`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`13/316,203
`
`ISSUE DATE
`
`08/27/2013
`
`PATENT NO.
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`8521234
`
`SOLME.001A2C8
`
`1697
`
`20995
`
`7590
`
`08/07/2013
`
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET
`FOURTEENTH FLOOR
`IRVINE, CA 92614
`
`The projected patent number and issue date are specified above.
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`ISSUE NOTIFICATION
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment is 0 day(s). Any patent to issue from the above—identified application will include
`an indication of the adjustment on the front page.
`
`If a Continued Prosecution Application (CPA) was filed in the above—identified application, the filing date that
`determines Patent Term Adjustment is the filing date of the most recent CPA.
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`Applicant will be able to obtain more detailed information by accessing the Patent Application Information
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`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the
`Office of Patent Legal Administration at (571)—272—7702. Questions relating to issue and publication fee
`payments should be directed to the Application Assistance Unit (AAU) of the Office of Data Management
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`
`APPLICANT(S) (Please see PAIR WEB site http://pair.uspto. gov for additional applicants):
`
`Michael E. Shanahan, Nyack, NY;
`
`The United States represents the largest, most dynamic marketplace in the world and is an unparalleled location
`for business investment, innovation, and commercialization of new technologies. The USA offers tremendous
`resources and advantages for those who invest and manufacture goods here. Through SelectUSA, our nation
`works to encourage and facilitate business investment. To learn more about why the USA is the best country in
`the world to develop technology, manufacture products, and grow your business, visit SelectUSA.gov.
`
`IR103 (Rev. 10/09)
`
`1
`
`AT&T - Exhibit 101 1
`
`1
`
`AT&T - Exhibit 1011
`
`

`

`
`
`~
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.0. Box I450
`Alexandria, Virginia 22313-1450
`www.usplo.gov
`
`13/316,203
`
`12/09/2011
`
`Michael E. Shanahan
`
`SOLME.001A208
`
`1697
`
`07/31/2013
`7590
`KNOBBE MARTENS OLSON & BEAR LLP
`‘ 2040 MAIN STREET
`FOURTEENTH FLOOR
`'- IRVINE, CA 92614
`
`BEAMER,TEMICAM
`
`ART UNIT
`2646
`NOTIFICATION DATE
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`07/31/2013
`
`ELECTRONIC
`
`NOTICE OFVNON-COMPLIANT INFORMATION DISCLOSURE STATEMENT
`
`An Information Disclosure Statement (IDS) filed 713a, i8 in the above-identified application fails to
`meet the requirements of 37 CFR 1.97(d) for the reason(s) specified below. Accordingly, the IDS will be
`placed in the file, but the information referred to therein has not been considered. M
`
`
`The IDS is not compliant with 37 CFR 1.97(d) because:
`
`IE/The IDS lacks a statement as specified in 37 CFR 1.97(e).
`
`CI The IDS lacks the fee set forth in 37 CFR 1.17(p).
`
`CI The IDS was filed after the issue fee was paid. Applicant may wish to consider filing a petition to
`withdraw the application from issue under 37 CFR 1.313(c) to have the IDS considered. See
`MPEP 1308.
`
`Lh‘
`[EX 571-2724200 or 1-888—786-0101
`Application Assistance Unit
`Office of Data Management
`
`FORM PTOM327-B (Rev. 02/08)
`
`PageZ of 1
`
`2
`
`

