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`96262/6
`
`WA. DA.
`0 09/054.740
`
`Thomas R. Wolzien
`
`MHO Olgi
`4/3/98
`U.S. PATENT DOCUMENTS
`I
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`4 9 0 5 0 9 4 2/90 Pocock et al. -
`5 1 2 8 7 5 2 7/92 Von Hohorn
`5 2;8 5 2 7 8 2/94 Holman
`
`FUG NM
`VOPPPOMUTI
`
`-
`
`,
`
`-.'
`FORCON PATENT DOCUMENTS
`
`OTHER DOV1JMEN11 anchmilhg Author, TRW, Dec Ptrilnent Postit Etc.)
`•
`1
`
`-74
`
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`
`Y•
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`• -• • •
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`".
`
`DAMN ER
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`17;i.v h/ 1/711,4a2
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`1:ONSIOEFIED
`
`0'
`
`EXAMINER: Initiat if eiiailon Coniklered, whether Of not Cltalion i3 In ponforrnance with MPEP
`609. Drew line through pitation It nol to coniorrhenc. And not considered. include copy of
`thly lorm with nom communiccion 10 applicanl.
`
`NFLE Ex. 1002 - Page 56
`
`NFLE 1002 - Page 57
`
`

`

`BEST COPY
`
`UNITED STA,,,a DEPARTIVIENT OF COMMERCE
`Patent and Trademark Office
`, Address: COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington, D.C. 20231
`
`
`i‘
`
`3 FILING DATE
`APPLICATION NO. .1
`
`FIRST NAMED INVENTOR
`
`I ATTORNEY DOCKET NO.
`
`1
`09/06,4740
`
`04/0/96'
`
`WOLZ I EN
`
`LM02/Q909-
`AM8TER, RO1HSTEIN & EBENSTE.IN
`90 PARK AVE, -
`NEW,YORKNV 10016
`•
`
`T
`
`96262/6
`
`EXAMINER
`
`MILLER,J
`ART UNIT
`
`PAPER NUMBER
`
`09/09/99
`
`ierieelind belOw and/Orattached,an.Offici).. Communication. concerning this application or
`::proceeding:
`
`• CommIssloner of Patents and 'Trademarks
`
`1. Filo Copy
`
`NFLE Ex. 1002 - Page 57
`
`NFLE 1002 - Page 58
`
`

`

`Office Action Summary
`
`• Responsive to oornmunication(s1 filed on
`
`q This action is FINAL.
`
`Application No.
`09/054,740
`
`Examiner
`
`Applicantici
`
`John W. Miller
`
`Wolzien
`
`Group Art Unit
`
`2711
`
`L
`
`
`
`q 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 Ouayle, 1935 C.D. 11; 453 O.G. 213.
`3
`monthis), or thirty days, whichever
`A shortened statutory period for response to this action is set to expire
`is longer, horn the mailing data of this communication. Failure to respond within the period for response will cause the
`application to become abandoned. (35 U.S.C. § 133). Extensions of time may be obtained under the provisions of
`•
`37 CFR 1.136(a).
`
`Disposition of Claims
`• Claimisi 18-29
`
`Of the above, cleim(s)
`
`q Clairn(s)
`
`• Ciaim(s) 18-29
`
`q Clairnis)
`
`q Claims
`
`Application Papers
`
`is/are pending in the application.
`
` is/are withdrawn from consideration.
`
` isiare allowed.
`
`Isfare rejected.
`
` is/are objected to.
`
`are subject to restriction or election requirement.
`
`q See the attached Notice of Draftsperson's Patent Drawing Review, PTO-948.
`
`q The drawing(s) filed on
`
` is/are objected to by the Examiner.
`
`q The proposed drawing correction, Wed on
`
`Es
`
`q approved
`
`q disapproved.
`
`E! The specification is objected to by the Examiner.
`q The oath or declaration is objected to by the Examiner.
`
`Priority under 35 U.S.C. § 119
`• Acknowledgement Is -Made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d).
`q None of the CERTIFIED copies of the priority documents have been
`q Some'
`q All
`
`q received.
`
`O received in Application No. Series Code/Seiial Number)
`D received in this national stage application from the International Bureau (PCT Rule 17.2(ai).
`
``Certified copies not received:
`q Acknowledgement is Made of a claim for domestic priority under 35 U.S.C. 1 119(e).
`
`•••••
`
`Attachmentisi
`IZI Notice of References Cited, PTO-992
`IFS information Disclosure Statement(s), PTO-1449, Paper NOW(
`• Interview Summary, P10-413
`q Notice of Draftsperson's Patent Drawing Review, P10-948
`q Notice of Informal Patent Application, PTO-152
`
`3
`
`U.S. Palen: end Tuck melt cruto
`PTO-326 IRev. 9-95)
`
`Office ACtIon Summary
`
`Part of Paper No.
`
`4
`
`
`
`— SEE OFFICE ACTION ON THE FOLLOWING PAGES ---
`
`NFLE Ex. 1002 - Page 58
`
`NFLE 1002 - Page 59
`
`

