UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICATION NO,
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`FILING DATE
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`FIRST NAMED INVENTOR
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia22313·1450
`www.uspto.gov
`
`I ATTORNEY DOCKET NO. I CONFIRMATION NO.
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`09/629,577
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`07/31/2000
`
`Fred B. Holt
`
`030048003US
`
`4317
`
`11/05/2003
`
`25096
`7590
`·PERKINS COlE LLP
`PATENT-SEA
`P.O. BOX 1247
`SEATTLE, WA 98111-1247
`
`EXAMINER
`
`LAZARO, DAVID R
`
`ART UNIT'
`
`PAPER NUMBER
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`2155
`
`DATE MAILED: ll/05/2003
`
`Please fmd below and/or attached an Office communication concerning this application or proceeding.
`
`PT0-90C (Rev. 10/03)
`
`ill
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`ACTIVISION, EA, TAKE-TWO, 2K, ROCKSTAR, Ex. 1024, p. 1 of 12
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`(~
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`Office Action Summary
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`Application No .
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`09/629,577
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`Examiner
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`J1h
`··~ Applicant(s)
`
`HOLTET AL.
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`Art Unit
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`c:;:.., j
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`7
`
`David Lazaro
`2155
`-· The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;J. MONTH(S) FROM
`THE MAILING DATE OF THIS COMMUNICATION.
`- E>ctensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however. may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.
`-
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1. 704{b ).
`Status
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`1)1:8] Responsive to communication(s) filed on 19 June 2002.
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`2a)0
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`This action is FINAL.
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`2b)1:8] This action is non-final.
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`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`Disposition of Claims
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`4)1:8] Claim(s) 1-30 is/are pending in the application.
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`4a) Of the above claim(s) 1-8 is/arewith9rawn from consideration.
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`5)0 Claim(s) __ is/are allowed.
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`6)1:8] Claim(s) 9-30 is/are rejected.
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`7)0 Claim(s) __ is/are objected to.
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`8)0 Claim(s) __ are subject to restriction and/or election requirement.
`Application Papers
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`9)1:8] The specification is objected to by the Examiner.
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`10)1:8] The drawing(s) filed on __ is/are: a)[8J accepted or b)O objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`11 )0 The proposed drawing correction filed on __ is: a)O approved b )0 disapproved by the Examiner.
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`If approved, corrected drawings are required in reply to this Office action.
`12)0 The oath or declaration is objected to by the Examiner.
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`Priority under 35 U.S.C. §§ 119 and 120
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`13)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All b)O Some .. c)O None of:
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`1.0 Certified copies of the priority documents-have been received.
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`2.0 Certified copies of the priority documents hav\ been received in Application No. __ .
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`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`14)0 Acknowledgment is made of a claim for domestic priority under 35 U.S. C.§ 119(e) (to a provisional application).
`
`a) 0 The translation of the foreign language provisional application has been received.
`15)0 Acknowledgment is made of a claim for domestic priority under 35 U.S. C. §§ 120 and/or 121.
`Attachment(s)
`
`1) 1:8] Notice of References Cited (PT0-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`3) 1:8] Information Disclosure Statement(s} (PT0-1449) Paper No(s) 1..§.
`
`Interview Summary (PT0-413) Paper No(s). __ .
`4) 0
`5) 0 Notice of Informal Patent Application (PT0-152)
`6) 0 Other:
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`J.S. Patent and Trademark Office
`"TOL-326 (Rev. 04-01)
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`Office Action Summary
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`Part of Paper No. 6
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`ACTIVISION, EA, TAKE-TWO, 2K, ROCKSTAR, Ex. 1024, p. 2 of 12
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`Application/Control Number: 09/629,577
`Art Unit: 2155
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`Page2
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`DETAILED ACTION
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`Election/Restrictions
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`1.
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`Restriction to one of the following inventions is required under 35 U.S.C. 121:
`
`I.
