`
`UNl'1‘l:ID S'I'A'I‘l:IS Dl:Il’ARTM]:I:\'T 01-‘ (_‘.0MMER(_‘.l:I
`United States Patent and Trademark 0t'l'n:c
`Addrussz (I().‘\.'1MISSION|iR I"()R 1:3-’\'1'|iN'|'S
`P.O. Box [-150
`Alcxilmlria, \-'irg,ini:1 223 I .'L I 450
`wu-'\v.|I:ap|u.g,m'
`
`.r’\|’|-‘I .I( IA'1'I()N N0.
`
`|"||.ING |).4\'|'I'I
`
`1"|RS'l' NAMILI) IN\«"I'IN'l'()R
`
`A'1'1'()R.I'\'] {Y ])(){‘.K|i'1' N0.
`
`CON]-'IRMr‘\'|'I{)N N0.
`
`9{l:"'0 I 2.987
`
`09!] W20! 3
`
`7765482
`
`34? 269000059
`
`T602
`
`nJr:ur2m5
`?s9n
`3-16IJ
`LAW 0l~‘F1(_‘l:‘. OF DUANE. S. KOBAYASHI
`Box
`Reston, VA 20195
`
`:
`I
`I, I.
`
`"’°‘”'”'R
`IIEYMANJOIIN3
`
`ART UNIT
`PAPER NLTMIBER
`
`3992
`
`MAII. |).¢\'|']i
`|)li|.I\«"IiRY MODIL
`
`0] !2(J.I'2(J] 5
`l-‘Al-‘LLR
`
`Please find below andfor attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`_‘
`*‘‘‘’'-‘9‘’’‘ “W ‘W’
`
`0001
`000‘
`
`Apple/Twitter
`Apple/Twitter
`Ex. 1008
`Ex. 1008
`IPR1 of U.S. Pat. No. 7,765,482
`IPR1 of U.S. Pat. No. 7,765,482
`
`

`

` IJNI TED S '.['ATE'.~'_-I PATEN T AND TRADEE-‘IARK QFFI CE
`
`Cornrnis-sinner for Patents
`United States Patent and Tradernark Office
`F'.O. Elo;~t145I:i
`Alexaridria, VA 2231 3-1 450
`vuvu-wuspro.gmr
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`Brian K. Erickson
`
`DLA PIPER LLP (US)
`
`401 Congress Ave.
`
`Suite 2500
`
`Austin, TX 78701
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMI'I'I'AL FORM
`
`REEXAMINATION CONTROL NO. 90/012 987.
`
`PATENT NO. 7765482.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL—465 (Rev.07—04)
`
`0002
`
`0002
`
`

`

`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspfo.gov
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Control Number: 90/012,987
`Filing Date: 09/10/2013
`Appellant(s): U.S. Patent No. 7,765,482
`
`Duane S. Kobayashi
`For Appellant
`
`EXAM|NER’S ANSWER
`
`This is in response to the appeal brief filed Nov. 24, 2014.
`
`0003
`
`0003
`
`

`

`Control Number: 90/012,987
`
`Art Unit: 3992
`
`Page 2
`
`(1) Grounds of Rejection to be Reviewed on Appeal
`
`Every ground of rejection set forth in the Office action dated 05/21/2014 from
`
`which the appeal is taken is being maintained by the examiner except for the grounds of
`
`rejection (if any) listed under the subheading “WITHDRAWN REJECTlONS.” New
`
`grounds of rejection (if any) are provided under the subheading “NEW GROUNDS OF
`
`REJECTlON.”
`
`The following ground(s) of rejection are applicable to the appealed claims.
`
`1. The rejection of claims 38, 40, 44-46 and 49 under 35 U.S.C. § 102(e) based on U.S.
`
`Patent No. 6,930,709 to Creamer et al. ("Creamer");
`
`2. The rejection of claims 38, 40, 44-46 and 49 under 35 U.S.C. § 102(e) based on U.S.
`
`Patent No. 6,038,295 to Mattes ("Mattes"); and
`
`3. The rejection of claim 46 under 35 U.S.C. § 103(a) based on Mattes in view of
`
`Creamer.
`
`(2)
`
`Response to Arguments
`
`Appellant argues on page 2 of the Brief that:
`
`A.
`
`“Claim 38 of the ‘482 Patent recites “pre-processing said digital content at
`said client device in accordance with one or more pre-processing parameters .
`.
`said one or more pre- processing parameters controlling said client device in a
`placement of said digital content into a specified form in preparation for
`publication to one or more devices that are remote from a server device and said
`client device.” (‘482 Patent at 14:1-9.) When properly construed, neither Creamer
`nor Mattes discloses this claim limitation. As is demonstrated below, when claim
`38 is construed under the broadest reasonable interpretation based on the
`evidence in the record, including dictionary definitions provided by the Examiner,
`neither Creamer nor Mattes discloses the placement of digital content into a
`
`.
`
`Ex Parfe Reexaminafion—Examiner’s Answer
`
`Paper No. 201501 16
`
`0004
`
`0004
`
`