`

`Application/Control Number: 09/054,740
`
`Page 2
`
`Art Unit: 2711
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine
`1.
`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
`improper timewise extension of the "right to exclude" granted by a patent and to prevent possible
`harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
`Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686
`F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`(CCPA 1970);and, In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to
`overcome an actual or provisional rejection based on a nonstatutory double patenting ground
`provided the conflicting appliCation or patent is shown to be commonly owned with this
`application. See 37 CFR 1.130(b).
`Effective January 1, 1994, a registered attorney or agent of record may sign a terminal
`disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
`
`2.
`
`Claims 18-29 are rejected under the judicially created doctrine of double patenting over
`
`claims 1-17 of U. S. Patent No. 5,761,606 since the claims, if allowed, would improperly extend,
`the "right to exclude" already granted in the patent.
`
`The subject matter claimed in the instant application is fully disclosed in the patent and is
`
`covered by the patent since the patent and the application are claiming common subject matter, as
`
`follows: the providing of an online address with a video program, the electronic extraction of the
`
`address, the visual or auditory indication of the presence of an address, and.the establishing of a
`
`communication link with an online information source associated with the address.
`
`Furthermore, there is no apparent reason why applicant was prevented from presenting
`
`claims corresponding to those of the instant application during prosecution of the application
`
`NFLE Ex. 1002 - Page 59
`
`NFLE 1002 - Page 60
`
`

`

`Application/Control Number: 09/054,740
`
`Page 3
`
`Art Unit: 2711
`
`which matured into a patent. See hi re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968).
`
`See also MPEP § 804
`
`Claim. Rejections - 35 USG, 102
`
`3.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 702 that form the
`
`basis for the rejections under this section made in this Office action.
`
`A person shall be entitled to a patent unless --
`
`(e) the invention was described in a patent ,ranted on an application for patent by another filed in the United
`oil aliiiiteinational application by another who
`States before the invention .thereof by the applicant for patent,
`has fulfilled the requirements of paragraphs (i), (2), and (4) of section 371(c) of this title before the invention
`thereof by the applicant for patent.
`
`4.
`
`Claims 18-20, 22, 23, 25, and 27 are rejected under 35 U.S.C.. 102(e) as being anticipated
`
`by Honey et al (5,912,700), cited by the examiner.
`
`Note the.Honey et al reference, Figure 21 and the disclosure of col. 25, lines 38-67, which
`
`dilc/OlegliardWare at a viewer's home which allows for the enhancement of television
`
`presentations based on non-video data. Particularly, television signals are received at by a
`
`television and sent to a decoder (which is a stand-alone decoder or one incorporated within a
`
`computer) to remove data from the vertical blanking interval of the signals. The decoder removes
`
`this non-video data, which may be one or more addresses of web-pages on the Internet, and
`
`displays the data in a window on the display of the computer such that the user is able to click on
`
`an address with a mouse or other input means, thus causing software in the computer (e.g.
`
`Mosaic or Netscape) to load the addressed web page.
`
`NFLE Ex. 1002 - Page 60
`
`NFLE 1002 - Page 61
`
`