`

`
`
`PTO/SB/08 E - uivalent
`
`INFORMATION DISCLOSURE
`
`STATEMENT BY APPLTCANT
`
`—_
`(Multiple sheets used when necessary) —_
`
`
`U.S. PATENT DOCUMENTS
`
`Numbzrfztztysgtrtnom
`:szsztfisrgzzzeszsazrvxga
`Example: 1,234,567 B1
`FiguresAppear
`
`
`
`
`
`
`
`
`
`
`
`—\.Au—\fi0:0:,hbCDon<0V
`
`_\ 01‘1
`
`—L—\A—|.NVcu0"—\.°N]—\.
`
`_L NM
`
`6,253,061
`
`6,256,378
`
`6,275,234
`
`6,308,086
`
`6,366,791
`
`6,385,305
`
`6,389,124
`
`06-26-2001
`
`07-03-2001
`
`0814-2001
`
`10-23-2001
`
`04-02-2002
`
`05-07-2002
`
`05—14—2002
`
`Schnarel, et al.
`
`6,400,958
`
`06-04-2002
`
`6,418,330 B1
`
`07-09-2002
`
`Lee
`
`,
`
`'
`
`6,449,359
`
`6,477,580
`
`6,483,531
`
`6,496,692
`
`6,501,967
`
`6,564,056
`
`6,599,147
`
`6,603,985
`
`6,718,021
`
`~
`
`6,720,969
`
`6,728,531
`
`6,754,509
`
`6,778,179
`
`6,829,618
`
`6,831,617
`
`6,845,398
`
`6,848,011
`
`09-10-2002
`
`1 1-05—2002
`
`11-19-2002
`
`12-17-2002
`
`12-31-2002
`
`Bowman-Amuah
`U
`
`Ry
`
`05-13-2003
`
`Fitzgerald
`
`07-29-2003
`
`08-05-2003
`
`04-06-2004
`
`04-13-2004
`
`04-27-2004
`
`06-22-2004
`
`08-17-2004
`
`1207-2004
`
`01-18-2005
`
`Galensky, et al.
`
`01-25-2005
`
`Park, et al.
`
`
`
`
`
`
`
`an
`
`Cl?
`o o
`
`'6'8'7‘1'084'52"
`
`03-22-2005
`
`Takagaki
`
`6,371,043
`
`
`
`
`173
`a
`,
`
`
`
`
`
`9/ 1 5
`
`61‘2“” Signature
`
`:Temica 8638161.”
`
`Date Considered
`
`01/30/2312
`
`Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not
`*Examiner:
`in conformance and not considered.
`Include copy of this form with next communication to applicant.
`
`T - Place a check mark in this area when an English language Translation is attached.
`ALL REFERENCES CONSIDEREQ EXCEPT WHERE LINED THROUGH.
`
`/T.B.,/
`
`3
`
`

`

`PART B - FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), to: Mail Mail Stop ISSUE FEE
`Commissioner for Patents
`P.O. Box 1450
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`Note: A certificate of mailin can only be used for domestic mailings of the
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`apers. Each additional paper, such as an assignment or formal drawing, must
`gave its own certificate of mailing or transmiss10n.
`Certificate of Mailing or Transmission
`-
`-
`-
`-
`-
`-
`-
`-
`that this Fee 5 Transmittal 13 being deposned With the United
`I hereb cert1
`erv1ce wx
`su 1c1ent
`sta e or irstcass mm in an enveo
`tates os
`'th
`1)
`'
`p0
`g r
`r
`1
`5
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`'1'
`1
`addressed to the Mail Stop ISSUE FEE address above, or being facsimi e
`transmitted to the USPTO ( 71) 273-2885, on the date indicated below.
`
`04/222013
`7590
`20995
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET
`FOURTEENTH FLOOR
`
`IRVINE, CA 92614
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`(Date)
`
`(DWWiSW)
`(Signature)
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`13/3 16,203
`
`12/09/201 1
`
`Michael E. Shanahan
`
`SOLME.001A2C8
`
`1697
`
`TITLE OF INVENTION: METHODS AND APPARATUSES FOR PROGRAMMING USER—DEFINED INFORMATION INTO ELECTRONIC DEVICES
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`APPLN. TYPE
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`ENTITY STATUS
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`ISSUE FEE DUE
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`PUBLICATION FEE DUE PREV. PAID ISSUE FEE
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`TOTAL FEE(S) DUE
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`DATE DUE
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`nonprovisional
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`SMALL
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`BEAMER, TEMICA M
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`$890
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`2646
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`$300
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`$0
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`$1 190
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`07/22/2013
`
`455-567000
`
`1. Change of correspondence address or indication of "Fee Address" (37
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`CFR 1.363).
`'3 Chan e of corres
`Address orm PTO/
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`2. For printing on the patent front page, list
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`
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`1 Knobbe, Martens,
`(1) the names of up to 3 registered patent attorneys
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`ndence address (or Change of Correspondence
`/ 122) attached.
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`(2) the name of a single firm (having as a member a
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`PLEASE NOTE: Unless an assi nee is identified below, no assignee data will appear on the patent. If an assignee is identified below, the document has been filed for
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`(A) NAME OF ASSIGNEE
`(B) RESIDENCE: (CITY and STATE OR COUNTRY)
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`Solocron Media, LLC
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`PTOL—85 (Rev. 02/11)
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`Page 24)f 4
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`4
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`5. Change in Entity Status (from status indicated above)
`D Applicant certifying micro entity status. See 37 CFR 1.29
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`NOTE: Absent a valid certification of Micro Entity Status (see form PTO/SB/15A and ISB , issue
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`NOTE: The Issue Fee and Publication Fee (if required) will not be accepted from anyone other than the applicant; a registered attorney or agent; or the assignee or other party in
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`Authorized Signature
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`7 - Z Z " Z O ’ 3
`Date
`‘ a g;;: z
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`This collection of information is required by 37 CFR 1.311. The information is re uired to obtain or retain a benefit by the public which is to file (and by the USPTO to process)
`an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. T is collection is estimated to take 12 minutes to complete, including gathering, preparing, and
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`a, Virginia 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, PO. Box 1450,
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`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
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`Page 3 of 4
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`5
`
`

