Application/Control Number: 09/054,740
`
`Page 2
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`Art Unit: 2711
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`Terminal Disclaimer
`
`I
`
`The terminal disclaimer filed on 3/9/00 disclaiming the terminal portion of any patent
`
`granted on this application which would extend beyond the expiration date of prior Patent
`
`No. 5,761,606 has been reviewed and is accepted. The terminal disclaimer has been recorded.
`
`2.
`
`The affidavit filed on 3/9/00 under 37 CFR 1.131 is sufficient to overcome the Honey et al
`
`Response to Amendment
`
`(5,912,700) reference.
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`-Thefollowing 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 timetheinvention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentabilit)%shall not be negatived by the
`manner in which the invention was made.
`
`4.
`
`Claims 18-29 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Throckmorton et al (5,818,441).
`
`As to claim 18, note the Throckmorton et al reference, Figure 4, which discloses a system
`
`which inserts data associated with a broadcast television program into0e vertical blanking
`
`interval of a television signal. On the receiving side, the system includes a computer capable of
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`NFLE Ex. 1002 - Page 108
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`Application/Control Number: 09/054,740
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`Page 3
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`Art Unit: 2711
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`receiving the television program and storing the associated data locally. The addition of a two-
`
`way channel allows the user to access online services or the Internet. Further, when the
`
`associated data contains pointers (i.e., URLs) t6 locations across the two-way channel, the user
`
`can access information of particular relevance to the television program. The reference differs
`
`from that claimed in that it is silent as to whether or not the user is provided with an explicit
`
`indication of the presence of an address. Rather, the reference merely discloses that associated
`
`data is stored locally at the time that the primary data stream is rendered, and available thereafter
`
`for browsing by the user using, for example, a menu, col. 7, lines 65+. However, this is not
`
`considered to be a patentable distinction. That is, it was notoriously well-known in the art at the
`
`time of the invention to provide indications, either audibly or visually, of the occurrence, or
`
`forthcoming occurrence, of additional data transmitted along with television programming. One
`
`example of the use of such audible or visual indications 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 ip the Throckmorton et al
`
`reference in order to alert the viewer to the presence or future occurrence of nonvideo data.
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`Claims 19-29 are met by that discussed above.
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`Application/Control Number: 09/054,740
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`Page 4
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`Art Unit: 2711
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`Response to Arguments
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`5.
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`Applicant's arguments with respect to claims 18-29 have been considered but are moot in
`
`view of the new ground(s) of rejection.
`
`Conclusion
`
`The following are suggested formats for either a Certificate of Mailing or Certificate of
`6.
`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 States 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
`°files, Fax No. (703)
`-
`on
`
`(Date)
`
`i
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`Application/Control Number: 09/054,740
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`Page 5
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`Art Unit: 2711
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`Typed or printed name of person signing this certificate:
`
`Signature:
`
`
`
`Please refer to 37 CFR 1.6(d) and 1.8(a)(2) for filing limitations concerning facsimile
`transmissions and mailing, respectively.
`
`7.
`
`Any response to this action should be:
`
`(a) mailed to: Commissioner of Patents and Trademarks
`
`WashingtOn, D.C. 20231
`
`(b) or faxed to: (703) 308-6306 or (703) 308-6296 for either formal communications
`
`intended for entry, or informal or draft communications (please label "PROPOSED" or
`
`"DRAFT")
`
`(c) or hand-delivered to: Crystal Park II, 2121 Crystal Drive, Arlington. VA., Sixth Floor
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`(Receptionist).
`
`8.
`
`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to John W. Miller whose telephone number is (703) 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,
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`Andrew Faile, can be reached at (703) 305-4380. The fax phone number for this Group is
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`(703) 308-5359.
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`NFLE EX. 1002 - Page 111
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`

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`Application/Control Number: 09/054,740
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`Page 6
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`Art Unit: 2711
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`Any inquiry of a general nature or relating to the status of this application or proceeding
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`should be directed to the Group receptionist whose telephone number is (703) 305-4700.