`

`Control Number: 90/012,987
`
`Art Unit: 3992
`
`Page 3
`
`“specified form in preparation for publication to one or more devices that are
`remote from a server device and said client device.” For at least this reason,
`claim 38, and claims 40, 44-46 and 49, which depend from claim 38, are
`patentable over Creamer and Mattes.”
`
`However, as stated in the Final Rejection on pages 3 and 4 and the Claim Chart
`
`of the Request beginning on pages 13 and 22, (both incorporated herein by reference),
`
`the limitations of Claim 38 are shown as being clearly met. Thus, as pointed out on
`
`page 7 of the Final Rejection, the “pre-processing” feature of Claim 38 has been
`
`properly construed, and is anticipated by either Creamer or Mattes.
`
`B.
`
`Response to Claim Construction Argument
`
`The Appellant argues that the Examiner’s perspective of the claim language is
`
`overbroad, and his position effectively nullifies the “specified form in preparation
`for publication” limitation of the claim, thereby allowing the Examiner to map the
`claim language to any pre—processing directed to any objective. The Appellant
`argues that, “however, when the language of claim 38 is considered in its
`entirety, it is clear that the pre—processing of the digital content must be ‘in
`preparation for publication’ and cannot be directed to unrelated objectives such
`as storage or archiving of the digital content” (Brief page 3).
`
`But, as stated in the Final Rejection beginning on page 5, “During reexamination,
`
`claims are given in the broadest reasonable interpretation consistent with the
`
`specification and limitations in the specification are not read into the claims In re
`
`Yamamoto 740 F.2d 1569, 222 USPQ 934.”
`
`Here, it should be emphasized that the claim does not limit the reason for
`
`compressing the image to only for and nothing but publication.
`
`Instead, the claim
`
`recites, "in preparation for publication" (i.e. NOT "nothing but publication"). So, as long
`
`as the compressed JPEG image gets eventually published on the internet after too
`
`Ex Parfe Reexaminafion—Examiner’s Answer
`
`Paper No. 201501 16
`
`0005
`
`0005
`
`

`

`Control Number: 90/012,987
`
`Art Unit: 3992
`
`Page 4
`
`many steps/stages (for example, storing, rotating, cropping, etc.), they ALL can be
`
`considered as steps of “preparation for publication”.
`
`“Publication” was then defined by dictionary as “the act or process of producing a
`
`book, magazine, etc., and making it available to the public” (Final Rejection, pages 4-5).
`
`The term, “etc.” includes internet websites.
`
`The Appellant on page 5 of the Brief changes the definition of “publication” to “the
`
`act or process of producing a consumable product, and making the produced
`
`consumable product available to the public” (Brief, page 5). However, the examiner has
`
`never defined “publication" to have “consumable product” as part of the definition.
`
`Moreover, as clearly set forth beginning on page 6 of the Final rejection, Patent
`
`Owner appears to argue that the claim language implicitly requires the choice of
`
`"specified form...for publication" to be based on knowledge of the requirements of the
`
`"one or more devices", e.g. the requirements of a particular website:
`
`The act of pre—processing modifies the digital content and places the digital a
`specific form "in preparation for publication to one or more devices." Col. 2, line
`60 to col. 3, line 6 of the '482 Patent describes the act of pre—processing in
`modifying digital content to meet certain imaging specifications for an
`example web site as follows:
`
`"The benefits of the Prepare and Post tool are. d) to PictureWorks web
`site partner, access to contributed media ‘made to order‘, it meets their
`imaging specifications every time without human intervention"
`(Emphasis Added)
`
`As this excerpt sets forth, the example act of pre—processing modifies digital
`content to meet certain "imaging specifications" for publication to a web site.
`This modification enables consistency in meeting the imaging needs for
`publication.
`
`For example, a web site can receive media contributions from millions of different
`users and know that every image received from every user will meet their exact
`
`Ex Parfe Reexaminafion—Examiner’s Answer
`
`Paper No. 201501 16
`
`0006
`
`0006
`
`