`

`Electronic Patent Application Fee Transmittal
`
`Application Number:
`
`13316203
`
`Filing Date:
`
`09-Dec-2011
`
`T't'e °f Inventwn‘
`
`METHODS AND APPARATUSES FOR PROGRAMMING USER-DEFINED
`INFORMATION INTO ELECTRONIC DEVICES
`
`First Named Inventor/Applicant Name:
`
`Michael E. Shanahan
`
`Attorney Docket Number:
`
`SOLME.001A2C8
`
`Filed as Small Entity
`
`Utility under 35 USC111(a) Filing Fees
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`Description
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`Fee Code
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`Quantity
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`Sub-Total in
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`Basic Filing:
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`Pages:
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`Claims:
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`Miscellaneous-Filing:
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`Patent-Appeals-and-lnterference:
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`Post-Al|owance-and-Post-lssuance:
`
`Publ. Fee- Early, Voluntary, or Normal
`
`1504
`
`l
`
`300
`
`300
`
`6
`
`

`

`Extension-of—Time:
`
`Total in USD (5)
`
`Miscellaneous:
`
`7
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`

`

`Electronic Acknowledgement Receipt
`
`“—
`
`——
`
`T't'e °f Inventwn‘
`
`METHODS AND APPARATUSES FOR PROGRAMMING USER-DEFINED
`INFORMATION INTO ELECTRONIC DEVICES
`
`
`
`——
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`File Listing:
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`Document
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`Multi
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`Pages
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`Issue Fee Payment (PTO-85 B)
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`SOLME_OO1A2C8_IssueFee.pdf
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`122105
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`Information:
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`Fee Worksheet (SBO6)
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`fee-info.pdf
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`e68d4abcbba0820e2f2fb4e5319a02a35bd
`4925b
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`
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO ofthe indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
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`PTO/SB/OS E- uivalent
`
`
`INFORMATION DISCLOSURE
`
`STATEMENT BY APPLTCANT
`
`(Multiple sheets used when necessary)
`
`U.S. PATENT DOCUMENTS
`
`Name of Patentee or Applicant
`
`
`
`
`
`
`
`
`Document Number
`Examiner Cite
`Publication
`Pages, Columns, Lines Where
`Initials
`No Number- Kind Code (if known)
`Date
`Relevant Passages or
`‘
`Example: 1,234,567 B1
`MM-DD-YYYY
`Relevant Figures Appear
`-__—
`8,447,290
`(SOLME.001A1C5)
`and its file histo
`
`05/21/2013 Shanahan
`
`
`
`8,452,272
`(SOLME.001A2C11)
`
`
`and its file histo
`
`05/28/2013 Shanahan
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`FOREIGN PATENT DOCUMENTS
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`
`
`Examiner
`Initials
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`'
`
`.
`
`Publication
`Foreign Patent Document
`Date
`Country Code-Number-Kind
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`Exam Ie:
`JP 1234567 A1 MM'DD'WW
`
`Pages, Columns, Lines
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`Name of Patentee or Where Relevant Passages
`Applicant
