12/05/00 TUE 18:04 FAX 303
`
`, 3450
`
`DORSEY & WHITNEY
`
`Zoos
`
`Serial No.: 09/054,740
`Page 4
`
`REMARKS
`
`Claims 18-29 arc rejected by the Examiner. In particular, claims 18-29 are rejected under
`
`35 USC §103 as obvious over Throckmorton et al (5,818,441) (hereinafter. "Throckmorton"). In
`
`the Office Action, the Examiner rejected claims 18-29 under 35 U.S.C. 103(a) as being
`
`unpatentable over Throckmorton et al (U.S. Patent Number 5,818,441).
`
`With respect to such rejection, the Examiner stated that Throckmorton discloses a system
`
`which inserts data associated with a broadcast television program into the vertical blanking
`
`interval of a television signal. When the associated data contains pointers (he, URLs) to
`
`locations across a two-way channel, as set forth by the Examiner, the user can access information
`
`of particular relevance to the television program. The Examiner also stated that while the
`
`reference differs'from the claimed invention in that it is silent with respect to whether or not the
`
`tier irtilovided with an explicit indication of the presence of an address, such distinction is not a
`
`"psitnntabIc distinotion".
`
`Applicant respectfully disagrees with the rejection and Applicant appreciates that the
`
`Examiner agreed to an interview legaiding the case. The Applicant met with the Examiner on 27
`
`October 2000 to discuss the rejection and the 'Iltrockmorton reference and agreement was
`
`reached that the §103 rejection was overcome by proposed amended claims. The Applicant was
`
`represented by Scott Doyle and the inventor, Thomas Wolzein. Applicants representatives
`
`explained that Throckmorton does not describe or teach a system and method which allows
`
`"direct communication link" which is "automatically" established by a user command "so that
`
`the user has direct access to online information" from an online provider, as set forth in amended
`
`NFLE 1002 - Page 121
`
`

`

`12/05/00 TUE 18:04 FAX 303 , , 3450
`
`DORSEY & WHITNEY
`
`oos
`
`Serial No.: 09/054,740
`Page 5
`
`claims 18-29. As explained to the Examiner, it is important that the user not have to access links
`
`which are stored in a directory or access one of a series of links in a menu. In Applicant's
`
`amended claims, the choice for the user is from the video or audio program directly to the
`
`additional content, without the need of intermediate steps. In Applicant's invention, the user
`
`need not have to select amongst several different links. Therefore, in Applicant's invention, the
`
`user never has to leave the screen to access additional content because access is "direct* from the
`
`user to the content. Based on the above, the difference is substantial because Throckmorton does
`
`not teach "direct" and "automatic° access to the online information from the primary video or
`
`audio program and thus, the differences between Wolzien's claims and the Throckmorton
`
`reference arc such that the subject matter as a whole would not have been obvious to one of
`
`ordinary skill in the art.
`
`Regarding claims 18-22 and 24-29, these claims are additionally patentable because the
`
`"indicating means" or "indicating" step provides a subtle function of alerting the user that more
`
`content is directly and automatically available to the user through a simple user command. Thus,
`
`a user dots not have to access storage or a menu to determine whetherany addresses were
`
`delivered to the client device and if delivered, which of the addresses to select for establishing a
`
`communications link with an online site.
`
`As agreed to by the Examiner, Applicant has added the terms of a "direct"
`
`communication link which is "automatically" established by a user command "so that the user
`
`has direct access to online information" from an online provider to all Independent claims, and
`
`thus all dependent claims, pending in the case: Therefore, Applicant respectfully requests that
`
`NFLE 1002 - Page 122
`
`

