
`{1:3,
`537
`O
`
`In response to the Official Action mailed September 18. 2000, and further to the
`
`discussion with Examine Dela Torre on October 17, 2000, please amend the above-identified
`
`application as follows:
`
`Heme
`E‘N‘G‘. mew“
`;,\r-“‘ ?"A
`cw;
`
`WW”
`\ 11",“
`
`
`
`IN THE CLAIMS
`
` ease amend independent Claim 8, as follows:
`
`78/ (Twice Amended) A computerized method for information handling within a
`
`document created using an application program, the document including first information
`
`provided therein, the method comprising:
`
`providing a record retrievai program;
`
`at
`
`providing an input device configured to enter an execute command which initiates a
`
`record retrieval from an information source using the record retrieval program;
`
`7 1i
`
`m
`
`\
`
`‘
`
`.//
`
`v/’
`Arendi S.A.R.L. - Ex. 2005
`Page 1 of 5
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`Arendi S.A.R.L. - Ex. 2004
`Page 1 of 5
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`Arendi S.A.R.L. - Ex. 2005
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`upon a single entry of the execute command by means of the input device;[,]
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`analyzing the document to determine if the first infomation is contained therein, and
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`if the first information is contained in the document, searching, using the record
`
`retrieval program, the infomiation source for second information associated with the first
`
`information; and
`
`when the information source includes second information associated with the first
`
`information, performing at least one of,
`
`(a) displaying the second information,
`
`(b) inserting the second information in the document, and
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`(C) completing the first information in the document based on the second
`
`information-s,
`7
`
`REMARKS
`
`Favorable reconsideration of this application as presently amended and in light of the
`
`following discussion is respectfully requested.
`
`Claims 8-86 are presently active in this case, with Claim 8 amended, by way of the
`
`present amendment, without the introduction of new matter (see, e.g, Fig. 1, steps 2, 4, 6, 8,
`
`10, 12 and 14 and the discussion in Applicants‘ disclosure thereof).
`
`In the outstanding Office Action, Claims 8—86 were rejected under 35 U.S.C. §102(e)
`
`as being anticipated by the newly cited T_so (6,085,201) reference.
`
`First, Applicant wishes to thank Examiner Dela Torre for the courtesy of an interview
`
`granted to Applicant’s attorney on October 17, 2000, in regard to the outstanding issues in
`
`the present application. During the discussion, it was noted that columns 4-5 of T_sg teach a
`
`user selecting a text string to be processed by clicking on the text string using various
`\._/~
`
`-2-
`
`v
`(j '
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`Arendi S.A.R.L'. - EX. 2005
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`Arendi S.A.R.L. - Ex. 2005
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`selection means. In this respect, the present invention does not require the user to select a
`
`text string to be processed since it functions automatically upon a single click of an input
`
`device, such as a button, menu item, etc. No agreement was reached, however, pending the
`
`Examiner’s detailed reconsideration of the application upon formal submission of an
`
`amendment and subject to the Examiner updating her search.
`
`In light of the discussion with the Examiner, Claim 8 has been amended to clarify that
`
`according to Applicants’ invention, upon a single entry of an execute command by means of
`
`an input device, a document is analyzed to determine if first information is contained therein,
`
`and if the first information is contained in the document, an information source is searched
`
`for second information associated with the first information using a record retrieval program.
`
`These changes are not believed to add new matter (see, e.g, Fig. 1, steps 2, 4, 6, 8, 10, 12 and
`
`14 and the discussion in Applicants” disclosure thereof), and are believed to be patentably
`
`distinguishing over the applied prior art for the reasons discussed with the Examiner on
`
`October 17, 2000, as above noted.
`
`The present amendment is submitted in accordance with the provisions of 37 CPR,
`
`§l.ll6, which after Final Rejection permits entry of amendments placing the claims in better
`
`form for consideration on appeal. As the present amendment is believed to overcome the
`
`outstanding rejection under 35 U.S.C. §102, the present amendment places the application in
`
`better form for consideration on appeal.
`
`It is therefore respectfully requested that 37 C.F.R.
`
`§l.ll6 be liberally construed, and that the present amendment be entered.
`
`Consequently, in View of the present amendment, no further issues are believed to be
`
`outstanding, and the application as amended herewith is believed to be in condition for
`
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`formal Allowance An early and favorable action to that effect is respectfully requested.
`
`Respectfully submitted,
`
`OBLON, SPIVAK, McCLELLAND,
`M BR & NEUSTADT, P.C.
`
`t”
`
`ue
`
`.
`
`ard
`
`Attorney of Record
`
`Registration No, 43,224
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`22350
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`(703) 413—3000
`l;\atty\CRV\987 7\9877000 l .af; EHK/CRV/Crv
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`..
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`9877-0001—20
`Docket No.
`IN RE APPLICATION OF: Atle HEDLOY
`SERIAL NO: 09/189,626
`FILED:
`November 10, 1998
`FOR:
`METHOD, SYSTEM AND COMPUTER READABLE MEDIUM FOR...
`
`aasponss UNDER 37 cm 1.115—
`EXPEDITED PROCEDURE EXAMINING
`GROUP 3*le —
`
`ASSISTANT COMMISSIONER FOR PATENTS
`WASHINGTON, DC. 20231
`
`SIR:
`
`Transmitted herewith is an amendment in the above-identified application.
`I No additional fee is required
`I
`Small entity status ofthis application under 37 CFR. §1,9 and §1,27 is claimed.
`El
`Additional documents filed herewith:
`
`The Fee has been calculated as showu below:
`
`CLAIMS
`REMAIMNG
`
`HIGHEST
`NUMBER
`PREVIOUSLY
`
`N0. EXTRA
`CLAIMS
`
` F33318l33%]
`
`CALCULATIONS
`
`018all)?”HUT—ii
`
`
`
`TOTAL
`
`INDEPENDENT ——MINUS
`
`D MULTIPLE DEPENDENT—LAIMS
`TOTAL OF ABOVE CALCULATIONS
`
`I Reduction by 50% for filing by Small Entity
`Retardation of Assignment
`
`$40=
`TOTALm
`
`A checkin the amount of
`
`is attached
`
`I Please charge any additional Fees for the papers being filed herewith and for which no check is enclosed herewith, or
`credit any overpayment to deposit Account No. 15~0030. A duplicate copy ofthis sheet is enclosed.
`I If these papers are not considered timely filed by the Patent and Trademark Office, then a petition is hereby made under
`37 C.F,R. §1.136, and any additional fees required under 37 C.F.R. §l .l36 for any necessary extension oftime may be
`charged to Deposit Account No. 15-0030, A duplicate copy ofthis sheet is enclosed,
`
`ELLAND,
`
`llllllllllllilllllll||l||||lll||l
`22 3 5 0
`Tel. (703) 4133000
`Fax. (703) 413.2220
`(OSMMN 10/00)
`
`
`
`25,599
`
`Registration No.
`WW...
`Registration No.
`
`43,224
`
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