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`
`NON PATENT LITERATURE DOCUMENTS
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`Include name of‘the author (in CAPITAL LETTERS), title of the article (when appropriate), title of the
`item (book, magazine, journal, serial, symposium, catalog, etc.), date, page(s), volume-issue
`number(_s), publisher, city and/or country where oublished.
`Written Opinion of the International Searching Authority mailed Nov. 21, 2001, issued in
`connection with International Patent Appln. No. PCT/USOO/32920 (7 pages)
`TAKEISHI, ET AL., "Mobile Innovation and the Music Business in Japan: The Case of
`Ringing Tone Melody", Institute of Innovation Research ~ Hitotsubashi University, May
`
`15798565zad
`071513
`
`, Examiner Signature
`
`Date Considered
`
`Include copy of this form with next communication to applicant.
`
`Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not
`*Examiner:
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`T - Place a check mark in this area when an English Ianguag’HDTranslation is attached.
`
`10
`
`

`

`
`
`PA'l‘ENT COOPERATION TREATY
`
`,
`From the
`INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
`
`T‘“ MICHAEL E. SHANAHAN
`PO. BOX 331
`
`
`NYACK. NY 10960
`
`
`
`
`PCT
`
`WRITTEN OPINION
`
`(PCT Rule 66)
`
`II f
`I
`'
`Applicants or agent s
`ile reference
`- MES/001
`
`REPLY DUE
`
`within TWO months
`from the above date of mailing
`
`
`
`
`31333333225)
`21 NOV 2001
`
`
`
`
`
`
`
`
`
`International Patent Classification (IPC) or both national classification and IPC
`IPC(7).- H049 7/32 and US CL: 455/443
`
` Applicant
`
`MICHAEL E. SHANAHAN
`
`
`
`International application No.
`PCT/USOO/32920
`
`Priority date (day/montb/year)
`International filing date (day/manth/year)
`06 DECEMBER 1999
`05 DECEMBER 2000
`
`
`
`1. This written opinion is the fir“
`
`(first, etc.) drawn by this International Preliminary Examining Authority.
`
`2. This opinion contains indications relating to the following items:
`
`Basis of the opinion
`
`IPriority
`
`Non-establishment oi' opinion with regard to novelty, inventive step or industrial applicability
`Lack of unity of invention
`I
`
`Reasoned statement under Rule 66.2(a)(ii) with regard to novelty, inventive step or industrial applicability:
`citations and explanations supporting suCh statement
`
`Certain documents cited
`
`VII El Certain defects in the international application
`VIII D Certain observations on the international application
`
`3. The applicant is hereby invited to reply to this opinion.
`When?
`See the time limit indicated above. wwwmwmfiwmmwmn
`
`How?
`
`Also
`
`By submitting a written reply, accompanied, where appropriate, by amendments. according to Rule 66.3.
`For the form and the language of the amendments. see Rules 66.8 and 66.9.
`
`For an additional opportunity to submit amendments, see Rule 66.4.
`For the examiner’s obligation to consider amendments and/or arguments, see Rule 66.4- bis.
`For an informal communication with the examiner, see Rule 66.6.
`
`If no reply is filed, the international preliminary examination report will be established on the basis of this opinion.
`
`4-. The final date by which the international preliminary
`examination report must be established according to Rule 69.2 is: 06 APRIL 3002
`
`
`
`Name and mailing address of the lPEA/US
`(bnmtissiouer of Patents and Triuleuuirks
`Bax PCT
`Washington. D.(!. 30231
`
`Authorized oflicer
`
`WILLIAM TROST
`
`(703) nor-3230
`Facsimile No.
`Frarni PCT/TPFA/Mfi Ir-nupt' nhvnri Univ [Emmi-
`
`_
`
`'I‘EIEPhO'”e N0-
`
`11
`
`

