IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Control No.: 90/012,987
`
`Confirmation No.2 7602
`
`Filing Date: September 10, 2013
`
`Re: U.S. Patent No. 7,765,482
`
`Examiner: John S. Heyman
`
`Art Unit: 3992
`
`Mail Stop: Ex Parte Reexam
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`PATENT OVVNER’S RESPONSE TO OFFICE ACTION
`
`The following remarks are submitted in response to the Office Action of January 31,
`
`2014. Reconsideration of this matter in View of these remarks is respectfully requested.
`
`Petitioner - Exhibit 1010
`Page 1 of 18
`
`

`
`IN THE CLAIMS:
`
`The following is a listing of claims 38, 40, 44-46 and 49 of U.S. Patent No. 7,765,482
`
`(“the ‘482 Patent”), which are subject to reexamination in this proceeding.
`
`38. (As Issued) A computer implemented method for pre-processing digital content in a
`
`client device for subsequent electronic distribution, comprising:
`
`a.
`
`initiating, by said client device, a transfer of digital content from said client
`
`device to a server device, said digital content including one or more of image content, video
`
`content, and audio content;
`
`b.
`
`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 being
`
`provided to said client device from a device separate from said client device, 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; and
`
`c.
`
`transmitting a message from said client device to said server device for
`
`subsequent distribution to said one or more devices that are remote from said server device
`
`and said client device, said transmitted message including said pre-processed digital content.
`
`40. (As Issued) The method of claim 38, further comprising receiving an identification of
`
`said digital content for transmission prior to said pre-processing.
`
`44. (As Issued) The method of claim 38, wherein said transmitted message includes
`
`identifying information for said digital content.
`
`45. (As Issued) The method of claim 44, wherein said identifying information is retrieved
`
`from storage in said client device.
`
`Petitioner - Exhibit 1010
`Page 2 of 18
`
`

`
`46. (As Issued) The method of Claim 45, wherein said identifying information includes a file
`name.
`
`49. (As Issued) The method of claim 45, wherein said identifying information includes user
`
`information.
`
`Petitioner - Exhibit 1010
`Page 3 of 18
`
`

`
`REMARKS
`
`INTRODUCTION
`
`A.
`
`Status of the Claims
`
`Claims 38, 40, 44-46 and 49 of the ‘482 Patent stand rejected as follows:
`
`Ground #1 - Claims 38, 40, 44-46 and 49 stand rejected under 35 U.S.C. §
`
`l02(e) as being anticipated by U.S. Patent No. 6,930,709 to Creamer et al.
`
`(“Creamer”)1
`
`Ground #2 - Claims 38, 40, 44-46 and 49 stand rejected under 35 U.S.C. §
`
`l02(e) as being anticipated by U.S. Patent No. 6,038,295 to Mattes (“Mattes”)
`
`Ground #3 - Claim 46 stands rejected under 35 U.S.C. § 103(a) as being
`
`unpatentable over Mattes in View of Creamer
`
`B.
`
`Statement Regarding Concurrent Proceedings
`
`The ‘482 Patent is the subject of the litigation Summit 6 LLC v. Samszmg Electronics
`
`Co., et al.,2 Case No. 2013-1648, -1651, currently pending in the United States Court of
`
`Appeals for the Federal Circuit. This appeal is from the United States District Court for the
`
`Northern District of Texas in Case No. ll-CV-0367, which entered a judgment in favor of
`
`Summit 6, LLC on all of its claims.
`
`The ‘482 Patent is also the subject of the litigation Summit 6 LLC v. HTC C0rp., er
`
`al.,3 Case No. 7: l4-CV-00014, currently pending in the United States District Court for the
`
`Northern District of Texas.
`
`1 Contrary to the assertion at page 2 of the Attachment to the Request for Ex-Parte Examination,
`Creamer was considered by the Examiner on February 2, 2009. Creamer is also listed on page 2 of
`the ‘482 Patent.
`
`2 Also at issue in the Summit 6 litigation is U.S. Patent No. 6,895,557.
`3 Also at issue in the Summit 6 litigation is U.S. Patent No. 8,612,515.
`
`-4-
`
`Petitioner - Exhibit 1010
`Page 4 of 18
`
`