`

`Application/Control Number: 09/054,740
`
`Page 4
`
`Art Unit: 2711
`
`Claims 18-20, 22, 23, 25, and 27 are met by that discussed above.
`
`Claim Rejections.- 35 USC § 103
`
`5. '
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness
`
`rejections set forth in this Office action:
`
`(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.
`
`6.
`
`Claim 21 is rejected under 35 U.S.C. 103(a) as being unpatentable over Honey,et al
`
`(5,912,700), cited by the examiner.
`
`As to claim 21, the Honey et al reference does not disclose an auditory indication on a
`
`speaker where an audio portion of the television program is reproduced. Rather, as noted above,
`
`the system provides a 'visual indication'/'sensory indicator' in the form of data associated with the
`
`addresses of web pages being displayed in a window of the display of the computer. However,
`
`this is not considered a patentable distinction. It is notoriously well-known in the art to provide an
`
`auditory indication of the occurrence, or forthcoming occurrence, of additional data transmitted
`
`along with television programming. One example of the use of such indicators is for emergency
`
`warning data and the like. The examiner submits that it would have been clearly obvious to one
`
`of ordinary skill in the art at the time the invention was made to implement such teachings in the
`
`Honey et al reference in order to alert the viewer to the presence or-future occurrence of
`
`nonvideo data.
`
`NFLE Ex. 1002 - Page 61
`
`NFLE 1002 - Page 62
`
`

`

`Application/Control Number: 09/054,740
`
`Page 5
`
`Art Unit' 2711
`
`Allowable Subject Matter
`
`Claims 24, 26, 28, and 29 are allowable over the art of record.
`
`Conclusion
`
`The following are suggested formats for either a Certificate of Mailing or Certificate of
`8.
`Transmission under 37 CFR 1.8(a). The certification may be included with all correspondence
`concerning this application or proceeding to establish a date of mailing or transmission.under 37
`CFR 1.8(a). Proper use of this procedure will result in such communication being considered as
`timely if the established date is within the required period for reply. The Certificate should be
`signed by the individual actually depositing or transmitting the correspondence or by an individual
`who, upon information and belief, expects the correspondence to be mailed or transmitted in the
`normal course of business by another no later than the date indicated.
`
`Certificate of Mailing
`
`I hereby certify that this correspondence is being deposited with the United Slates Postal Service with sufficient
`postage as first class mail in an envelope addressed to:
`
`Assistant Commissioner for Patents
`Washington, D.C. 20231
`
`
`on
`(Date)
`
`Typed or printed name of person signing this certificate:
`
`Signature:
`
`
`
`Certificate of Transmission
`
`I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark
`
`Office, Fax No. (701)
`(Date)
`
`Typed or printed name of person signing this certificate:
`
`NFLE Ex. 1002 - Page 62
`
`NFLE 1002 - Page 63
`
`

`

`Application/Control Number: 09/054,740
`
`Page 6
`
`Art Unit: 2711
`
`Signature:
`
`
`
`Please refer to 37 CFR 1.6(d) and 1.8(a)(2) for filing limitations concerning facsimile
`transmissions and mailing, respectively.
`
`9.
`
`Any response to this action should be:
`
`(a) mailed to: Commissioner of Patents and Trademarks
`
`Washington, D.C. 20231
`
`(b) or faxed to: (703) 308-9051 (for formal communications intended for entry)
`
`(c) or faxed to: (703) 308-5359 (for informal or draft communications, please label
`
`"PROPOSED" or "DRAFT")
`
`(d) or hand-delivered to: Crystal Park II, 2121 Crystal Drive, Arlington. VA., Sixth Floor
`
`(Receptionist).
`
`10.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to John W. Miller whose telephone number is (7Q3) 305-4795. The examiner
`
`can normally be reached on Monday through Friday from 8:30 AM to 6:00 PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor,
`
`Andrew Faile, can be reached at (703) 305-4380. The fax phone number for•this Group is
`
`(703) 308-5359.
`
`Any inquiry of a general nature or relating to the status of thig•application or proceeding
`
`should be directed to the Group receptionist whose telephone number is (703) 305-4700.
`
`NFLE Ex. 1002 - Page 63
`
`NFLE 1002 - Page 64
`
`

`

`Application/Control Number: 09/054,740
`
`Page 7
`
`Art Unit: 2711
`
`John W. Miller
`
`September 6, 1999
`
`John W. Miller
`Primary Examiner
`Art Unit 2711
`
`NFLE Ex. 1002 - Page 64
`
`NFLE 1002 - Page 65
`
`