`

`Control Number: 90/012,987
`
`Art Unit: 3992
`
`Page 5
`
`specifications for publication every time. In contrast, if users upload images that
`fail to adhere to a web site's imaging specifications, then uploaded images can
`break web site page layouts, and cause web site pages to be slow-loading,
`unpredictable, and unreliable. Thus, the placement of images into a "specified
`form" enables uploaded images to be "made to order" for the web site.
`
`The '482 Patent's description of the act of pre-processing in preparing digital
`content to meet certain "imaging specifications" for publication is consistent
`with the plain meaning of the recited act of pre-processing in claim 38. In the
`three-part construction, the act of pre-processing places digital content into "a
`specified form in preparation for publication to one or more devices." The plain
`meaning of this uninterrupted recitation clarifies the concept of a "specified form"
`as being a particular form "in preparation for publication to one or more devices."
`
`Said another way, in being prepared for publication, the digital content has been
`placed into a particular "specified form." (Remarks, p. 8; emphasis added),
`
`As can be seen from the explanation, Patent Owner narrows the meaning
`
`of "specified form" to being that form specified by the website, wherein the
`
`website is an example of the claimed "one or more devices", but the claim
`
`simply does not say this:
`
`said one or more pre-processing parameters controlling said client device
`in a placement of said digital content into a specified form in preparation for
`publication to one or more devices that are remote from a server device and said
`client device (Emphasis added.)
`
`All this claim feature requires is that the pre-processing place the digital
`
`content "into a specified form in preparation for publication to one or more
`
`devices" --not that said specified form is based on the publication
`
`requirements of said one or more devices. The claim, as currently drafted, does
`
`not limit the term "specified form" to the publication requirements (e.g. "imaging
`
`specifications" or "imaging needs") of the claimed "one or more devices", as
`
`asserted by Patent Owner. In other words, the phrase "in preparation for
`
`Ex Parte Reexamination—Examiner’s Answer
`
`Paper No. 201501 16
`
`0007
`
`0007
`
`

`

`Control Number: 90/012,987
`
`Art Unit: 3992
`
`Page 6
`
`publication to" does not somehow limit the "specified form" to that form required
`
`by the "one or more devices" because the term on its face simply requires the
`
`specific form to be "in preparation for publication to" one or more devices rather
`
`than "in the required publication form of" the one or more devices. Examiner
`
`respectfully maintains that Patent Owner's interpretation requires reading
`
`limitations into the claims to limit the term "specified form" to mean, instead, the
`
`"specified form required by the one or more devices".
`
`Patent Owner continues by arguing that the term "specified form" is
`
`effectively read out of the claim by the alleged separation of parts Ill and IV,
`
`stating,
`
`Note that the four-part construction of the act of pre-processing has been
`erected by the Requestor to create an illogical separation between the term
`"specified form" and the clarifying recitation "in preparation for publication to one
`or more devices." This deliberate interpretational concoction renders the term
`"specified form" generic, without direction or character. The four-part
`construction effectively nullifies the claimed characteristics of the "specified form"
`in a manner inconsistent with the plain meaning of claim 38 in light of the
`specification. (Request, paragraph bridging cols. 8-9; emphasis added)
`
`Examiner respectfully disagrees. A "specified form" can "prepare" digital
`
`content for publication to one or more devices without being directed by any
`
`specific requirement of any specific one of said "one or more devices", as
`
`evidenced by the '482 patent and the general knowledge of those of skill in the
`
`art, and e.g. Creamer. In this regard, as those of skill in the art knew at the time
`
`of the '482 patent, JPEG, TIFF, and G I F, inter alia, are standardized
`
`compressed file formats whose purposes necessarily included publication, i.e.
`
`preparation of the form or format of digital content on a camera, for example, to
`
`Ex Parfe Reexaminafion—Examiner’s Answer
`
`Paper No. 201501 16
`
`0008
`
`0008
`
`