`
`C.
`
`Information Disclosure Statements
`
`In accordance with the duty of disclosure, information disclosure statements (IDSS)
`
`are being submitted concurrently with this response either in electronic or paper form. It is
`
`respectfully requested that the cited references be considered by the Examiner. The
`
`submission of these lDSs is not to be construed as a representation that a search has been
`
`made in the subject reexamination and is not to be construed as an admission that the
`
`information cited in this statement is material to patentability. The filing of these lDSs shall
`
`not be construed to be an admission that any patent, publication or other information referred
`
`to therein is “prior art” for this invention unless specifically designated as such.
`
`Petitioner - Exhibit 1010
`Page 5 of 18
`
`

`
`CLAIM INTERPRETATION
`
`Interpretation of claim 38’s recitation “said one or more pre-processing
`A.
`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”
`
`The Office Action interprets the pre-processing element of claim 38 using a four-part
`
`construction as follows:4
`
`prc-processing said digital content at said
`client device in accordance with one or more
`
`pre-processing parameters,
`
`said one or more pre-processing parameters
`being provided to said client device from a
`device separate from said client device,
`
`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;
`
`Part I recites that pre-processing of digital content occurs at the client device. This
`
`pre-processing at the client device modifies the digital content in accordance With one or
`
`more pre-processing parameters. Part 11 further recites that the one or more pre-processing
`
`parameters are provided to the client device from a device separate from the client device.
`
`Part III and part IV describe the characteristics of the one or more prc-processing parameters.
`
`The separation of part I from part 11 appears to be based on the existence of a first
`
`comma, while the separation of part II from part III appears to be based on the existence of a
`
`second comma. The separation of part III from part IV, on the other hand, does not appear to
`
`be based on existing punctuation. The Requestor has not set forth any justification for
`
`erecting a construction that separates part III from part IV. Thus, it can be said that the
`
`Requestor’s construction is premised on the effective inclusion of an additional comma to
`
`alter the plain-language interpretation of claim 38.
`
`4 See pages 14-15 of thc Attachment to Request for Ex-Parte Rccxamination.
`
`-6-
`
`Petitioner - Exhibit 1010
`Page 6 of 18
`
`

`
`The four—part construction produces an incorrect and unj ustified interpretation of the
`
`recited pre-processing parameters of claim 38. The pre-processing parameters control the act
`
`of pre-processing in a placement of digital content into a “specified form.” The four-part
`
`construction disconnects part III from part IV, thereby eliminating the role of part IV in
`
`clarifying the “specified form” recited at the end of part III. As issued, part III and part IV of
`
`the pre-processing element should be read together, and hence, interpreted together.
`
`The plain-meaning interpretation consistent with the specification necessitates a
`
`construction that combines part III and part IV into a single recitation for analysis. For the
`
`sake of argument, a three-part construction, which properly combines part III and part IV,
`
`organizes the pre-processing element as follows:
`
`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
`being provided to said client device from a
`device separate from said client device,
`
`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;
`
`Part A and part B in the three-part construction equate to part I and part II,
`
`respectively, in the four-part construction. Part C in the three-part construction, on the other
`
`hand, equates to a continuous, uninterrupted reading of part III and part IV in the four-part
`
`construction.
`
`Part C in the three-part construction further clarifies the operation of the one or more
`
`pre-processing parameters in controlling the client device during the act of pre-processing.
`
`When read in uninterrupted fashion, the act ofpre—processing uses the one or more pre-
`
`processing parameters “in a placement of said digital content into a specified form in
`
`preparation for publication to one or more devices.”
`
`Petitioner - Exhibit 1010
`Page 7 of 18
`
`

`
`The act of pre-processing modifies the digital content and places the digital content
`
`into a “specified form.” That “specified form” represents not just any fonn, but 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:
`
`. d) to
`.
`“The benefits of the Prepare and Post tool are .
`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
`
`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.”
`
`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
`
`Petitioner - Exhibit 1010
`Page 8 of 18
`
`