`

`
`
`PATENT COOPERATION TREATY
`
`From the
`INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
`
`Tm MICHAEL E. SHANAHAN
`PO. BOX an:
`NYACK. NY {0960
`
`
`
`
`
`
`PCT
`
`WRITTEN OPINION
`
`(PCT Rule 66)
`
`Date of Mailin
`
`(day/month/year)l
`
`
`
`
`
`within TWO months
`Applicant's or agent's file reference
`REPLY DUE
`MES/001
`from the above date of mailing
`
`
`
`
`International application No.
`
`
`International filing date (day/mnth/year)
`Priority date (day/manth/year)
`PCT/ USOO/seseo
`05 DECEMBER 1999
` 05 DECEMBER 2000
`
`
`
`International Patent Classification (IPC) or both national classification and IPC
`IPC(7): Hosg 7/32 and US CL: 455/418
`
` Applicant
`
`MICHAEL E. SHANAI‘IAN
`
`iiI|
`
`l
`
`(first, etc.) drawn by this International Preliminary Examining Authority.
`
`II D Priority
`III
`Non—establishment 0i'opinion with regard to novelty, inventive step or industrial applicability
`
`
`first
`
`
`1. This written opinion is the
`
`
`2. This opinion contains indications relating to the following items:
`
`
`I
`X Basis of the opinion
`
`
`
`
`
`
`EEDD
`
`IV
`
`Lack of unity of invention
`
`Reasoned statement under Rule 66.2(a)(ii) with regard to novelty, inventive step or industrial applicability;
`citations and explanations supporting such statement
`
`VI
`
`Certain documents cited
`
`VII D Certain defects in the international application
`VIII D 'Certain observations on the international application
`
`:5. The applicant is hereby invited to reply to this opinion.
`
`When?
`
`See the time limit indicated above. $heappfieanemayrbemetheespicatien—9Hhaetknehmitfiequest—thie
`
`
`
`
`
`
`
`
`
`
`
`
`
`How?
`
`Also
`
`By submitting a written reply, accompanied. where appropriate, by amendments, according to Rule Gus.
`For the form and the language of the amendments. see Rules 66,8 and 66.9.
`
`For an additional opportunity to submit amendments, see Rule 66.4.
`For the examiner's obligation to consider amendments and/or argument-‘3. SEC Rule 66-4“ 5135.
`For an informal communication with the examiner, see Rule 66.6.
`
`If no reply is filed, the international preiiminary examination report will be established on the basis of this opinion.
`
`
`
`
`
`
`.
`«i. The final date by which the international preliminary
`examination report must be established according to Rule 69.2 is: 05 APRIL 9009
`
`
`Authorized oliicer
` Name and mailing address of the IPEA/US
`
`
`Commissioner 01' l‘ntcnis and Trademarks
`
`Box PCT
`WILLIAM TROST
`
`
`Washington, D11 20231
` Facsimile No.
`Tehphone NO-
`(703) cor—3230
`
`
`
`Form PCT/IPEAMOS (cover sheet) {July 1998):!-
`
`12
`
`