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`Claims 1-8, drawn to a method for determining a diameter of a broadcast
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`channel, classified in class 709, subclass 238.
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`II.
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`Claims 9-30, drawn to a method and computer-readable medium for
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`disconnecting a first computer from a second computer with the first and
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`second computer being connected to a broadcast channel, classified in
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`class 709, subclass 227.
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`2.
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`3.
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`The inventions are distinct, each from the other because of the following reasons:
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`Inventions I and II are related as subcombinations disclosed as usable together
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`in a single combination. The subcombinations are distinct from each other if they are
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`shown to be separately usable. In the instant case, invention I has separate utility such
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`as determining the broadcast channel diameter. Invention II has separate utility such as
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`disconnecting a first computer from a second computer when they are connected to a
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`broadcast channel. See MPEP § 806.05(d).
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`4.
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`Because these inventions are distinct for the reasons given above and have
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`acquired a separate status in the art as shown by their different classification, restriction
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`for examination purposes as indicated is proper.
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`ACTIVISION, EA, TAKE-TWO, 2K, ROCKSTAR, Ex. 1024, p. 3 of 12
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`Application/Control Number: 09/629,577
`Art Unit: 2155
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`Page3
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`5.
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`During a telephone conversation with Chun Ng of Perkins Coie LLP on 10/22/03
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`a provisional election was made without traverse to prosecute the invention of Group II,
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`claims 9-30. Affirmation of this election must be made by applicant in replying to this
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`Office action. Claims 1-8 are withdrawn from further consideration by the examiner, 37
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`CFR 1.142(b ), as being drawn to a non-elected invention.
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`6.
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`Applicant is reminded that upon the cancellation of claims to a non-elected
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`invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one
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`or more of the currently named inventors is no longer an inventor of at least one claim
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`remaining in the application. Any amendment of inventorship must be accompanied by
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`a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
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`Papers Received
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`7.
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`Oath/Declaration, basic filing fee, additional claim fee and late filing fee/oath or
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`declaration surcharge were received on 11/06/00.
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`Information Disclosure Statement
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`IDS received on 4/23/02 has been considered by the examiner.
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`Supplemental IDS received on 6/19/02 has been considered by the examiner.
`
`8.
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`9.
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`Specification
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`10.
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`This application does not contain an abstract of the disclosure as required by 37
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`CFR 1.72(b). An abstract on a separate sheet is required.
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`ACTIVISION, EA, TAKE-TWO, 2K, ROCKSTAR, Ex. 1024, p. 4 of 12
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`Application/Control Number: 09/629,577
`Art Unit: 2155
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`Page4
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`Claim Rejections - 35 USC § 103
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`10.
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`The following is a quotation of 35 U.S.C. 1 03(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`11.
`
`Claims 9, 10, 12, 15-18,22-25 and 28-30 are rejected under 35 U.S.C. 103(a) as
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`being unpatentable over U.S. Patent 6,618,752 Moore et al. (Moore) in view of U.S.
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`Patent 6,353,599 by Bi et al (Bi).
`
`12. With respect to Claim 9, Moore teaches a method of disconnecting a first
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`computer from a second computer, the first computer being connected to a broadcast
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`channel, the method comprising when the first computer decides to disconnect from the
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`second computer, the first computer sends a disconnect message to the second
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`computer (Col. 1 0 lines 35-40). Moore does not disclose the second computer
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`broadcasting a connection port search message to find a third computer to which it can
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`~
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`connect. However it is well known in the art that a connection poJ1 search mes~age can
`n ·• )
`/'f- 20 J o4
`~, ~ • Lhc<..--
`be broadcast to find a computer to connect to as shown by Bi \6iaim 13 lines 48-51 ). It
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`would have been obvious to one of ordinary skill in the art at the time the invention was
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`made to take the method disclosed by Moore and modify as indicated by Bi with the
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`step of when the second computer receives the disconnect message from the first
`
`computer, the second computer broadcasts a connection port search message to find a
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`third computer to which it can connect. One would be motivated to do this as it provides
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`ACTIVISION, EA, TAKE-TWO, 2K, ROCKSTAR, Ex. 1024, p. 5 of 12
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`an easy way to establish communications without previously knowing the specific port
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`address (Col. 2 lines 34-37).