`
`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.
`
`The example embodiment described in the ‘482 Patent refers to a Prepare and PostTM
`
`tool. See col. 2, line 44 to col. 5, line 22 of the ‘482 Patent. The descriptive name Prepare
`
`and PostTM states that the tool prepares digital content for mg on a web site. Col. 5, lines
`
`3-4 of the ‘482 Patent particularly describes the preparation process of the Prepare and
`
`PostTM tool as follows:
`
`9
`“This transparency allows the end user to submit media to the
`Prepare and Post
`tools
`‘as
`is,
`since
`the
`tools will
`automatically prepare it
`to meet
`the requirements of the
`second location.” (Emphasis Added)
`
`As this excerpt illustrates, the example Prepare and PostTM tool prepares digital content to
`
`meet certain specifications for posting on a web site. The description in the ‘482 Patent is
`
`therefore consistent with the plain meaning of claim 38 in that the act of pre-processing
`
`modifies digital content “in preparation for publication to one or more devices.” This
`
`modification results in the placement of the digital content into a particular “specified form.”
`
`Further, those of ordinary skill in the art recognize this plain—meaning interpretation
`
`of the act of pre-processing in claim 38. At page 3 of the Attachment to the Request for Ex-
`
`Parte Reexamination, the Requestor recognized the act of pre-processing in the ‘482 Patent
`
`as modifying digital content to meet a particular publication specification as follows:
`
`The user can then drag and drop a “media object” i.c., a digital
`image, into the media object identifier. The user’s computer
`will then execute the code in the Active X or JAVA applet to
`pre—process
`the image,
`for example, by compressing the
`image to fit the publication specifications of the web site.
`(Emphasis Added)
`
`Petitioner - Exhibit 1010
`Page 9 of 18
`
`

`
`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.” The Requestor did Q consider the result of the act of pre-
`
`processing as being generic, without direction or character. Rather, with respect to the
`
`cxamplc cmbodimcnt, thc act of prc-processing particularly modificd the digital image “to fit
`
`the publication specifications of the web site.”
`
`The Requestor’s summary statement of the invention reflects the understanding by
`
`one of ordinary skill in the relevant art based on a review of the available intrinsic evidence.
`
`Said another way, after reviewing the available intrinsic evidence of the ‘482 Patent, those of
`
`ordinary of skill in the art concluded that the example act of pre-processing serves to place a
`
`digital image into a particular form in order “to fit the publication specifications.”
`
`Based on the foregoing, the recitation “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” should be interpreted as a modification of
`
`digital content through an act of pre-processing, wherein the pre-processing parameters
`
`control the act of pre—preprocessing in placing digital content into a particular form that
`
`meets certain specifications for publication to one or more devices.
`
`Does the interpretation of claim 38’s recitation “said one or more pre-
`B.
`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” include a statement of intended use?
`
`i. No, it does not include a statement of intended use.
`
`1. The recitation “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” describes the characteristics of the pre-
`processing parameters that control the act of pre-processing
`
`As discussed in Section Il.A, a three-part construction of the pre-processing element
`
`recites “said one or more pre-processing parameters controlling the act of pre-processing in a
`
`Petitioner - Exhibit 1010
`Page 10 of 18
`
`