`

`
`
`
`
`
`
`
`
`WRITTEN OPINION
`
`International application No.
` PCT/USOO/BZQ20
`
`I.
`
`Basis of the opinion
`
`‘
`
`1. With regard to the elements of the international application:*
`the international application as originally filed
`the description:
`
`1-25
`, as originally filed
`NONE
`filed with the demand
`,
`
`NONE
`, filed with the letter of
`
`pages
`pages
`pages
`
`the claims:
`
`pages
`pages
`pages
`pages
`
`, as originally filed
`25—30
`
`NONE
`, as amended (together with any statement) under Article 19
`NONE
`, filed with the demand
`
`NONE
`, filed with the letter of
`
`the drawings:
`pages
`pages
`pages
`
`, as originally filed
`1'13
`, filed with the demand
`NONE
`
`NONE
`, filed with the letter of
`
`the sequence listing part of the description:
`, as originally filed
`pages
`NONE
`, filed with the demand
`pages
`NONE
`
`pages
`NONE
`, filed with the letter of
`
`-
`
`.2. With regard to the language, all the elements marked above were available or furnished to this Authority in the language in which
`the intemational application was filed, unless otherwise indicated under this item.
`
`These elements were available or fiimished to this Authority in the following language
`D the language of a translation furnished for the purposes of international search (under Rule 23.1(b)).
`D the language of publication of the international application (under Rule 48303)).
`I] the language of the translation furnished for the proposes of international preliminary examination (under Rule: 55.2 and!
`or 55.3).
`
`which is:
`
`3. With regard to any nucleotide and/or amino acid sequence disclosed in the international application, the written opinion was
`drawn on the basis of the sequence listing:
`D contained in the international application in printed form.
`|:| filed together with the international application in computer readable form.
`C] furnished subsequently to this Authority in written form.
`[I furnished subsequently to this Authority in computer readable form.
`I: The statement that the subse uently fiimished written sequence listing does not go beyond the disclosure in the
`international application as fi ed has been fiirnished.
`
`The statement that the information recorded in computer readable form is identical to the writen sequence listing has
`been fiimished.
`
`4_
`
`The amendments have resulted in the cancellation of:
`
`NONE
`the description, pages
`
`the claims, Nos.
`NONE
`
`the drawings, sheetsifig
`NONE
`5. El This opinion has been drawn as if (some of) the amendments had not been made, since they have been considered to go
`beyond the disclosure as filed, as indicated in the Supplemental Box (Rule 70.2(c)).
`
`* Replacement sheets which have been fitmished to the receiving Ofi‘ice in response to an invitation under Article 14 are referred to
`in this opinion as "originally filed”.
`1 3
`
`
`
`
`
`13
`
`

`

`
`
`
`
`
`
`V
`VBHTEN OPINION
`
`International application No.
`
`PCT/ [3500/ season
`
`V. Reasoned statement under Rule 66.2(a)(ii)'with regard to novelty, inventive step or industrial applicability;
`citations and explanations supporting such statement
`
`I.
`
`statement
`
`Novelty (N)
`
`Inventive Step (IS)
`
`Industrial Applicability (IA)
`
`5—9, 12. 19—32
`14,104 1.15—13,
`
`NONE
`1-32
`
`2.
`
`citations and explanations
`Claims 1-4510 lack novelty under PCT Article 33(2) as being anticipated by Uppaluru et al. (5,915.00I).
`
`Regarding claim 1, Uppaluru et al. disclose a system and method for providing and using universally accessible voice
`and speech comprising: providing the user-defined audio file (see figs, element 102 and it description); and enabling a user of
`the telephone to program at least a portion of the audio file into the telephone (see fig.1, elements 105, 109, 111 and its
`description).
`7
`Regarding claim 2. Uppaluru et a1. further comprises providing the audio file from the Internet (see Fig.1. element
`101 and its description).
`Regarding claim 5, Uppaluru et a1. Further discloses providing a plurality of audio files (see fig], element 104- and
`its description) and further comprises allowing the user of the telephone to select at least one of the audio files (see cola, lines
`26-32).
`
`Regarding claims 4-, lo the Examiner takes Official notice that this Feature providing the audio file ti-om a disc drive
`of computer and programmable memory is notoriously well know in the art.
`
`Claim 11 lacks novelty under PCT Article 33(2) as being anticipated by Ohayon et 3]. (5,933,328).
`
`Regarding claim it. Ohayon discloses a recovery mode feature For remote units comprising: programming a user
`defined audio file into a programmable memory in the telephone (see col.6, lines 25-34); playing the user audio deliled when
`receiving an incoming telephone call (see col.6. lines 6-45).
`
`Claims 13-!8 lack novelty under PCT Article 33(2) as being anticipated by Atcheson et all. (5,583,763).
`
`Regarding claim 13, Atcheson discloses a method and apparatus for recommending selection bases on preferences in
`
`a multi-user system comprising a data input device that allows the (Continued on Supplemental Sheet.)
`
`14
`
`