`

`Notice of References Cited
`
`Application No.
`09/054,740
`Examiner
`
`•
`
`Applicant(e)
`
`John W. Miller
`
`Wolzien
`
`Group Art Unit
`- 2711
`
`Page 1 of 1
`
`U.S. PATENT DOCUMENTS
`
`DOCUMENT NO.
`
`DATE
`
`5,282,860
`
`11/16/93
`
`5,438,355
`
`5,570,295
`
`5,804,542
`
`5,640,193
`
`5,694,183
`
`5,818,441
`
`5,912,700
`
`8/1/95
`
`10/26/96
`
`i
`
`2/18/97
`
`6/17/97
`
`12/2/97
`
`10/6/98
`
`6/16/99
`
`A
`
`a
`
`C
`
`E
`
`F
`
`O
`--.
`H
`
`NAME
`
`Fitzpatrick et al
`
`Palmer
`
`Isenberg et al
`
`Dedrick
`
`Wellner
`
`Harrison
`
`Throckmorton et al
`
`Honey et al
`
`CLASS
`
`SUBCLASS
`
`348
`
`455
`
`364
`
`348
`
`348
`
`348
`
`348
`
`348
`
`478 X
`
`2 X
`
`514R
`
`6 X
`
`7
`
`13
`
`13 X
`
`157
`
`DOCUMENT NO.
`
`DATE
`
`COUNTRY
`
`NAME
`
`CLASS
`
`SUBCLASS
`
`FOREIGN PATENT DOCUMENTS
`
`•
`
`........ — -
`
`N
`
`O
`
`O
`
`R
`
`S
`
`U
`
`
`1v
`
`1 1
`1 Yi
`
`l
`F
`
`X
`
`NON-PATENT DOCUMENTS
`
`DOCUMENT Underling Author. Title, Silures, and Pertinent Pages)
`
`DATE
`
`...•
`
`•
`
`U. S. Patent and Tradennik Office
`PTO-892 (Rev. 9-95)
`
`Notice of References Cited
`
`Part of Paper No.
`
`4
`
`NFLE Ex. 1002 - Page 65
`
`NFLE 1002 - Page 66
`
`

`

`4I9
`
`iott 16:30 FAX 303 g` , 3450
`
`DORSEY & WHITNEY
`
`Q1304
`
`7711
`
`MIA
`
`/
`
`Arr
`
`1,)
`,4 IN ME UNITED STATES PATENT AND TRADEMARK OFFICE
`
`POWER OF ATTORNEY
`
`
`Docket No.
`
`rM
`
`4942,5
`ilri
`c-)
`
`
`(.% i N .-
`53
`
`ri ).
`0
`.47
`cr:
`2.
`cr"
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`‘.
`.-.r cl
`r1
`--
`
`Name of Applicant:
`Aticiren of Applfuent:
`
`Thomas R. /Um
`
`Tike:
`
`MEDIA ONLINE SERVICT, ACCESS SYSTEM AND klETIIOD
`
`Serial No,. if Any.
`Filed:
`
`09/054YAI---
`April 3, 2993
`
`TQTFIE ASSISTANT COMMISSIONER FOR PATENTS
`
`The Assistant CorriMissioner for Patents
`Washington, D.C. 20231
`
`Honorable Sin
`1 heraey appoint;
`
`Customer No. 24616
`
`as principal attorneys to prosecute this application and to transact ar buslness in the-Patent and Trademark
`Office connected therewith.
`
`Please direct aii future correspondence to:
`Customer Ns. 20686
`
`gy
`
`Names
`Des
`Title:
`r1,1
`Media online Services, leo,
`Snits 2401
`1270 Avenue of the Americas
`New York, NY 10420
`
`Dated:
`
`Lif
`
`I???
`
`NFLE Ex. 1002 - Page 66
`
`NFLE 1002 - Page 67
`
`

`

`DORSEY & WHITNEY LIP
`12.EPLIBLIC ilkYE'ZXIAJILD3NO, SUITE 4400
`
`DENVER, COLORADO 80202-5644
`
`370 SEVENTEENTH STREET
`
`•-
`
`•••••• -
`
`• ....u.srposTA52...*1.
`
`fi METE8 56.7556 *
`
`Assistant Commissioner for Patents
`Washington, D.C. 20231
`
`11113/1111151:1414411114111131, h
`
`NFLE 1002 - Page 68
`
`