`
`John W. Miller
`
`June 5, 2000
`
`John W. Miller
`Primary Examiner
`Art Unit 2711
`
`NFLE Ex. 1002 - Page 112
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`NFLE 1002 - Page 113
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`

`

`ATTACHMENT TO AND MODIFICATION OF
`NOTICE OF ALLO WABILITY (PTO-37)
`(November, 2000)
`
`NO EXTENSIONS OF TIME ARE PERMITTED TO FILE
`CORRECTED OR FORMAL DRAWINGS, OR A SUBSTITUTE
`OATH OR DECLARATION, notwithstanding any indication to the
`contrary in the attached Notice of Allowability (PTO-37).
`
`If the following language appears on the attached Notice of Allowability, the
`portion lined through below is of no force and effect and is to be ignored':
`
`A SHORTENED STATUTORY PERIOD FOR RESPONSE to comply with.the requirements noted below is set to
`EXPIRE THREE MONTHS FROM THE "DATE MAILED" of this Office action. Failure to comply will result in
`ABANDONMENT of this application
`
`I
`I
`Similar language appeairing in any attachments to the Notice of Allowability,
`such as in an Examiner's Amendment/Comment or in a Notice of
`Draftperson's Patent Drawing Review, PTO-948, is also to be ignored.
`
`The language which is crossed out is contrary to amended 37 CFR 1.85(c) and 1.136. See "Changes to
`—Implement's/le Patent Business Goals", 65 Fed. Reg. 54603, 54629, 54641. 54670, 54674 (September 8.
`2000), 1238 Off Gaz. Pat. Office 77, 99, 110, 135, 139 (September 19, 2000).
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`NFLE Ex. 1002 - Page 113
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`NFLE 1002 - Page 114
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`

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`BEST COPY
`
`•
`...-UNITEDSTati:DEPARTMENT OF COMMERCE.
`Patent and Trademark Office
`COMMISSIONER OF PATENTS AND.TRAO DARKS
`Washington, D.C. 20231
`
`- APPLICATION No.
`
`. FILING DATE
`
`-
`
`FIRST NAMED INVENTOR
`
`(7›07
`
`ATTORNEY 'DOC KEE'
`
`No.
`
`ID9/084.,70
`
`04/03/98 - WOLZIEN
`
`96262/6
`
`14110 2/ 111. 6
`-
`AMSTER, •RO FISTEIN_ & EBIkl8TEIN
`90 PARK AV
`NEW YORK N
`
`10016
`
`EXAMINER
`
`I LLER, J
`
`ART UNIT
`
`PAPER NUMEIER
`
`2511
`DAVE MAILED:
`
`/ 6 / 0 0
`
`Please find beto
`proceeding.
`
`a dioratt4ed an Office communication concerning.thit, application.or
`
`• .2 Coinmliakinotof Pateitts and Trademarks
`
`PTO-BOC (Rev. 2/051
`U.S. G.P.O.20C01 445,1e8rl5211e
`
`1- fill "GoPY
`
`NFLE.Ex: 1002 - Page
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`NFLE 1002 - Page 115
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`

`

`Interview Summary
`
`Application No.
`091054,749
`Examiner
`
`
`
`' Applicant(s)
`
`John W. Miller
`
`Vvoizien
`Group Art Unit
`2611
`
`All participants (applicant, applicant's representative, PTO personnel):
`
`._
`
`(1) John W. Miller
`
`(2) Scott Doyle
`
`Date of Interview
`
`Oct 27, 2000
`
`(3) Thomas Wolzien
`
`(4)
`
`Type:
`
`felephrnic
`
`Mersonal (copy is given to
`
`aglicant
`
`aCicani's representative),
`
`Exhibit shown or demonstration conducted: Ds
`
`ig. if yes, brief description:
`
`. Agreement Dm reached. Ras not reached.
`
`Claim(s) discussed: ell
`
`Identification of prior art discussed:
`Throckmorton et at ('441)
`
`Description of the general nature of what was agreed to If an agreement was reached, or any other comments:
`Applicant proposed adding tar:wade to the claims to indicate the 'automatic' electronic extraction of address data, and the
`establishment of a 'direct link', initiated by the user, to an online information source. These features, if added to the claims,
`would likely render them allowable over Thmckmorton et a! alone That is, the poor art discloses the selection of a source of
`information from a menu of sources, each associated with pokters to the Sources, rather than a user-initiated eutornaho and
`direct link to the sources.
