Appl'n. No. 12/936,395; Amd't. dated March 6, 2013
`Reply to Office Action of October 11, 2012
`
`depend. Applicants respectfully submit that the claims, as amended and for the reasons
`
`presented subsequently, are patentable.
`
`The present invention and McCain are discussed above. Delpuch teaches a
`
`system to enable authoring of content within an interactive television environment.
`
`Claims 4 and 8-9 depend on amended Claim 1. Claims 15 and 19-20 depend on
`
`amended Claim 12.
`
`The deficiencies of McCain to teach each limitation of amended Claims 1 and 12
`
`are discussed above. Delpuch also fails to teach the claims, as amended (specifically the
`
`use of a Player and Application), and thus the combination of McCain and Delpuch fail
`
`to teach each limitation of either Claim 1 or 12, as amended.
`
`The combination of McCain and Delpuch thus cannot be used to establish a
`
`primafacie case of obviousness for any of Claims 4, 8-9, 15, and 19-20, and it is
`
`respectfully requested that the rejection of Claims 4, 8-9, 15, and 19-20 under §103(a) be
`
`withdrawn.
`
`In Paragraph 25 of the Office Action, Claims 10, 21, and 23-28 were rejected
`
`under 35 U.S.C. 103(a) as being unpatentable over McCain in view of Paddon.
`
`Applicants respectfully submit that the claims, as amended and for the reasons presented
`
`subsequently, are patentable.
`
`The present invention and McCain are discussed above.
`
`Paddon teaches device-dependent codes (UI engines 100, 101, or 102) that
`
`execute on a device (corresponding devices 111, 112, or 113) and a server system 130
`
`which interprets device-dependent codes (a "rule set"). As discussed in paragraph [0014],
`
`the UI Engine may display a UI component as requested by the application on the device
`
`by providing a request to a server system for combining a rule set for a given mobile
`
`communication device, application and screen with content obtained from a third party
`
`content provider via an adapter. The adapter allows conversion of the native format of
`
`the content on the content provider's system to a format suitable for combination with a
`
`rule set in order to form a UI component for transmittal to a mobile communication
`
`device. The rule set determines what events and data are sent back and when the events
`
`and data are sent to the rule interface component when a particular interface element for
`
`Page 13 of 16
`
`IPR2021-01146 Page 01022
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`

`

`Appl'n. No. 12/936,395; Amd't. dated March 6, 2013
`Reply to Office Action of October 11, 2012
`
`example a button is asserted by a user.
`
`In short, as shown in FIG. 1, reproduced below, rule set 150 is interpreted by the
`
`server system 130, gathers information from content providers 160, etc., and then delivers
`
`content to devices 110, etc. There is no teaching or suggestion of providing device(cid:173)
`
`dependent codes (Paddon 's "rule set") to devices.
`
`Figure 1
`
`Claims 10, 21, 23 and 28 have been amended. Claim 10 depends on amended
`
`Claim 1, Claim 21 depends on amended Claim 12, and Claims 24-28 depend on amended
`
`Claim 23.
`
`Claims 10 and 21
`
`Amended Claims 10 and 21 depend on Claims 1 and 12, respectively, and recite:
`
`"such that, when the Application and Player are provided to the device, and when the
`
`Player is executed on the device, said Player interprets said Application to provide the
`
`web component corresponding to the selected UI object and dynamically received values
`
`of the web component on the display of the device." Claims 10 and 21 are patentable for
`
`at least the following reasons.
`
`Page 14 of 16
`
`IPR2021-01146 Page 01023
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`

`

`Appl'n. No. 12/936,395; Amd't. dated March 6, 2013
`Reply to Office Action of October 11, 2012
`
`First, Claims 1 and 12 are amended and, for the reasons presented above,
`
`Applicants submit that McCain does not anticipate amended Claim 1. The deficiencies in
`
`McCain are not remedies by Paddon, which does not teach or suggest an authoring tool
`
`that provides both device-dependent and device-independent code. For at least this
`
`reason, the combination of McCain and Paddon cannot be used to make a prima facie
`
`case of obviousness of either Claim 1 or 12 or of dependent claims 10 or 21.
`
`Further, McCain teaches the benefits of providing a single code to the device.
`
`There is therefore no motivation within McCain to modify the teachings of McCain to
`
`incorporate incorporating device-independent codes.
`
`In addition, neither McCain nor Paddon teach an authoring tool providing both
`
`device-dependent and device-independent code to the device. McCain does not teach an
`
`authoring tool providing device-independent code to a device, and Paddon teaches
`
`providing device-independent code to a separate server.
`
`Lastly, Claim 10 and 21 recite that "when the Application and Player are provided
`
`to the device, and when the Player is executed on the device, said Player interprets said
`
`Application to provide the web component corresponding to the selected UI object and
`
`dynamically received values of the web component on the display of the device."
`
`McCain teaches a web browser which interprets web component data, and
`
`Paddon teaches that the device-independent code (the rule set) resides on a server
`
`different from the device.
`
`For any of these reasons, a primafacie case of obviousness cannot be made
`
`regarding either of Claims 10 or 21, and Applications respectfully request that the
`
`rejection of Claims 10 and 21 under 35 U.S.C. 103(a) be withdrawn.
`
`Claims 23-28
`
`Claims 24-28 depend on Claim 23. Claim 23 has been amended to recite, in part,
`
`a method ... comprising:
`
`accepting a first code over the network, where said first code is device(cid:173)
`
`dependent;
`
`providing a second code over the network, where said second code is
`
`device-independent and includes symbolic names corresponding to a web
`
`component; and
`
`Page 15 of 16
`
`IPR2021-01146 Page 01024
`
`