`
`placement of said digital content into a specified form in preparation for publication to one or
`
`more devices.”
`
`The pre-processing parameters control the act of pre-processing. The recitation in
`
`part C of the three-part construction describes particular characteristics of those pre-
`
`processing parameters. These particular characteristics define the scope of the pre-
`
`processing parameters themselves, not the scope of potential uses of digital content that has
`
`been modified using the pre-processing parameters. In other words, the recitation in part C
`
`of the three-part construction does not merely relate to the potential downstream use of the
`
`modified digital content, but rather to the characteristics of those pre-processing parameters
`
`that control the act of pre-processing in the claimed method.
`
`Based on at least the foregoing, the recitation “said one or more pre-processing
`
`parameters controlling the act of pre-processing in a placement of said digital content into a
`
`specified form in preparation for publication to one or more devices” does not include a
`
`statement of intended use.
`
`The recitation “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” is a noted characteristic of the claimed
`invention
`
`The recitation “said one or more pre-processing parameters controlling the act of pre-
`
`processing in a placement of said digital content into a specified form in preparation for
`
`publication to one or more devices” is not a statement of intended use for the invention, but is
`
`a characteristic of the claimed invention. See Vizio Inc. v. Int’! Trade Comm ’n, 605 F.3d
`
`1330, 1340 (Fed. Cir. 2010) (ln interpreting the claim term to “form a channel map suitable
`
`for use in identifying,” the court concluded that more than the mere receipt of channel map
`
`information is required, and that “the channel map information must also be actually capable
`
`of being used for identifying the desired program.”). See also Jansen v. Rexall Sundown,
`
`Inc., 342 F.3d 1329, 1333 (Fed. Cir. 2003) (In a claim directed to a method for treating
`
`anemia in humans, the court concluded that the claimed administration of combined vitamin
`
`B12 and folic acid “to a human in need thereof’ is not merely a statement of effect that may
`
`Petitioner - Exhibit 1010
`Page 11 of 18
`
`

`
`or may not be desired or appreciated, but rather is a statement of the intentional purpose for
`
`which the method must be performed).
`
`The pre—processing of digital content in preparation for publication to one or more
`
`devices characterizes the method of claim 38. In the example Prepare and PostTM tool
`
`described in the specification, the descriptive name Prepare and PostTM states that the tool
`
`prepares digital content for gig to a Web site. This example preparation for mg
`
`enables the client device to meet the “imaging specifications” of a web site consistently. See
`
`col. 3, lines 4-6 of the ‘482 Patent. The Requestor further acknowledges these characteristics
`
`of claim 38 by noting that an example act of pre—processing operates by “compressing the
`
`image to fit the publication specifications of the web site.” See page 3 of the Attachment to
`
`the Request for Ex—Parte Reexamination.
`
`As thus indicated, the recitation “said one or more pre—processing parameters
`
`controlling the act of pre—processing in a placement of said digital content into a specified
`
`form in preparation for publication to one or more devices” is a noted characteristic of the
`
`claimed invention.
`
`Based on at least the foregoing, the recitation “said one or more pre—processing
`
`parameters controlling the act of pre—processing in a placement of said digital content into a
`
`specified form in preparation for publication to one or more devices” does not include a
`
`statement of intended use.
`
`Petitioner - Exhibit 1010
`Page 12 of 18
`
`

`
`lll.
`
`PATENTABILITY OF CLAIMS OVER CITED ART
`
`A.
`
`Creamer Does Not Anticipate Claims 38, 40, 44-46 and 49 (Ground #1)
`
`Claims 38, 40, 44-46 and 49 have been rejected under 35 U.S.C. § l02(e) as being
`
`anticipated by Creamer. The rejection of the claims is respectfully traversed for at least the
`
`following reasons.
`
`i. Creamer does not disclose “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”
`
`As analyzed in Section ILA, the recitation “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” should be interpreted as
`
`a modification of digital content through an act of pre-processing, wherein the pre-processing
`
`parameters control the act of pre—preprocessing in placing digital content into a particular
`
`form that meets certain specifications for publication to one or more devices.
`
`The Office Action asserts that col. 12, lines 5-17 of Creamer discloses a
`
`“publication.” This portion of Creamer describes the storage of images in a shell account
`
`from an Intemet/Intranet Camera and the subsequent access of images stored in the shell
`
`account by a personal computer as follows:
`
`the user directory stores compressed image files
`Notably,
`referenced by, or linked to, the Web page and viewable by any
`remote user using an accessing device, eg,
`a personal
`computer 310 equipped with a Web browser linked to the
`lntemet 308. Once the camera l
`is logged in to the local shell
`account 306, the camera 1 may upload (e.g., JPEG) image files
`from the GP memory 228, according to controlling file
`attributes and destination information (described below) to the
`local user directory via the provided file transfer (e.g., FTP)
`application. Any Internet 308 user may then access and view
`the uploaded (e.g., JPEG) images from the user directory of
`the shell account via an accessing device, eg, a personal
`computer 310 and browser. (Emphasis Added)
`
`Petitioner - Exhibit 1010
`Page 13 of 18
`
`