`
`(A fuller description, if necessary, and a copy of the amendments, If available, which the examiner agreed would render
`the claims allowable must be attached. Also, where no copy of the amendents which would render the claims allowable
`is available, a summary thereof must be attached.)
`1. n Il ls not necessary for applicant to provide a separate record of the substance of the Interview.
`Unless the paragraph above has been checked to indicate to the contrary, A FORMAL WRITTEN RESPONSE TO THE LAST
`OFFICE ACTION IS NOT WAIVED AND MUST INCLUDE THE SUBSTANCE OF THE INTERVIEW. '(See MPEP Section
`713.04). if a response to the last Office action has already been filed, APPLICANT IS GIVEN ONE MONTH FROM THIS
`INTERVIEW DATE TO FILE A STATEMENT OF THE SUBSTANCE OF THE INTERVIEW.
`2. q Since the Examiners Interview summary above (including any attachments) reflects a complete response to
`each of the objections, rejections and requirements that may be present In the last Office action, and since the
`claims are now allowable, this completed form is considered to fulfill the response requirements of the last
`Office action. Applicant is not relieved from providing a separate record of the Interview unless box 1 above
`is also checked.
`
`Examiner Note: You must sign end stamp this form untessil is an attachment io a swum Office action.
`
`s
`rraaemia nrix.
`P10-413 (Rev. 10-95)
`
`Interview Summary
`
`JOHN W. MILLER
`PRIMARY EXAMINER
`ART UNIT 2611
`
`Paper No.
`
`13
`
`NFLE Ex. 1002 - Page 115
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`NFLE 1002 - Page 116
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`q
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`12/05/00 TUE 18:03 FAX 303
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`J 3450
`
`DORSEY & WHITNEY
`
`00 1
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`
`DORSEY & WHITNEY LLP
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`REPUBLIC PLAZA BUILDING
`SUITE 4400
`370 SEVENTEENTH STREET
`DENVER, COLORADO 80202-5644
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`FACSIMILE COVER SHEET
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`OFFICIAt
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`THE INFORMATION CONTAINED IN THIS FACSIMILE MESSAGE IS LEGALLY PRIVILEGED AND CONFIDENTIAL
`INFORMATION INTENDED SOLELY FOR THE USE OF THE PERSONS OR ENTITIES NAMED BELOW. IF YOU ARE NOT
`SUCH PERSONS OR ENTITIES. DO NOT READ THE MESSAGE BELOW. ANY DISTRIBUTION. DISSEMINATION OR
`REPRODUCTION OP THIS FACSIMILE MESSAGE IS STRICTLY PROHIBITED. IP YOU HAVE RECEIVED THIS MESSAGE
`IN ERROR, PLEASE IMMEDIATELY CALL US COLLECT AT (303) 629-3400
`
`Date; December 5, 2000
`
`Total Number of Pages (including this cover rhea):
`
`Time:
`
`7
`
`TO:
`
`Examiner John W. Miller
`
`FAX 0:
`
`1 (703) 308-5359
`
`FIRM NAME:
`
`United States Patent and Trademark Office
`Group Art Unit 2711
`
`LOCATION:
`
`Washington D.C.
`
`TELEPHONE
`
`FROM:
`
`John T. Kennedy, Registration Number 42,717, A uorney for Applicant, ACTV Inc.
`
`TELEPHONE NUMBER:
`
`(303) 260-6362
`
`COMMENTS:
`Dear Examiner Miller Attached for your review and com enience is a copy of the Respome to the Second Office Action for
`ACTV patent application serial number 09/054,740, titled "'Media Online Serivecs Access System and Method" (our Docket
`Number 4942.02) which we have mailed to the USPTO via Express Mail today. Please contact myself or Mr. Scott Doyle If
`you have any questions or concerns regarding the attached copy of the Response. Thank you for your consideration of the
`Applicant's Response.
`
`Orit, nator's Signature
`
`Original will be sent via (check one):
`
`0 Mail
`
`o Messenger
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`0 Air
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`0 Courier
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`B Will not be sent
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`PLEASE CONTACT FACSIMILE OPERATOR
`IF TRANSMISSION IS INCOMPLETE OR CANNOT BE READ.