`

`Appl'n. No. 12/936,395; Amd't. dated March 6, 2013
`Reply to Office Action of October 11, 2012
`
`executing said first code and said second code on the device to provide
`
`web components corresponding to the symbolic names over the network and in
`
`response to the second code.
`
`Claim 24-28 depend on Claim 23, which has been amended. Paragraph 28 of the
`
`Office Action states that McCain discloses the invention of the original Claim 23 with
`
`the exception of that "said second code is device-independent," and that this is taught by
`
`Paddon.
`
`As discussed above regarding the rejection of Claim 10, where the first code of
`
`Claim 23 is the Player, the second code of Claim 23 is the Application, and the third code
`
`of Claim 23 is device-independent code provided by the web component, the claims, the
`
`cited references do not teach each limitation of Claim 23, as amended.
`
`The combination of references thus fails to teach executing the claimed device(cid:173)
`
`independent and device-dependent codes to the device, as claimed.
`
`For any of these reasons, a primafacie case of obviousness cannot be made
`
`regarding of amended Claim 23 or of Claims 24-28, which depend on amended Claim 23,
`
`and Applications respectfully request that the rejection of Claims 23-28 under 35 U.S.C.
`
`103(a) be withdrawn.
`
`Applicants respectfully submit that the application is in condition for allowance
`
`and action to that end is respectfully solicited. If the Examiner should feel that a
`
`telephone interview would be productive in resolving any issues in the case, please
`
`telephone the undersigned at the number listed below.
`
`March 6, 2013
`
`1563 Solano Ave., #206
`Berkeley, CA 94705
`Tel: (510) 841-4711; Fax: (510) 280-2984
`
`Respectfully submitted,
`
`/Steven R. Vosen/
`Steven R. Vosen
`Registration No. 45,186
`
`Page 16 of 16
`
`IPR2021-01146 Page 01025
`
`

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`Electronic Patent Application Fee Transmittal
`
`Application Number:
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`Filing Date:
`
`12936395
`
`03-Nov-201 0
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`Title of Invention:
`
`SYSTEMS AND METHODS FOR PRESENTING INFORMATION ON MOBILE
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`
`First Named Inventor/Applicant Name:
`
`Steven H. Rempell
`
`Filer:
`
`Steven R Vosen/Christine Chan
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`IPR2021-01146 Page 01026
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`IPR2021-01146 Page 01027
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`SYSTEMS AND METHODS FOR PRESENTING INFORMATION ON MOBILE
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`Steven R Vosen/Christine Chan
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`Filer Authorized By:
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`IPR2021-01146 Page 01028
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`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
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`Doc Code: TRAN.LET
`Document Description: Transmittal Letter
`
`PTO/SB/21 (07-09)
`Approved for use through 07/31/2012. 0MB 0651-0031
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
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`TRANSMITTAL
`FORM
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`(to be used for all correspondence after initial filing)
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`First Named Inventor
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`Art Unit
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`Examiner Name
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`Attorney Docket Number
`
`November 3. 2010
`
`Steven H. Rempell
`
`2178
`
`XuYang Xia
`
`XPR.002US0
`
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`I
`I Remarks
`This Response is in reply to the Office Action that w;is m;iiled on October 11, ~!01 ~!
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`Document(s)
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`Incomplete Application
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`under 37 CFR 1.52 or 1.53
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`r
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`/Steven R. Voseni
`
`Steven R. Vosen
`
`March 6, 2013
`
`I Reg. No. 145,186
`
`CERTIFICATE OF TRANSMISSION/MAILING
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`IPR2021-01146 Page 01031
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`