`

`12/06/00 TOE 18:05 FAX 303 ^ 3450
`
`DORSEY & WHITNEY
`
`23007
`
`Serial No.: 09/054,740
`Page 6
`
`the rejection be withdrawn. In view of the above amendments, Applicant now believes that the
`
`claims to be in condition for allowance, and a Notice of Allowance is requested.
`
`Additionally, the Applicant has provided herewith a check in the amount of $ 890.00 to
`
`pay for the three month extension fee for filing this Response. Applicant requests the United
`
`States Patent Office to charge any overpayments or additional filing fees under 37 C.F.R. 1.16
`
`and 1.17 to the Applicants deposit account number 04-1415.
`
`If the Examiner beliayes that any issues remain unresolved, he is invited to telephone
`
`Scott Doyle at (303) 628-1504 or the undersigned to expedite allowance.
`
`Respectfully submitted,
`
`Date: 5 December 2000
`
`/11/ ohn T. Kennedy, sq.
`
`Attorney for Applicant
`USPTO Reg. No. 42,717
`Dorsey & Whitney LLP
`Customer No. 20686
`Republic Plata Buildirig, Suite 4700
`370 Seventeenth Street
`Denver, CO 80202-5644
`(303) 260-6362
`
`NFLE 1002 - Page 123
`
`

`

`PETITION FOR EXTENSION OF TIME UNDER 37 CFR 1.136(a)
`
`(Large (Large Entity)
`
`.
`In Re Application Oh
`
`
`
`W OLZEIN
`
`Serial No.
`09/054,740
`
`Invention,.
`
`Filing Date
`April 3,1998
`
`.-.1.11-5 "i"
`- •` U
`It
`, .DEC 0 5 2000
`1
`.
`$
`649,4,
`' rPADOItts
`
`.
`
`.
`
`Examiner
`Miller, John W.
`
`Docket No. P is
`4942.02 1 * t il (
`
`,
`
`_. Group Pin Unit
`2711
`
`MEDIA ONLINE SERVICES ACCESS SYSTEM AND METHOD
`' --- •
`_ _
`._,
`•
`
`---.
`
`TO THE ASSISTANT COMMISSIONER FOR PATENTS:
`
`This is a request under the provisions of 37 CFR 1.136(a) to extend the period for filing a response to the Office. Action
`
`n the above-identified application.
`June 7.2000
`.
`of
`.
`Dale
`
`
`The requested extension is as follows (c
`0 Two•mo the
`
`0 One month
`
`time period desired):
`IR Three months 0 Four months
`
`0 FMB months
`
`from:
`
`Steptember 7, 2000.
`
`Date
`
`until:
`
`DeceMber 7, 2000
`Date
`
`and Is to be paid as follows:
`
`RECEIVED
`DEC 1 8 2000
`The fee for the extension]of time Is '
`
`$890
`• Technology Center 2600
`unt of the fee Is enclosed.
`El A check in the am
`GO The Ccimmlssione4s
`hereby authoiized to charge any fees which may be required, or credit any
`
`overpayment, to Drosit Account No. 04-1415
`This sheet Is encloied.-
`A-duplicate-eopyd
`
`(a If an additional extension of time Is required, please consider this a petition therefor and charge
`
`any additional feesi4rhich may be required to Deposit Account No. 04-1415
`A duplicate copy of
`this sheet is enclosed.
`
`
`
`--
`maw.
`
`.:- -
`
`--„,
`Dated: ar.e44. fry -5- 21S‘o
`
`) .. Q
`. .
`
`-
`
`\
`
`.1
`si
`
`.
`
`• ,
`John T. Kennedy
`Registration No. 42,717
`Dorsey & Whitney LLP
`Customer No. 20686
`
`- .•___
`/0/2000 RHARIS1 00000060 09084740 —
`1
`F;:117
`890.00 OP
`01
`
`cc :
`
`I cert.
`at this document and fee Is being de
`led
`on
`with the U.S. Post
`en/Ice as
`asst class mall
`r 37 C.F.R. 1.8 end is dressed to the
`Assistant COmmIss
`r for Pate
`. Washington, D.C.
`20231.
`
`I - ' ,
`Signals
`
`Parson Mailing Co
`
`
`
`ondence
`
`Typed or Printed Nasercol Person Matting Correspondent
`
`PI2LAFIGEIREVOO
`
`NFLE 1002 - Page 124
`
`