`

`Control Number: 90/012,987
`
`Art Unit: 3992
`
`Page 7
`
`make it available to the public, such as by making it viewable on computers
`
`(supra). In particular, the JPEG format was known by 1999 to be commonly used
`
`for publication of photographic images on the web because of its high
`
`compression, thereby leading to less storage requirement and faster transfer
`
`time. TIFF formats provided less compression and therefore required more
`
`storage space and longer transfer times but yielded better images. Thus, one of
`
`ordinary skill would have chosen the JPEG format for publication on the internet
`
`if he wanted the fastest transfers of the images and the least amount of storage
`
`required for the images but would have, instead, chosen TIFF if he wanted to
`
`publish images of higher quality, as those of skill in the art knew at the time of the
`
`invention. Thus, while specifying a JPEG or TIFF format pre-processes a digital
`
`image to be placed in a form "in preparation for publication to one or more
`
`devices", the selection of the format need may be directed by concerns not
`
`necessarily related to any of said "one or more devices". As such, reading the
`
`parts III and IV separately does not read the term "specified form" out of the
`
`claims, as alleged by Patent Owner.
`
`That the compression of the digital media into a standardized format, e.g.
`
`JPEG, meets the claim limitation of "placement of said digital content into a
`
`specified form in preparation for publication to one or more devices" is consistent
`
`with the '482 patent itself:
`
`The Prepare and Post tools refers to browser-side components which
`together provide the ability to submit and transport media objects over the web to
`be stored and served. Using the Prepare and Post tools, end users can submit
`images in an immediate, intuitive manner. No technical sophistication is required.
`
`Ex Parfe Reexaminafion—Examiner’s Answer
`
`Paper No. 201501 16
`
`0009
`
`0009
`
`

`

`Control Number: 90/012,987
`
`Art Unit: 3992
`
`Page 8
`
`In particular, understanding technical terms such as JPEG, resolution, pixel,
`kilobyte, transfer protocol, IP address, FTP etc., is not required, since the
`Prepare and Post tools handles all of these tasks for the user.
`(The '482 patent,
`col. 2, lines 52-57; emphasis added)
`
`Patent Owner also further admits in the Remarks that compression is an
`
`act of pre—processing to place digital content in a specified form in preparation for
`
`publication to one or more devices, stating,
`
`As this summary description of the Requestor sets forth, the act of
`compressing the digital image (i.e., an example act of pre—processing)
`modifies the digital image to meet certain "publication specifications."
`(Remarks, p. 10, 1st sentence; emphasis added)
`
`Based on the foregoing, then, even though a user may specify a form, e.g. the
`
`JPEG or TIFF format, inter alia, for the stored image on a digital camera "in preparation
`
`for publication to one or more" computers, the compression format may be chosen on
`
`the basis of merits of a particular compression of the published image and/or because
`
`the standardized formats are more likely to be recognized by computers than non-
`
`standardized formats. Thus, while choosing a compression format meets the claimed
`
`requirement of "said one or more pre—processing parameters controlling said client
`
`device [e.g. digital camera] in a placement of said digital content [e.g. image file on the
`
`camera] into a specified form [e.g. JPEG or TIFF format] in preparation for publication to
`
`one or more devices [e.g. computers] that are remote from a server device and said
`
`client device", there is simply no requirement that the selected format is a requirement
`
`dictated by the "one or more devices", as Patent Owner asserts.
`
`Consequently, there is no reason to conclude, as Patent Owner has done, that
`
`reading the parts III and IV separately reads the term "specified form" out of the claims.
`
`Ex Parfe Reexaminafion—Examiner’s Answer
`
`Paper No. 201501 16
`
`0010
`
`0010
`
`