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`PTO/SB/22 (10-12)
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`I Filed November 3, 2010
`I Examiner Xu Yang Xia
`
`Application Number 121936 395
`'
`SYSTEMS AND METHODS FOR PRESENTING INFORMATION ON MOBILE DEVICES
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`
`For
`
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`/Steven R. Vosen/
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`March 6, 2013
`
`Date
`(510) 841-4711
`Telephone Number
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`Substitute for Form PTO-875
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`N/A
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`N/A
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`<(
`
`(Column 1)
`
`(Column 2)
`
`(Column 3)
`
`ADDITIONAL
`FEE($)
`
`X $31 =
`
`X $125 =
`
`TOTAL
`ADD'L
`FEE
`
`0
`0
`
`0
`
`OR
`
`X $
`
`OR
`
`X $
`
`=
`
`=
`
`OR
`
`OR
`
`TOTAL
`ADD'L
`FEE
`
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`
`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
`
`*
`
`*
`
`Minus
`
`**
`
`Minus
`
`***
`
`=
`
`=
`
`f--
`z
`Total (37 CFR
`w
`1.16(i\\
`~ Independent
`0
`(37 CFR 1.16(hll
`z D Application Size Fee (37 CFR 1.16(s))
`w
`~
`□ FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM (37 CFR 1.16(j))
`<(
`
`PRESENT
`EXTRA
`
`RATE($)
`
`ADDITIONAL
`FEE($)
`
`RATE($)
`
`ADDITIONAL
`FEE($)
`
`X $
`
`X $
`
`=
`
`=
`
`OR
`
`X $
`
`OR
`
`X $
`
`=
`
`=
`
`OR
`
`* If the entry in column 1 is less than the entry in column 2, write "0" in column 3.
`** If the "Highest Number Previously Paid For" IN THIS SPACE is less than 20, enter "20".
`*** If the "Highest Number Previously Paid For" IN THIS SPACE is less than 3, enter "3".
`The "Highest Number Previously Paid For" (Total or Independent) is the highest number found in the appropriate box in column 1.
`
`TOTAL
`TOTAL
`ADD'L
`ADD'L
`FEE
`FEE
`Legal Instrument Examiner:
`/STELLA LITTLE/
`
`OR
`
`This collection of 1nformat1on 1s required by 37 CFR 1.16. The 1nformat1on 1s required to obtain or retain a benefit by the public which 1s to file (and by the US PTO to
`process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 12 minutes to complete, including gathering,
`preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you
`require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S.
`Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
`ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`IPR2021-01146 Page 01033
`
`

`

`UNITED STA IBS p A IBNT AND TRADEMARK OFFICE
`
`UNITED STA TES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria., Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`12/936,395
`
`11/03/2010
`
`Steven H. Rempell
`
`XPR.002US0
`
`2369
`
`40280
`7590
`SIBVEN VOSEN
`1563 SOLANO A VENUE #206
`BERKELEY, CA 94707
`
`04/01/2013
`
`EXAMINER
`
`XIA,XUYANG
`
`ART UNIT
`
`PAPER NUMBER
`
`2178
`
`MAIL DATE
`
`DELIVERY MODE
`
`04/01/2013
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`IPR2021-01146 Page 01034
`
`

`

`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`12/936,395
`
`Examiner
`
`REMPELL ET AL.
`
`Art Unit
`
`2178
`XUYANG XIA
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;J. MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions 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 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
`
`1 )IZI Responsive to communication(s) filed on 06 March 2013.
`2a)IZI This action is FINAL.
`2b)O This action is non-final.
`3)0 An election was made by the applicant in response to a restriction requirement set forth during the interview on
`__ ; the restriction requirement and election have been incorporated into this action.
`4)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 G.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)1Zl Claim(s) 1-28 is/are pending in the application.
`5a) Of the above claim(s) __ is/are withdrawn from consideration.
`6)0 Claim(s) __ is/are allowed.
`7)1Zl Claim(s) 1-28 is/are rejected.
`8)0 Claim(s) __ is/are objected to.
`9)0 Claim(s) __ are subject to restriction and/or election requirement.
`
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway
`program at a participating intellectual property office for the corresponding application. For more information, please see
`htto:/iwww.uspto.aov/oatents/init events/pph/index.is_p or send an inquiry to PPHfeedback@uspto.qov.
`
`Application Papers
`
`10)0 The specification is objected to by the Examiner.
`11 )IZI The drawing(s) filed on 04 October 2010 is/are: a)IZI accepted or b)O objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12)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:
`1.0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No. __ .
`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)).
`*Seethe attached detailed Office action for a list of the certified copies not received.
`
`Attachment{s)
`1) [8J Notice of References Cited (PTO-892)
`2) 0 Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date __ .
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 09-12)
`
`3) 0 Interview Summary (PTO-413)
`Paper No(s)/Mail Date. __ .
`4) 0 Other: __ .
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20130312
`
`IPR2021-01146 Page 01035
`
`