`

`(m,
`
`AMENDMENT TRANSMITTAL LETTER (Large Entity)
`Appiicani(s): WOLZEIN 1
`
`111
`
`Docket No.
`
`4942.02
`
` 11
`
`Serial No.
`
`09/054,740
`
`Filing Date
`
`April 3, 1998
`
`'
`
`Examiner
`• Miller, John W.
`
`Group Art Unit
`2711
`
`Invention: 0 171 r
`
`_..•
`pa, 05 2000
`
`1/4.
`it
`
`rR ADO°
`
`.
`
`.
`,DIA ONLINE SERVICES ACCESS SYSTEM AND METHOD
`
`_.
`..-
`TO THE ASSISTANT COMMISSIONER FOR PATENTS*,
`
`•
`
`Transmitted herewith is an
`
`mertdment in the above4lentified application.
`
`The fee has been calculated
`,
`
`.
`
`and Is transmitted as shown below.
`
`CLAIMSIREMAiNING
`'
`I
`AFTER AMENDMENT
`
`CLAIMS AS AMNDED
`
`HIGHEST #
`
`NUMBER EXTRA
`
`- PREV. PAID FOR
`20
`=
`
`CLAIMS PRESENT
`
`TOTAL CLAIMS
`
`INDEP. CLAIMS
`
`Multiple Dependent Claims (check if applicable)
`
`-
`
`3
`
`=
`
`0
`
`RATE
`
`0 x
`
`0 x
`
`$18.00
`
`$80.00
`
`TOTAL ADDITIONAL FEE FOR THIS AMENDMENT
`
`ADDITIONAL
`
`
`FEE
`
`.$0.00
`
`$0.00
`
`$0.00
`
`$0.00
`
`.. I
`
`RECEIVED
`required for amendment.
`2 No additional feel:
`.i.sit Account No.
`•
`DEC 1 8 2000
`0 Please charge De
`-- &duplicate copy of
`this sheet is enclosed.
`t
`Technology Center 2600
`to cover the tiling fee is enclosed.
`0 A check in the amount
`of
`B The Commissionei!_ishereby
`authorized to charge payment of the following fees associated with this
`'credilany.overpayment to Deposit Account No. 04-1415
`communication or
`..
`this sheet Is enclosed.
`A-duplicate copy o
`filing fees required under 37 C.F.R. 1.16.
`El Any additiona
`lication processing fees tinder 37 CFR 1.17.
`0 Any patent ap
`
`In the amount of
`
`\
`
`• A(/'
`S nat
`
`John T. Kennedy
`
`Registration No. 42,717
`Dorsey & Whitney LLP
`Customer No. 20686
`
`•
`
`cc: Scott W. Doyle, Esq. '
`
`._
`
`.
`
`Dated: /24...„:1,,, 3- „ -
`i 4004
`
`V
`
`-
`
`I
`on
`fittil class mall
`Assistant Corn
`20231.
`
`that this document and lee Is being d
`svIth Ma U.S. Pos
`37 C.F.R. 1.8 end Is
`Patents
`
`tea
`ice as
`tossed to the
`ashington, D.C.
`
`\ I - ..
`
`"•
`
`Signalers of
`
`on Melling Corresio
`
`•
`
`or Printed Name of Person Mailing Correspondence
`
`P1 I LARGESEVOe
`
`NFLE 1002 - Page 1'125
`
`