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`Receptionist at
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`(.103)629-3400
`
`Reference 6 34:19tet?70 .1
`434.10 —0.331
`
`NFLE Ex. 1002 - Page 116
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`12/03/00 TUE 16:03 FAX 303
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`3450
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`DORSEY & WHITNEY
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`Vb 002
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`2.404,11.60-
`Express Mail No. EL 759 367 709 USA
`Attorney Docket No. 4942.02 /6,). I a)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent Application of:
`
`WOLZETN
`
`Serial No.: 09/054,740
`
`Filed: April 3, 1998.
`
`Group Art: 2711
`
`Examiner: John W. Miller
`
`Title: MEDIA ONLINE SERVICES ACCESS SYSTEM AND METHOD
`
`OFFICIAL.
`
`Assistant Commissioner for Patents
`Washington, D.C. 20231
`
`Express Mailing label nember: EL 759 367 709 US
`
`Date of Deposit: December 3.2000
`
`I busby =dip that Ibis paper or fie Is being depothed olds the United
`Sous Penal Service 'Expos Mall Post (nee to Addressee servtho
`®der 37 CYR 1.10 on the dote indicated above andis addressed to the
`Assistant Commissioner for Paten, Washington. D.C. 20231
`OY a Wh, y
`
`Name: 14ne1,0
`
`Signora
`
`
`
`A.FSPONSE TO OFFICE ACTION
`
`Dear Assistant Commissioner:
`
`This Response is filed in reply to the Office Action mailed June 7, 2000, in regard to the
`
`above-referenced application rejecting claims 18-29. Applicant respectfully requests
`
`reconsideration of all pending claims and entry of the following claim amendments as well as the
`
`issuance of a Notice of Allowance.
`
`Please amend the above-identified application as follows.
`
`In the ClairnA
`
`(Amended) A method of providing to a user of online information services automatic and
`
`direct access to online information through an address associated with an online information
`
`source provided with a video program comprising:
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`Zona
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`indicating to the user that an address has been provided with said Video program; and
`
`electronically extracting said address [to establish] and automatically establishing. in
`
`res nse to a user initiated command, a direcl communication link with the online information
`
`s urce associated with said address so that the user has direct access to the online information.
`
`,23.
`
`(Amended) A method of providing to a user of online information services [to a user of
`
`such online services] automatic and direct accecs to online information, comprising the steps of:
`
`receiving a television broadcast signal having an information signal representing the
`
`address of an online information source;
`
`extracting the address of said online information source from said received television
`
`broadcast signal;
`
`automatically using said address, in response to a user initiated command, to transmit a
`
`signal totonnect said user directly with the online information source associated with said
`
`dress so that the use
`
`direct access to the online information- and
`
`e
`
`receiving online information signals from said online information provider.
`
`-••
`
`(Amended) A method of providing to a user of online information services, at the time of
`
`viewing a video program represented by an electronic signal automatic and direct access to
`
`online information through a link provided in said video program, comprising:
`
`indicating to the user that an address is available for establishing communication with an
`
`online information source;
`
`electronically extracting, in response to a user initiated command, an address associated
`
`with an online information source from an information signal embedded in said electronic signal,
`
`and automatically using said extracteri.addiess to establish a direct communication link with the
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`ch004
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`\---- Serial No.: 09/054,740
`Page 3
`.....--- .
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`online information source associated with said extracted address so that the user has direct access
`
`to the online information.
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`,.2f.
`
`(Amended) A method of providing to a user of online information services automatic and
`
`direct access to online information through a link provided in a video program, comprising:
`
`indicating to the user that a link to online information services is available for receiving
`
`the online information; and
`
`automatically and directly electronically accessing said online information associated
`
`with said link in response to a user initiated com.rnand an that the user has direct access to the
`
`online information.
`
`(Amended) A media online services access system for providing to a user of online
`
`information services while viewing or listening to a video or audio program represented by an
`
`electronic signal, automatic and direct access to online information by establishing a direct digital
`
`communication link with an online information source through a link provided in said electronic
`
`signal, comprising:
`
`means for indicating to the user that an address is available for extraction from said
`
`electronic signal which permits communication with an online information source; and
`
`means for extracting an address associated with an online information source from an
`
`information signal embedded in said electronic signal, and.for automatically establishing
`
`response toR user initiated command, a direct link with the online information source associated
`
`with said extracted address so that the user has direct access to the online information.
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`NFLE Ex. 1002 - Page 119
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`NFLE 1002 - Page 120
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`