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`13. With respect to Claim 1 0, Moore in view of Bi further teaches the second
`
`computer receives a port connection message indicating the third computer is proposing
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`that the third computer and the second computer connect (Col. 2 lines 51-55 of Bi).
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`14. With respect to Claim 12, Moore in view of Bi further teaches the broadcast
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`channel is implemented using the Internet (Col. 41ines 13-14 of Moore).
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`15. With respect to Claim 15, Moore in view of Bi further teaches the first computer
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`and second computer are connect via a TCP/IP connection (Col. 4 lines 67 to Col. 5 line
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`2 of Moore).
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`16. With respect to Claim 16, Moore teaches a method for disconnecting a first
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`computer from a second computer comprising connecting the first computer to a second
`
`computer, attempting to send a message from the first computer to the second
`
`computer and connecting to another computer when the communications fail (Col. 10
`
`lines 48-52). Moore does not explicitly disclose broadcasting a connection port search
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`message. However it is well known in the art that a connection port search message
`
`can be broadcast to find a comRuter to connect to as~wn by Bi (Claim 131ines 48-
`~ vM.:J CAt( ' ':2 , 1U-1t.:s. N .-~ ~ f3 /I' ~ ,,
`51 (It would have been obvious to one of ordinary skill in the art at the time the
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`invention was made to take the method disclosed by Moore and modify as indicated by
`
`Bi with the step of when the attempt to send the message is unsuccessful, broadcasting
`
`a connection port search message indicating that the first computer needs a connection.
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`One would be motivated to do this as it provides an easy way to establish
`
`ACTIVISION, EA, TAKE-TWO, 2K, ROCKSTAR, Ex. 1024, p. 6 of 12
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`Page 6
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`communications without previously knowing the specific port address (Col. 2 lines 34-
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`37).
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`17. With respect to Claim 17, Moore in view of Bi further teaches when a third
`
`computer receives the connection port search message and the third computer also
`
`needs a connection, sending a message from the third computer to the first computer
`
`proposing that the first computer and third computer connect (Col. 2 lines 51-55 of Bi).
`
`18. With respect to Claim 18, Moore in view of Bi further teaches the first computer
`
`receives the message proposing that the first computer and third computer connect,
`
`sending from the first computer to the third computer a message indicating that the first
`
`computer accepts the proposal to connect to the first computer to the third computer
`
`(Col. 10 lines 42-47 of Moore).
`
`19. With respect to Claim 22, Moore in view of Bi further teaches the broadcasting
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`includes sending the message to each computer to which the first computer is
`
`connected (Col. 10 lines 4-7 of Moore).
`
`20. With respect to Claim 23, Moore teaches a computer readable medium
`
`containing instructions for controlling disconnecting of a computer from another
`
`computer, the computer and the other computer being connected to a broadcast
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`channel comprising a component that when the computer decides to disconnect from
`
`the other computer, the computer sends a disconnect message to the other computer
`
`(Col. 10 lines 35-40). Moore does not explicitly disclose a component that broadcasts a
`
`connection port search message to find a computer to which it can connect. However it
`
`is well known in the art that a connection port search message can be broadcast to find
`
`ACTIVISION, EA, TAKE-TWO, 2K, ROCKSTAR, Ex. 1024, p. 7 of 12
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`Application/Control Number: 09/629,577
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`Page?