`

`Transaction History Date 2o c0 -
`19
`Date information retrieved from USPTO Patent
`Application Information Retrieval (PAIR)
`system records at www.uspto:bov
`
`••••••••••=n4.
`
`NolicP of Allowahllify
`
`Application No.
`091054,740
`examiner
`
`Applicant(s)
`
`John W. Miller
`
`'Group Art Unit
`2811
`
`wow.,
` L. 11111111111
`
`All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED In this application. I not Included
`herewith (or previously mailed), a Notice of Allowance and Issue Fee Due or other appropriate communication will be mailed
`In due course
`29 This communication Is responsive to the amendment filed 12/5/00
`
`flg The allowed olaim(s) la/oro /8-29 (o-numbered ea 1-12)
`
`• The drawings filed on
`
`are acceptable.
`
`O Acknowledgement Is made of a claim for foreign priority under.3SU S.C. § 119(a)-(d).
`0 All ElSome` Dlone of the CERTIFIED copies of the priority documents have been
`0 received.
`0 received In Application No. (Series Code/Serial Number)
`
`q received In this national stage application from the International Bureau (PCT Rule 17.2(a)).
`'Certified copies not received:
`O Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e).
`
`
`
`A SHORTFNFD STATUTORY PFRIOD FOR RESPONSE to comply with the requirements noted below is set to EXPIRE
`THREE MONTHffiOM THE "DATE MAILED" of this Office action. Failure to timely comply will result in
`ABANDONMENT of this application. Extensions of time may be obtained under the provisions of 37 CFR 1.136(a).
`
`O Note the attached EXAMINER'S AMENDMENT or NOTICE OF INFORMAL APPLICATION, PTO-152, which discloses that
`the oath or declaration is deficient. A SUBSTITUTE OATH OR DECLARATION IS REQUIRED.
`2g Applicant MUST submit NEW FORMAL DRAWINGS
`2g because the originally filed drawings were declared by applicant to be informal.
`0 including changes required by the Notice of Draftsperson's Patent Drawing Review, P10-948, attached hereto or to
`Paper No.
`.
`includings,henges.required by the proposed drawing correction filed on
`approved by the examiner.
`0 Including changes required by the attached Examiner's Amendment/Comment.
`Identifying Indicla such as the application number (see 37 CFR 1.84(c)) should be written on the reverse side of
`the drawings. The drawings should be filed as a separate paper with a transmittal lettter addressed to the Official
`Draftsperson.
`
`, which has been
`
`O Note the attached Examiners comment regarding REQUIREMENT FOR THE DEPOSIT OE BIOLOGICAL MATERIAL
`
`Any response to this letter should include, In the upper right hand corner, the APPLICATION NUMBER (SERIES
`CODE/SERIAL NUMBER). If applicant has received a Notice of Allowance and Issue Fee Due, the ISSUE BATCH NUMBER
`end DATE of the NOTICE OF ALLOWANCE should also be Included.
`
`Attachment(s)
`0 Notice of References Cited, PTO-892
`q Information Disclosure Statement(s), P10-1449, Paper No(s).
`p Notice of Draftsperson's Patent Drawing Review, PTO-94$
`0 Notice of Informal Patent Application, P10-152
`O Interview Summary, P10-413
`0 Examiner's Amendment/Comment
`0 Examiners Comment Regarding Requirement for Deposit of Biological Material
`0 Examiner's Statement of Reasons for Allowance
`
`
`
`Tfadesork am.
`V. S ;Wont
`P10-37 (Rev. 9-95)
`
`Notice of Allowabliity
`
`JOHN W. MILLER
`PRIMARY EXAMINER
`ART UNIT 2811
`
`Part of Paper No.
`
`15
`
`NFLE 1002 - Page 126
`
`