`

`Control Number: 90/012,987
`
`Art Unit: 3992
`
`Page 9
`
`Nor is there any reason to conclude that reading portions Ill and IV separately somehow
`
`narrows the meaning of the term "specified form" to that form required by any specific
`
`one of the "one or more devices", e.g. web sites, as asserted by Patent Owner.
`
`As to Patent Owner's continued reliance on the "Prepare and Post" tool from the
`
`'482 specification (Remarks, pp. 9-10), this limits the claimed "devices" to web sites and
`
`the claimed "specified form" to the requirements of each specific web site. The claims
`
`are simply not so limited because the devices are not limited to individual web sites, as
`
`discussed above. A general computer still qualifies as the claimed "one or more
`
`devices" without also being a web site.
`
`As to Patent Owner's allegation that the Requester "recognized the act of pre-
`
`processing in the '482 Patent as modifying digital content to meet a particular
`
`publication" (Remarks, paragraph bridging pp. 9-10), Examiner respectfully disagrees
`
`because the Request indicated it was discussing "[t]he disclosed embodiment"
`
`(Request, p. 3, 1st sentence) in the '482 patent, not that it was Requester's attempt to
`
`assert either its own understanding of the meaning of any particular claim term or that
`
`understanding of a person having ordinary skill in the art. So it is unclear as to how
`
`Patent Owner arrived at the conclusion that the Requester was somehow setting forth
`
`its position on claim construction, when the facts show the Requester was simply
`
`discussing "[t]he disclosed embodiment" (id.) of the '482 patent.
`
`To any extent that Patent Owner is asserting that those of skill would limit the
`
`claim terminology, above, in the manner that Patent Owner has done (Remarks, 1]
`
`bridging pp. 9-10, and p. 10, 1st full 1]), Examiner respectfully disagrees for the same
`
`Ex Parfe Reexaminafion—Examiner’s Answer
`
`Paper No. 201501 16
`
`0011
`
`0011
`
`

`

`Control Number: 90/012,987
`
`Art Unit: 3992
`
`Page 10
`
`reasons as discussed above and furthermore notes that Patent Owner failed to provide
`
`any factual objective evidence to support this position. Accordingly, Examiner
`
`respectfully disagrees with Patent Owner's conclusion regarding its interpretation of the
`
`claim (at Remarks, p. 10, 2nd full 1]) because it reads limitations from the specification
`
`into the claims, improperly narrowing the "specified form" to "specified form required by
`
`the one or more devices".
`
`Finally, to the extent that Patent Owner is arguing that the claims somehow
`
`require a user to have knowledge of the publication requirements of the claimed "one or
`
`more devices", the argument is flawed because it is predicated on the notion that if the
`
`camera user knows that JPEG format is a requirement of computers to be able to view
`
`the image (i.e. the claimed "one or more devices"), then the user is infringing the claim,
`
`but if the same user is unaware of this requirement and still chooses the JPEG format,
`
`i.e. without knowledge of the requirements of the same computer, then the user would
`
`not be infringing the claim, even though he is carrying out exactly the same step by
`
`specifying a format for the digital images. Examiner respectfully maintains that the intent
`
`of the user cannot be the thing that distinguishes the claimed method over the art.
`
`The appellant arguments on page 6 of the Brief relating to changing the definition
`
`of “publication” to be, “the act or process of producing a consumable product, and
`
`making the produced consumable product available” is deemed not well taken and
`
`unnecessary since, as noted above, the claim language interpretations are fully met as
`
`noted by the above comments regarding, “broadest, reasonable interpretation
`
`Ex Parfe Reexaminafion—Examiner’s Answer
`
`Paper No. 201501 16
`
`0012
`
`0012
`
`