`

`Application/Control Number: 12/936,395
`Art Unit: 2178
`
`Page 2
`
`DETAILED ACTION
`
`This final rejection is in response to the amendment filed on: 3/6/2013.
`
`Claims 1,3-7 10, 12, 14-18,21-25 and 28 are amended. Thus, claims 1-28 are pending.
`
`The following rejections are withdrawn, in view of new grounds of rejection necessitated
`
`by applicant's amendments:
`
`Claims 1-3,5-7,11-14,16-18,22 are rejected under 35 U.S.C. 102(b) as being
`
`anticipated by McCain US Patent Application Publication No.: 2005/0273705.
`
`Claims 4,8-9,15,19-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`McCain US Patent Application Publication No.: 2005/0273705 in view of Delpuch et
`
`al. US Patent Application Publication No.: 2004/0055017.
`
`Claims 10,21,23-28 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`McCain US Patent Application Publication No.: 2005/0273705 in view of Paddon et
`
`al. US Patent Application Publication No: 2006/0063518
`
`Claim Objections - 35 USC§ 101
`
`1.
`
`35 U.S.C. 101 reads as follows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
`matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
`conditions and requirements of this title.
`
`Claims 1-11 are objected under 35 U.S.C. § 101 as not falling within one of the
`
`four statutory categories of invention. Claims 1-11 are non-statutory because claims 1:
`
`11..are directed to a system that does not have any physical structural elements. The
`
`system of claims 1-11
`
`include a database and an authoring tool. The broadest
`
`reasonable
`
`interpretation of
`
`the claims means
`
`it
`
`includes an entirely software
`
`IPR2021-01146 Page 01036
`
`

`

`Application/Control Number: 12/936,395
`Art Unit: 2178
`
`Page 3
`
`implementation. The body of the claims is directed to software component alone, With
`
`no other structure in the independent claim to rely on, the alleged "system" of the claims
`
`turns out to be an abstract idea for being a computer program per se, and, thus, does
`
`not fit within the definition of the categories of patentable subject matter set forth in §
`
`101. Therefore, the claims are non-statutory.
`
`Note that Applicant may resolve the deficiency through use of the suggestion in
`
`the OG notice, but that it is not the sole manner of correction. Either way, ensure the
`
`new claim terminology has antecedent basis in the specification (37 CFR 1.75(d)(1) and
`
`MPEP 608.01 (o)) and note that "rephrasing" the specification is acceptable and would
`
`normally be supported by the original disclosure so as not to constitute new matter
`
`(MPEP 2163.07).
`
`Claim Rejections - 35 USC § 103
`
`2.
`
`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.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`USPQ 459 (1966), that are applied for establishing a background for determining
`obviousness under 35 U.S.C. 103(a) are summarized as follows:
`1.
`Determining the scope and contents of the prior art.
`2.
`Ascertaining the differences between the prior art and the claims at issue.
`3.
`Resolving the level of ordinary skill in the pertinent art.
`4.
`Considering objective evidence present in the application indicating
`obviousness or nonobviousness.
`
`IPR2021-01146 Page 01037
`
`

`

`Application/Control Number: 12/936,395
`Art Unit: 2178
`
`Page 4
`
`3.
`
`Claims 1-3,5-7,10-14,16-18,21-28 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over McCain US Patent Application Publication No.: 2005/0273705 in
`
`view of Sidman US Patent Application Publication No.: 20040163020 and Paddon
`
`et al. US Patent Application Publication No: 2006/0063518.
`
`In regard to claim 1, McCain discloses the claimed invention (Currently
`
`Amended): A system (Paragraph [0002]) for generating code (paragraph [0081]) to
`
`provide content on a display of a device, (paragraph [0041], [0042]) said system
`
`comprising: a database obtainable over a network, (Fig. 1, paragraph [0070]) an
`
`authoring tool (paragraph [0023] ) configured to: define a user interface illll_object for
`
`presentation on the display, (paragraph [0072]) seleet a where said UI object
`
`corresponds to a web component of a web service included in said registry, (paragraph
`
`[0072]-[0073],[0080], [0109]-[0113], see below for registry) produce an Application.
`
`(paragraph [0109]-[0113])
`
`But McCain fails to explicitly teach "a database including a registry of one or
`
`more web components related to inputs and/or outputs of a web service , where each
`
`web component includes the symbolic names of inputs and/or outputs associated with
`
`teach web services; included in said registry, select a symbolic name from said web
`
`component corresponding to the defined UI object, associate said objeet with said the
`
`selected symbolic name with the defined UI obiect, produce an Application including the
`
`selected symbolic name of the defined UI obiect and symbolic name as