`

`BEST COPY
`
`ARTMENT OF COMMERCE
`UNITED STATES C
`Patent and TradembriC Office
`
`::NOTIDE:OF:ALLOWANCE AND ISSUE FEE DUE
`
`WM01/1219
`ANSTRR, ROTHO4EIN tie aft:NOON
`90 PARK AVEm
`NEW YORK NY 00.14
`
`APPLICATION NO
`
`FILING DATE I• TOTAL CLAIMS
`
`• E XAMINER AND GROUP ART UNIT -
`
`0'9/.064 %.740
`
`113/-410'3/9$
`
`.012-
`
`MiLLER, -.3
`
`2611
`
`DATE MIULED
`12/19/00
`
`fig Named
`Applicant
`
`• •
`1)117)1-7. If-zr..1,
`
`TITLE OF
`iNvENTIOrTi Di A DM- I
`
`2.93. t!8(7
`
`(b)
`
`0 1.)itvs,
`
`t-CCE-•
`
`Ys_11-LTM AND MET ti(:ir)
`
`ATTY'S DOCKET NO.:
`
`CLASS-SUEICLASB'.:
`
`•
`
`'BATCH NO:
`
`-J• APPLN
`
`t:ENTITS1-
`
`2
`
`96262/6
`
`72,-; -1.10. 0110 W79
`
`UTTI. f TY
`
`NO
`
`FEE CUE ,••
`,• ' DATE DUE
`*1240:: 00: 11.,:t/1--of
`
`-
`
`-
`
`. THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND ISALLOWEDFOR1SSUANCE AS
`PROSECUTION ON THE MEB,IT$ IS_OLOSED. '
`
`THE ISSUE FEE MUSTBEPAIDWITHIN.THREEWNTHS'FROMTHEMAILING DATE OF THIS NOTICE OR THIS
`APPLICATIONSHAUBE R?GARDEDAS.AI3ANDONED,_ THIS STATUTORY PERIOD CANNOT RE-EXTENDED..
`
`1-11)W TO RESPOND TO:THIS. NOTICE:.
`I. Review the SMALL ENTITY status shoWn above. •
`If the SMALL ENTITY Is.sho,wri asYES, Verify your -
`current SMALL ENTITY status:
`
`,If the SMALL ENTITY-is shown as NO.
`
`A. If the.statusle changed, pay twice the amount et the
`FEE DUE shOWn above and 'notify the'Patent and
`Tradefnark Office of the Change In status, or
`B. If the Status is the same, 'pay the FEE DUE shown
`above.
`
`B.. File verified statement of Small Entity Status before, or with,
`payritent of 1/2 the,FEE DUE shown above. -
`II. Part B-Issue Fee Transmittal shouldte completed and returned to the Patent'and Trademark Office.(PTO) with your
`ISSUE FEE. Even If the ISSUE FEE hasalready been pald by charge to depoSit account, Part B Issue Fee Transmittal. •
`should be'comploted and returned. - If you'are charging.the ISSUE FEE to your depOsit account; section "4b" of Part
`B,Issue Fee TransmittalahOuldte'completedand an extra copy .of the-form should.be submitted:
`III, All communications regarding this application must giVe:applicatiorrnumberand batch number.
`Please direct all communications prior to..issuanco to;Bdi ISSUEFEE unless advised to the contrary. •
`
`IMPORTANT REMINDERrtitifity patents Issulrig on'applleations tiled on crafter Dec. 12, 1980 .May reqUire payment of
`• mfaintenance fees. It patentee's responsibility:to ensure timely payment of maintenance
`.•
`.
`••
`•
`fees when due.
`.
`-
`PATENT AND TRADEMARK OFFICE COPY
`.
`.PT01.-85 (REV. 10.96) Approved for use innough 06/30/39. (0651.0033)
`
`•
`
`NFLE 1002 - Page 127
`
`

`

`CERTIFICATE OF' MAILING 13Y "EXPRESS MAIL" (37 CFR 1.10)
`Applicant(s): WOLZIEN
`
`Serial No.
`09/054,740
`
`Filing Date
`April 3,1998
`
`Examiner
`J. Miller
`
`•
`
`Docket No.
`0 P F
`v 42,02
`
`3.
`pi,
`
`up Aft Unit
`2611
`
`Invention:
`
`41sit.../AW'
`MEDIA ONLINE SERVICE ACCESS SYSTEM AND METHOD
`
`I hereby certify that the following correspondence:
`
`Transmittal of PaymeJt of Issue Fee (Large Entity); Part B — Issue Fee Transmittal, Transmittal of Formal
`Drawings, 3 Sheets of Formal Drawing, Change of Correspondence Address Application, Return Acknowledgement
`Postcard and Check fdr $1240.00
`
`(Identtly type of correspondence)
`
`is being deposited with the United States Postal Service "Express Mail Post Office to Addressee' service under
`
`37 CFR 1.10 in an envelope addressed to: The Assistant Commissioner,for Patents, Washington, D,C. 20231 on
`March 8:7001.
`(Date)
`
`Jane Lalis/DORSEY & WHITNEY LLP
`(Typed or Printed Name of Person Mailing Correspondence)
`
`(Sign
`
`re of Person Mailing Correspondence)
`
`EL 759 298 787 US
`("Express Mall" Mailing Label Number)
`
`Note: Each paper must nave its own certificate of mailing.
`
`Poamievoz
`
`NFLE 1002 - Page 128
`
`