`

`Control Number: 90/012,987
`
`Art Unit: 3992
`
`Page 11
`
`consistent with the specification and limitations of the specification are not read into the
`
`claims".
`
`C.
`
`The Rejections of Claims 38, 40, 44-46 and 49 based on Creamer are proper
`
`and should be affirmed
`
`Beginning of page 13 and ending on page 22 of the Final Rejection, the various
`
`limitations as recited by Claim 38 are shown anticipated by Creamer. These pages are
`
`incorporated herein by reference. The Appellant argues that the Examiner’s rejection
`
`"is premised on an overly—broad construction of the claim language" (Brief, page 12).
`
`However, after careful review of the Appellant’s arguments on pages 13-17 of the Brief,
`
`in contradistinction to the “unsupported and contradicted by the broadest reasonable
`
`interpretation” as argued, it is deemed that each of the limitations of Claim 38, are
`
`indeed met by Creamer, and clearly set forth in the Request on pages 13-17 thereof.
`
`The broadest reasonable interpretation of the claim language is shown above herein. As
`
`noted in the Final Rejection on pages 4-22, Appellant's conclusions are based on an
`
`improper reading of specification limitations into the claims, which is contrary to giving
`
`the claims their broadest reasonable interpretation consistent with specification and
`
`limitations of the specification are not read into claims pursuant to In re Yamamoto,
`
`cited supra.
`
`Therefore, the rejection of Claim 38 deemed proper and should be affirmed.
`
`Claims 40, 44-46 and 49 Based on Creamer
`
`The Patent Owner did not separately argue the limitations of dependent Claims
`
`40, 44-46 and 49 before the Final Rejection, but then in the After Final Response, and
`
`Ex Parfe Reexaminafion—Examiner’s Answer
`
`Paper No. 201501 16
`
`0013
`
`0013
`
`

`

`Control Number: 90/012,987
`
`Art Unit: 3992
`
`Page 12
`
`in the Brief (pages 17-23), Appellant now make arguments regarding the limitations of
`
`Claims 40 and 49.
`
`Regarding Claim 40, the Requester pointed out in the Request beginning on
`
`page 17, a reasonable interpretation of the claim language recited by this claim
`
`consistent with the ruling in In re Yamamoto, supra. See especially the middle of page
`
`18 in the Request. These arguments remain adopted by the Examiner, and are
`
`deemed to answer Appellant's position on pages 17-21 of the Brief regarding arguments
`
`for allowance of this claim.
`
`Similarly, regarding the arguments by Appellant in the Brief on page 21 for Claim
`
`49, the Requester pointed out in the Request on page 20 a reasonable interpretation of
`
`the claim language recited by this claim consistent with the ruling in In re Yamamoto,
`
`supra. These arguments remain adopted by the Examiner, and are deemed to answer
`
`Appellant’s position on page 22 of the Brief urging allowance of this claim.
`
`D.
`
`The Rejection of Claims 38, 40, 44-46 and 49 Based upon Mattes are Proper
`
`and should be Affirmed
`
`Beginning on page 22 and ending on page 28 of the Final Rejection, the various
`
`limitations recited by Claim 38 are shown anticipated by Mattes (remaining incorporated
`
`herein by reference). As with Creamer above, Appellant argues that the Examiner has
`
`"premised” the rejection on an overly broad construction of the claim term “specified
`
`form in preparation for publication to one or more devices that are remote from a server
`
`device and said client device”, and, that the Examiner’s position is not supported and
`
`Ex Parfe Reexaminafion—Examiner’s Answer
`
`Paper No. 201501 16
`
`0014
`
`0014
`
`