`
`Creamer discloses that a personal computer 3 10 (see FIG. 4A of Creamer reproduced
`
`below) can access and view an image stored in the user directory of a shell account 306, 314.
`
`A shell account appears to represent a file repository for the storage of a single user’s files.
`
`,-w-‘fMM‘~V(‘.WN\.
`
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`
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`
`T
`
`.-._
`3R5ifi‘:1*‘!?§i§'R
`it
`
`Creamer appears to focus on the process of uploading images from the
`
`Intemet/Intranet camera 1 for storage in a shell account 306, 314. Creamer’s only reference
`
`to the access of images stored in a user’s shell account is in the single paragraph at col. 12,
`
`lines 5-17 of Creamer (reproduced above).
`
`The Office Action has not identified where Creamer describes or suggests (l) a
`
`certain specification for publication to a personal computer 310, and (2) one or more pre-
`
`processing parameters provided to the client device for use in the act of pre-processing to
`
`modify digital content to meet a certain specification for publication to a personal computer
`
`310.
`
`Moreover, the Office Action has not identified a particular publication need met by
`
`the asserted pre-processing of Creamer. Creamer appears silent as to the specifications
`
`required for accessing images in a user’s shell account.
`
`Creamer’s apparent focus is on a solution for a single user to configure their own
`
`Intemet/Intranet camera for the storage of image files into their own shell account. The user
`
`configures the settings on his own Intemet/Intranet camera to facilitate an upload of image
`
`files into his shell account for storage. The subsequent selection of a file for later access
`
`would be similar to the selection and opening ofa file from any other file directory. In this
`
`context, the access of an image file stored in a user’s shell account can be characterized as a
`
`Petitioner - Exhibit 1010
`Page 14 of 18
`
`

`
`type of insignificant post—solution activity to the accomplishment of Creamer in enabling a
`
`transfer of an image file from an Internet/Intranet camera to a shell account for storage.
`
`Claim 38 recites “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.” The Office Action has not identified where Creamer
`
`discloses or suggests certain specifications that are purposed for the publication of digital
`
`content to one or more devices. Moreover, the Office Action has not identified where
`
`Creamer discloses or suggests the provision of pre—processing parameters to a client device
`
`that are configured to control the act of pre—processing to meet certain specifications for
`
`publication to one or more devices.
`
`For at least one or more of the reasons stated above, the rejection of claim 38 as being
`
`anticipated by Creamer is improper. Claims 40, 44-46 and 49 are dependent on claim 38 and
`
`incorporate the features of that claim. Accordingly, notwithstanding the details of the
`
`additional features recited in claims 40, 44-46 and 49, the rejection of claims 40, 44-46 and
`
`49 is improper for at least the reasons noted above with respect to claim 38.
`
`Patent Owner respectfully requests that the rejection of claims 38, 40, 44-46 and 49
`
`under 35 U.S.C. § l02(e) as being anticipated by Creamer be withdrawn.
`
`B.
`
`Mattes Does Not Anticipate Claims 38, 40, 44-46 and 49 (Ground #2)
`
`Claims 38, 40, 44-46 and 49 have been rejected under 35 U.S.C. § l02(e) as being
`
`anticipated by Mattcs. Thc rejection of the claims is rcspcctfully travcrscd for at lcast the
`
`following reasons.
`
`i. Mattes does not disclose “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”
`
`As analyzed in Section ILA, the recitation “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” should be interpreted as
`
`Petitioner - Exhibit 1010
`Page 15 of 18
`
`