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`a computer to connect to as shown by Bi (Claim 131ines 48-51 ). It would have been
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`obvious to one of ordinary skill in the art at the time the invention was made to take the
`
`computer-readable media containing instructions disclosed by Moore and modify it as
`
`indicated by Bi with a component when the computer receives a disconnect message
`
`from another computer, the computer broadcasts a connection port search message to
`
`find a computer to which it can connect. One would be motivated to do this as it
`
`provides an easy way to establish communications without previously knowing the
`
`specific port address (Col. 2 lines 34-37).
`
`21. With respect to Claim 24, Moore in view of Bi further teaches a component that,
`
`when the computer receives a connection port search message and the computer
`
`needs to connect to another computer, sends to the computer that sent the connection
`
`port search message a port connection message indicating that the computer is
`
`proposing that the computer that sent the connection port search message connect to
`
`the computer (Col. 2 lines 51-55 or Bi).
`
`22. With respect to Claim 25, Moore in view of Bi further teaches a component that,
`
`when the computer receives a port connection message, connecting to the computer
`
`that sent the port connection message (Col. 10 lines 4-7 of Moore).
`
`23. With respect to Claim 28, Moore in view of Bi further teaches the computers are
`
`connected via a TCP/IP connection (Col. 4 lines 67 to Col. 5 line 2 of Moore).
`
`24. With respect to Claim 29, Moore in view of Bi further teaches the computers that
`
`are connected to the broadcast channel are peers (Col. 3 line 52 to Col. 4 line 3 of
`
`Moore).
`
`ACTIVISION, EA, TAKE-TWO, 2K, ROCKSTAR, Ex. 1024, p. 8 of 12
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`Application/Control Number: 09/629,577
`Art Unit: 2155
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`Page8
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`25. With respect to Claim 30, Moore in view of Bi further teaches the broadcast
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`channel is implemented using the Internet (Col. 4 lines 13-14 of Moore).
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`26. Claims 13, 14, 19-21, 26 and 27 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Moore in view of Bias applied to claims 9, 16 and 23 above, and
`
`further in view of "Graph Theory with Applications" by Bondy et al. (Bondy).
`
`27. With respect to Claim 13, Moore in view of Bi teaches all the limitations of Claim
`
`9 but does not explicitly disclose each computer connected to the broadcast channel
`
`network is connected to at least three other computers. However it is well known in the
`
`art that a communications network can be designed to be more reliable by increasing
`
`the connectivity and edge connectivity as shown in Bondy (Page 47-50 section 3.3). It
`
`would have been obvious to one of ordinary skill in the art at the time the invention was
`
`made to take the method disclosed by Moore in view of Bi and modify it as disclosed by
`
`Bondy with each computer connected to the broadcast channel is connected to at least
`
`three other computers. The larger amount of connectivity and edge connectivity, the
`
`more reliable the system becomes. Therefore the amount in terms of a reliable system
`
`is arbitrary. One would be motivated to have this as it provides reliability in a
`
`communications network where the failure of communications link can jeopardize
`
`communications of the system (Page 47-50 section 3.3).
`
`28. With respect to Claim 14, Moore in view of Bi and in further view of Bondy further
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`teach the computers and their connections form an m-regular graph for the same
`
`reason and motivation as described above in Claim 13.
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`ACTIVISION, EA, TAKE-TWO, 2K, ROCKSTAR, Ex. 1024, p. 9 of 12
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`Application/Control Number: 09/629,577
`Art Unit: 2155
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`~ c[JI
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`Page9
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`29. With respect to Claim 19, Moore in view of Bi teaches all the limitations of Claim
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`16 but does not explicitly disclose each computer connected to the broadcast channel
`
`network is connected to at least three other computers. However it is well known in the
`
`art that a communications network can be designed to be more reliable by increasing
`
`the connectivity and edge connectivity as shown in Bondy (Page 47-50 section 3.3). It
`
`would have been obvious to one of ordinary skill in the art at the time the invention was
`
`made to take the method disclosed by Moore in view of Bi and modify it as disclosed by
`
`Bondy with each computer connected to the broadcast channel is connected to at least
`
`three other computers. The larger amount of connectivity and edge connectivity, the
`
`more reliable the system becomes. Therefore the amount in terms of a reliable system
`
`is arbitrary. One would be motivated to have this as it provides reliability in a
`
`communications network where the failure of communications link can jeopardize
`
`communications of the system (Page 47-50 section 3.3).