`

`Control Number: 90/012,987
`
`Art Unit: 3992
`
`Page 13
`
`contradicted by the broadest reasonable interpretation developed using the Examiner-
`
`provided definition of the claim term "publication" (Brief, page 23).
`
`This argument was specifically addressed in the Final Rejection on page 23
`
`which points out that the Appellant’s arguments are "predicated on an improperly
`
`narrow construction of the claim feature, ‘specified form’ meaning specified form in
`
`preparation required by one or more devices" which is simply not claimed”. See the
`
`Final Rejection, pages 23-27 which in incorporated herein by reference. See also, the
`
`Request pages 21-23 and especially page 23 which discusses this claimed feature.
`
`Appellant argues that "publication" should be interpreted as "the act or process of
`
`producing a consumable product, and making the produced consumable product
`
`available...”. This as noted above, this interpretation is deemed not well taken since it
`
`is not seen necessary for reading the language of the claim on Mattes under the
`
`"reasonable interpretation" doctrine as outlined in In re Yamamoto, cited supra.
`
`Claims 40, 44-46 and 49 Based on Mattes
`
`As with Creamer above, the Appellant did not argue the limitations of these
`
`claims before the Final Rejection. However, as with Creamer, the limitations of each of
`
`these claims are deemed anticipated by Mattes as indicated by the Request on pages
`
`23-25 thereof and remain incorporated herein by reference. Thus, regarding Claim 40,
`
`under the “reasonable interpretation” doctrine as outlined by In re Yamamoto, cited
`
`supra, see in particular page 24 of the Request for answering the “not disclose
`
`‘receiving an identification of said digital content...” argument in the Brief for this claim.
`
`Ex Parfe Reexaminafion—Examiner’s Answer
`
`Paper No. 201501 16
`
`0015
`
`0015
`
`

`

`Control Number: 90/012,987
`
`Art Unit: 3992
`
`Page 14
`
`Claims 44-46 and 49 are argued as patentable over Mattes for the reasons given
`
`for patentability of Claim 38 (Brief, page 29). However, as indicated above with regard
`
`to Claim 38 not being patentable, claims 44-46 and 49 are therefore, not patentable.
`
`3.
`
`Regarding the “additional reasons” for the patentability of Claims 44-46 and 49
`
`presented on pages 29-36 of the Brief, nothing has been presented that overcomes the
`
`“reasonable interpretation" of the claim language doctrine as outlined in In re
`
`Yamamoto, cited supra. That is, the Request has presented a reasonable
`
`interpretation of the claim language under the aforesaid doctrine which has been
`
`adopted by the Examiner in the First Office Action. While Appellant's interpretation on
`
`page 29 et seq. in the Brief might be different than first presented in the Response to
`
`the First Office Action, no evidence or argument has been presented that contradicts
`
`the reasonable interpretation of the claim language for these claims as presented in the
`
`Request based on Mattes.
`
`E.
`
`Mattes in view of Creamer
`
`Claim 46 remains rejected under 35 USC 103 as obvious based on Mattes in
`
`view of Creamer. See the Request on pages 26-27 for a reasonable interpretation of
`
`how the claim language of this claim is rendered obvious by these references. The
`
`arguments presented by the Brief on page 36 alleging that Creamer fails to cure the
`
`lack of disclosure in Mattes of the “numerous limitations” recited therein are not
`
`persuasive. As indicated on pages 26-27 of the Request, the limitations are shown
`
`reasonably present in Mattes, and, that the combination of the file name of Creamer
`
`Ex Parfe Reexaminafion—Examiner’s Answer
`
`Paper No. 201501 16
`
`0016
`
`0016
`
`

`

`Control Number: 90/012,987
`
`Art Unit: 3992
`
`Page 15
`
`may be reasonably combined with Mattes is as indicated in the Request on page 26.
`
`Thus, Claim 46 remains unpatentable under 35 USC 103 by these references.
`
`Conclusion
`
`Claims 38, 40, 44-46 and 49 remain unpatentable as being anticipated by
`
`Creamer and Mattes, and further, Claim 46 remains obvious based on Mattes in view of
`
`Creamer.
`
`Reguirement to pay appeal forwarding fee.
`
`In order to avoid dismissal of the
`
`instant appeal in any application or ex parte reexamination proceeding, 37 C.F.R. §
`
`41.45 requires payment of an appeal forwarding fee within the time permitted by 37
`
`C.F.R. § 41 .45(a), unless appellant had timely paid the fee for filing a brief required by
`
`37 C.F.R. § 41.20(b) in effect on March 18, 2013.
`
`For the above reasons, it is believed that the rejections should be sustained.
`
`Respectfully submitted,
`
`/JOHN HEYMAN/
`
`Primary Examiner
`Art Unit 3992
`
`Conferees:
`
`/Hetul Patel/
`
`Primary Examiner, Art Unit 3992
`
`/Andrew J. Fischer/
`
`Supervisory Patent Reexamination Specialist, Art Unit 3992
`
`Ex Parfe Reexaminafion—Examiner’s Answer
`
`Paper No. 201501 16
`
`0017
`
`0017
`
`