`

`a,
`
`i g i gi ir
`
`, l i ig ii liis i i| l
`
`
`
`
`
`
`
`
`
`International application No.
`WRITTEN OPINION
`.
`PCT/Uboo/saseo
`
`
`
`Supplemental Box
`(To be used when the space in any of the preceding boxes is not. sufficient)
`
`
`
`
`Continuation of: Bones I - VIII
`
`Sheet. 10
`
`TIME LIMIT:
`
`The time limit set for response to a Written Opinion may not be extended. 37 CFR 1.484(d). Any response
`received after the expiration of the time limit set in the Written Opinion will not be considered in preparing the International
`Preliminary Examination Report.
`
`V. 2. REASONED STATEMENTS - CITATIONS AND EXPLANATIONS (Continued):
`user to select the audio file (see col.l, 20-40); and a programmer circuit that programs the audio file into the telephone
`memory (sec col.1, lines (see oo|.l, lines 23-26).
`Regarding claims 14—16, Atcheson further discloses the-programmer circuit is installed in a computer (see col.1.
`20-40 and see fig.1, col.3, lines 24-38).
`Regarding claims 17-18, Atcheson further discloses the communication link is a wireless link (see fig.l. coi.3. lines
`
`24-38).
`
`Claims 5, 8—9 lack an inventive step under PCT Article 33(3) as being obvious over Uppaluru et al. (5,915,001) in view of
`Wise et al. (5,884,262).
`
`Regarding claim 5, Uppaluru er al. disclose all the subject matters described as objected to claim 1, except for
`editing the audio file. However, Wise discloses a computer network audio access and conversion system comprising an editing
`the audio file (see fig.l, element 121 col.3, line 5i—col.5, line 28). Thus, it would have been obvious to one having ordinary
`skill in the art at the time the invention was made to use the editing technique in Uppaluru's system to edit and download the
`file from the internet in order to select the file appropriate for their convenience.
`
`Regarding 6-9, Uppaluru discloses all the subject matters described as objected to claim 1, except for determining a
`format of audio, converting the audio file fonnat. However, Wise discloses a computer network audio access and conversion
`system comprising determining a format of audio, converting the audio file to the file format required by the telephone (see
`fig.3 and its description). Thus, it would have been obvious to one having ordinary skill in the art at the time the invention
`was made to use Wise's determining and converting format in Uppaluru's system to convert the audio signal to the format
`required for using in the telephone system in order to transmit the signal properly and quality.
`
`Claim 12 lacks an inventive step under PCT Article 33(3) as being obvious over Ohayon et al. (5,933,328) in view of
`Ateheson et al. (5,583,763).
`Regarding claim 12, Ohayon discloses all the subject matters described as objected to claim ll, except for reading
`the audio file. However, Atcheson discloses a method and apparatus for recommending selection bases on preferences in a
`multi-user system comprising a telephone with computer capability could be used to ”download“ digital information,
`representing, for example, music selections into the memory of the telephone for later playback (see col.1. 20-40). Thus,
`would have been obvious to one having ordinary skill in the art at the time the invention was made to use the selection
`technique in Ohayon's system in order to select the file that user need to listen.
`
`it
`
`Claims 19-32 lack an inventive step under PCT Article 33(3) as being obvious over Ateheson et al. (5,952,918) in view of
`Wise et a1. (5,884,262).
`Regarding claims 19-23, 25-31, Atcheson discloses all the subject matters described as objected to claims 13, 18,
`except for the source of audio file is the Internet. However, Wise discloses a computer network audio access and conversion
`system comprising the source of audio file is the Internet (see fig. 1, col. 1, lines 37-49 and description). Thus. it would have
`been obvious to one having ordinary skill in the art at the time the invention was made to use Wise's Internet audio file in
`Atcheson's system in order to access anywhere in the world.
`Regarding claims 24, 32 Atcheson further discloses the communication link is a wireless link (see fig. 1, col.3, lines
`
`24-38).
`
`new CITATIONS
`
`us 5,915,001 A (UPPALURU) 22 JUNE 1999, ALL
`US 5,884,262 A (WISE ET AL) 16 MARCH 1999, ALL
`
`15
`
`
`
`15
`
`