`
`30. With respect to Claim 20, Moore in view of Bi and in further view of Bondy further
`
`teach the computers and their connections form an m-regular graph for the same
`
`reason and motivation as described above in Claim 19.
`
`31. With respect to Claim 21, Moore in view of Bi and in further view of Bondy further
`
`teach the computers and their connections form an m-connected graph for the same
`
`reason and motivation as described above in Claim 19.
`
`32. With respect to Claim 26, Moore in view of Bi teaches all the limitations of Claim
`
`23 but does not explicitly disclose each computer connected to the broadcast channel
`
`network is connected to at least three other computers. However it is well known in the
`
`ACTIVISION, EA, TAKE-TWO, 2K, ROCKSTAR, Ex. 1024, p. 10 of 12
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`Application/Control Number: 09/629,577
`Art Unit: 2155
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`Page 10
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`art that a communications network can be designed to be more reliable by increasing
`
`the connectivity and edge connectivity as shown in Bondy (Page 47-50 section 3.3}. It
`
`would have been obvious to one of ordinary skill in the art at the time the invention was
`
`made to take the computer-readable medium disclosed by Moore in view of Bi and
`
`modify it as disclosed by Bondy with each computer connected to the broadcast
`
`channel is connected to at least three other computers. The larger amount of
`
`connectivity and edge connectivity, the more reliable the system becomes. Therefore
`
`the amount in terms of a reliable system is arbitrary. One would be motivated to have
`
`this as it provides reliability in a communications network where the failure of
`
`communications link can jeopardize communications of the system (Page 4 7-50 section
`
`3.3).
`
`33. With respect to Claim 27, Moore in view of Bi and in further view of Bondy further
`
`teach the computers and their connections form an m-regular graph for the same
`
`reason and motivation as described above in Claim 19.
`
`Conclusion
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`34.
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`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure.
`
`35.
`
`U.S. Patent 6,252,884 by Hunter "Dynamic Configuration of Wireless Networks"
`
`June 26, 2001.
`
`ACTIVISION, EA, TAKE-TWO, 2K, ROCKSTAR, Ex. 1024, p. 11 of 12
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`Application/Control Number: 09/629,577
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`Page 11
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`36.
`
`U.S. Patent 6,073,177 by Hebel et al. "Dynamic Method for Connecting a Client
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`to a Server Application" June 6, 2000.
`
`37.
`
`U.S. Patent 5,946,316 by Chen et al. "Dynamic Distributed Mulitcast Routing
`
`Protocol" August 31, 1999.
`
`38.
`
`Yavatkar et al. "A Reliable Dissemination Protocol for Interactive Collaborative
`
`Applications" Proc. ACM Multimedia, 1995 p.333-344
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to David Lazaro whose telephone number is 703-305-
`
`4868. The examiner can normally be reached on 8:30-5:00 M-F.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Hosain Alam can be reached on 703-308-6662. The fax phone number for
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`the organization where this application or proceeding is assigned is (703) 872-9306.
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`Any inquiry of a general nature or relating to the status of this application or
`
`proceeding should be directed to the receptionist whose telephone number is 703-305-
`
`3900 .
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`.:::::r~ /1 ~-----·
`/'~~/--,-
`David Lazaro
`October 31 , 2003
`
`HOSAINALAM
`SUPERVISORY PATENT EXAMINER
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`ACTIVISION, EA, TAKE-TWO, 2K, ROCKSTAR, Ex. 1024, p. 12 of 12