`

`Control Number: 90/012,987
`
`Art Unit: 3992
`
`Page 16
`
`Ex Parte Reexamination—Examiner’s Answer
`
`Paper No. 201501 16
`
`0018
`
`0018
`
`

`

`PATENT
`
`Customer No. 3461 1
`
`Attorney Docket No. ADMI.0010001
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`) )
`
`) Control No.: 90/012,987
`3 Group Art Unit: 3992
`
`Examiner: John S. Heyman
`
`) )
`
`)
`3
`
`In re Ex Parte Reexamination of:
`
`Lisa T. Wood et al.
`U. S. Patent No. 7,765,482
`
`Issued: July 27, 2010
`
`For: WEB-BASED MEDIA SUBMISSION
`TOOL
`
`Attention: Mail Stop Appeal Brief-Patents
`Commissioner for Patents
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Commissioner:
`
`PATENT OWNER’S APPEAL BRIEF PURSUANT TO 37 C.F.R.
`
`41.37
`
`0019
`
`0019
`
`

`

`Attorney Docket No. ADMI.00 l 0001
`Control No. 90/012,987
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ............................................................................................................................ .. 1
`
`II. Real Party In Interest ............................................................................................................. .. 1
`
`III. Related Appeals, Interferences, and Trials .......................................................................... .. 1
`
`IV.
`
`Summary of Claimed Subject Matter .................................................................................. .. l
`
`V. Grounds of Rejection To Be Reviewed On Appeal .............................................................. .. 2
`
`VI. Argument ............................................................................................................................. .. 2
`
`A.
`
`Introduction ............................................................................................................... .. 2
`
`B. Claim Construction ................................................................................................... .. 3
`
`l. The Examiner’s Perspective on the Claim Language Is Overbroad .............. .. 3
`
`2. Broadest Reasonable Interpretation ............................................................... .. 5
`
`3. The Construction is Consistent with the Specification .................................. .. 6
`
`C. The Rejection of Claims 38, 40, 44-46 and 49 Based on Creamer Should Be
`Reversed .............................................................................................................. .. 12
`
`l. Creamer’s compressed JPEG file is not a “specified form in
`preparation for publication to one or more devices that are remote
`from a server device and said client device” ........................................... .. l3
`
`2. The Rejection of Claim 40 Based On Creamer Should Be Reversed ......... .. l7
`
`3. The Rejection of Claim 49 Based On Creamer Should Be Reversed ......... .. 21
`
`D. The Rejection of Claims 38, 40, 44-46 and 49 Based on Mattes Should Be
`Reversed .............................................................................................................. .. 23
`
`l. Mattes’ compressed JPEG file is not a “specified form in preparation
`for publication to one or more devices that are remote from a
`server device and said client device” ...................................................... .. 23
`
`2. The Rejection of Claim 40 Based On Mattes Should Be Reversed for
`Additional Reasons ................................................................................. .. 27
`
`3. The Rejection of Claims 44-46 and 49 Based On Mattes Should Be
`Reversed for Additional Reasons ............................................................ .. 29
`
`i
`
`0020
`
`0020
`
`

`

`Attorney Docket No. ADMI.00 l 0001
`Control No. 90/012,987
`
`a. Any Alleged Pre-Processing Is Limited to Re-Transmitted
`Images ......................................................................................... ..30
`
`b. Mattes Does Not Disclose the Features of Claim 44 ....................... .. 31
`
`E. The Obviousness Rejection of Claim 46 Based on Mattes in View of
`Creamer Should