`

`
`
`WHMWWWm.mmmm,mu,mmmwww.mwmnmmmWax“mmnmxwmmwmmmmmm—nw
`
`
`
`
`
`\VBITfEN OPINION
`
`International application No.
`PCT/USDO/32920
`
`VI. Certain documents cited
`
`1. Certain published documents (Rule 70.10)
`
`Application No.
`Patent. No.
`
`US, A. 5.915.001
`
`Publication Date
`(day/manM/yemj
`
`22 JUNE 1999
`
`Filing Date
`(day/monfll/year)
`
`Priority dale (valid claim)
`(day/mutil/year)
`
`14 NOVEMBER 1996
`
`NONE
`
`US, A, 5,884,262
`
`16 MARCH 1999
`
`28 MARCH 1996
`
`NONE
`
`(ng/monih/year)
`
`2. Non-written disclosurm (Rule 70.9)
`
`Kind of non-Written disclosule
`
`Date of non—written disclosure
`
`(day/1710723320901)
`
`Date of written disclosure
`referring to non-“Timon disclosure
`
`
`
`
`
`16
`
`

`

`International application No.
`WBI'ITEN OPINION
`PCT/U500/3292o
`
`
`
`Supplemental Box
`
`
`(To be. used when the spam in {my 01' the preceding boxes is not sufficient)
`
`
`Continuation of: Boxes I - VIII
`
`Sheet. 11
`
`US 5,952,918 A (OHAYON) 14 SEPTEMBER 1999, ALL
`
`US 5,583,763 A (ATCHESON ET AL.) 10 DECEMBER 1996, ALL
`
`
`
`
`
`17
`
`
`
`
`
`
`
`17
`
`

`

`Electronic Acknowledgement Receipt
`
`16374833
`
`Application Number:
`
`13316203
`
`International Application Number:
`
`Confirmation Number:
`
`T't'e °f Inventwn‘
`
`METHODS AND APPARATUSES FOR PROGRAMMING USER-DEFINED
`INFORMATION INTO ELECTRONIC DEVICES
`
`
`
`First Named Inventor/Applicant Name:
`
`Michael E. Shanahan
`
`Customer Number:
`
`20995
`
`John R. King/Caroline Wright
`
`Filer Authorized By:
`
`John R. King
`
`Attorney Docket Number:
`
`SOLME.001A2C8
`
`Receipt Date:
`
`22-JUL-2013
`
`Filing Date:
`
`09-DEC-2011
`
`Time Stamp:
`
`13:33:08
`
`Application Type:
`
`Utility under 35 USC111(a)
`
`Payment information:
`
`Submitted with Payment
`
`File Listing:
`
`Document
`Number
`
`Document Descri
`
`tion
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`p
`
`4157C
`
`File Size(Bytes)/
`Message Digest
`100785
`
`Pages
`Multi
`Part /.zip (if appl.)
`
`SOLME_OOlA2C8_|DS.pdf
`
`882472C5d81d817b95781fbcdf3493e45dd
`
`18
`
`18
`
`

`

`Multipart Description/PDF files in .zip description
`
`Transmittal Letter
`
`Information Disclosure Statement (IDS) Form (SBOS)
`
`Information:
`
`Information:
`
`Information:
`
`Non Patent Literature
`
`.
`.
`.
`WrItten_OpInIon_ISA_Nov_21.
`pdf
`
`282028
`
`838dde07bb2b5fdaSbSdbb8c20f721aa3fa
`ba2b7
`
`Non Patent Literature
`
`Takeishi.pdf
`
`923704
`
`ff9d5cd0a4a60f0e685c84c4fa3dc65b48db
`aec4
`
`
`
`New Inter