`
`a modification of digital content through an act of pre-processing, wherein the pre-processing
`
`parameters control the act of pre-preprocessing in placing digital content into a particular
`
`form that meets certain specifications for publication to one or more devices.
`
`The Office Action asserts that a single sentence at col. 8, lines 32-35 of Mattes
`
`discloses a “publication.” This single sentence describes a potential use of images that have
`
`been archived using classification information as follows:
`
`It is a particular advantage to utilize the present invention in
`conjunction with the connection to the Internet. For example,
`the images may be automatically stored or archived on the
`basis of the classification information OM in either a public or
`private mailbox on the lntemet. The recorded images may be
`forwarded to a server via the Internet or may be directly
`displayed on a page of the World Wide Web. (Emphasis
`Added)
`
`See col. 8, lines 28-35 of Mattes.
`
`Mattes appears to focus on the archiving and storage of images depending upon
`
`classification information. See Abstract of Mattes. As noted, Mattes’ only reference to the
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`display of images via a page of the World Wide Web is in the single sentence in the excerpt
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`reproduced above.
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`The Office Action has not identified where Mattes describes or suggests (1) a certain
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`specification for publication via a page of the World Wide Web, and (2) that one or more
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`pre-processing parameters have been provided to the client device for use in the act of pre-
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`processing to modify digital content to meet that certain specification for publication via a
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`page of the World Wide Web.
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`Moreover, the Office Action has not identified a particular publication need met by
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`the asserted pre-processing of Mattes. Mattes appears silent as to the specifications needed
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`for the display of images via a page of the World Wide Web. Mattes’ apparent focus is on a
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`solution for archiving and storage of image files depending on classification information. In
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`this context, the potential subsequent display of images via a page of the World Wide Web
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`can be characterized as a type of insignificant post—solution activity to the accomplishment of
`
`Petitioner - Exhibit 1010
`Page 16 of 18
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`

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`Mattes in enabling the archive and storage of images depending upon classification
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`information.
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`Claim 38 recites an act of pre—processing where modified digital content is placed
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`into a “specified form in preparation for publication to one or more devices.” The Office
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`Action has not identified where Mattes discloses or suggests a certain specification that is
`
`purposed for the publication of digital content to one or more devices. Moreover, the Office
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`action has not identified where Mattes discloses or suggests the provision of pre—processing
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`parameters to a client device that are purposed to control the act of pre—processing to meet a
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`certain specification for publication to one or more devices.
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`For at least one or more of the reasons stated above, the rejection of claim 38 as being
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`anticipated by Mattes is improper. Claims 40, 44-46 and 49 are dependent on claim 38 and
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`incorporate the features of that claim. Accordingly, notwithstanding the details of the
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`additional features recited in claims 40, 44-46 and 49, the rejection of claims 40, 44-46 and
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`49 is improper for at least the reasons noted above with respect to claim 38.
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`Patent Owner respectfully requests that the rejection of claims 38, 40, 44-46 and 49
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`under 35 U.S.C. § 102(e) as being anticipated by Mattes be withdrawn.
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`C.
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`Claim 46 is Patentable over Mattes in View of Creamer (Ground #3)
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`Claim 46 is dependent on claim 38 and incorporates the features of that claim. The
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`rejection of claim 46 under 35 U.S.C. § 103(a) is premised on the rejection of claim 38 as
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`detailed in Section III.B. Accordingly, notwithstanding the details of the additional features
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`recited in claim 46, the rejection of claim 46 is improper for at least the reasons noted above
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`with respect to claim 38.
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`Petitioner - Exhibit 1010
`Page 17 of 18
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`

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`IV.
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`CONCLUSION
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`For at least the foregoing reasons, claims 38, 40, 44-46 and 49 of the ‘482 Patent
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`remain patentable over the cited references. Consequently, all of the present rejections
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`should be Withdrawn and thc patcntability of claims 38, 40, 44-46 and 49 confirmed. Plcasc
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`charge any deficiency in the fees filed to Deposit Account No. 50-3942.
`
`Dated: March 31 2014
`
`:
`
`Law Office of Duane S. Kobayashi
`P.O. Box 4160
`Leesburg, VA 20177
`Tel: 703-437-8000
`Fax: 703-935-0276
`
`Respectfully submitted,
`
`/duane s. l<:obayashi/
`Duane S. Kobayashi
`Reg. No. 41122
`Attorney for Patent Owner
`
`Petitioner - Exhibit 1010
`Page 18 of 18