Notice of References Cited
`
`Application/Control No.
`
`12/299,505
`Examiner
`ANGELA HOLMES
`U.S. PATENT DOCUMENTS
`
`Applicant(s)/Patent Under
`Reexamination
`KNIGHT ET AL.
`Art Unit
`2438
`
`
`
`Document Number
`Country Code-Number-Kind Code
`
`Date
`MM-YYYY
`
`09-2006
`
`Slate, Michael L.
`
`Page 1 of |
`
`eg
`Classification
`
`709/217
`
`*A copyof this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
`Dates in MM-YYYYformat are publication dates. Classifications may be US orforeign.
`U.S. Patent and Trademark Office
`PTO-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 20120305
`
`TRILLER EXHIBIT 1004-00491
`
`

`

`EAST Search History
`
`EAST Search History
`
`EAST Search History (Prior Art)
`
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`
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`
`
`4455/3.06 and drm andcellular and remote
`
`and application and download$3 and
`wireless and music and subscri$7 and billing
`yand time and metadata and recommend$5
`
`
`#455/3.06 and drm and cellular and remote
`
`Yand application and download$3 and
`“wireless and music and subscri$7 and billing ;
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`#455/3.06 and drm and cellular and remote
`and application and download$3 and
`
`“wireless and music and subscri$7 andbilling ;
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`and application and download$3 and
`‘wireless and music and subscri$7 and billing ;
`
`
`#455/3.06 and drm andcellular and remote
`and application and download$3 and
`wireless and music and subscri$7
`
`
`
`
`
`
`1455/3.06 and drm andcellular and remote
`
`and application and download$3 and
`wireless and music
`
`
`#455/3.05 and drm and cellular and remote
`
`and application and download$3 and
`wireless and music
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`
`
`41455/3.04 and drm andcellular and remote
`
`and application and download$3 and
`wireless and music
`ERssnaennned havaseancnneenead Manennaneeaeanannyayacaeeennaeeaseuaeeeeesyaaeaeespenenageneseeaseaseaneaenasayaeeeaeseaaeasasd Peseasgeseaasasenseee basgaseasesneseasearsasse boasssavaneaseaaneandbesaavaseasepaeeaeaisasseaes
`
`
`%455/3.04 and drm andcellular and remote
`
`and application and download$3 and
`iwireless
`
`
`
`#455/3.04 and drm andcellular and remote
`and application and download$3
`
`
`3 SEERenin boaseeneed baeeeecereeeneeiad faeeeeeseeeeeeneeneenaet
`
`
`
`#455/3.04 and drm andcellular and remote
`and application
`
`
`Save eed firnnnnnnnnnEEEne Sante iene hennerdinner
`
`file:///C\/Users/aholmes/Documents/e-Red%20Folder/12299505/EASTSearchHistory.12299505_AccessibleVersion.htm[3/5/2012 3:40:45 PM]
`
`TRILLER EXHIBIT 1004-00492
`
`

`

`EAST Search History
`
`1455/3.03 and drm and cellular
`
`#455/3.03 and drm
`
`s SERePoncebeeen faeces
`
`
`41455/3.03 and drm and cellular and remote
`yand application
`
`SBaneeencet hacencenceed haceeeeeeEEEEEEEEEEEEEEnenteeteet Beccaennened haeceereneeereteenhaeretennerbeeencentreeen!
`
`1455/3.03 and drm and cellular and remote
`
`
`
`
`2012/03/05:
`1455/3.04 and digital adj music and drm and :
`15:35
`‘icellular and remote and server and subscri$5:
`
`and media and mobile and download$3 and
`wireless and software adj application and
`
`Sanennecend Receceneenecenend ManeteeceneeeeeeereeenrereceeepeeeEEEEUEELEREEPELEEEEEELEDEEEEREREEEEEbeeenteneteeeerennesy Pxaeneneereeeneenened haneeneneesecereeeeserened hoeeeeeneeresenenent bereeeerereeeeeererenennened
`
`#455/3.03 and digital adj music and drm and
`icellular and remote and server and subscri$5:
`and media and mobile and download$3 and ;
`wireless and software adj application and
`
`
`
`4709/219 and digital adj music and drm and
`
`icellular and remote and server and subscri$5'
`
`land media and mobile and download$3 and :
`‘wireless and software adj application and
`
`
`4726/26 and digital adj music and drm and;
`‘cellular and remote and server and subscri$5:
`and media and mobile and download$3 and |
`
`wireless and software adj application and
`
`
`digital adj music and drm and cellular and
`remote and server and subscri$5 and media
`and mobile and download$3 and wireless
`
`
`
`
`‘idigital adj music and drm andcellular and
`remote and server and subscri$5 and media :
`
`and mobile and download$3 and wireless$2_;
`= SenEEE;EEEEEEEEEed Reena beeen beeendenen
`
`
`digital adj music and drm and cellular and:
`
`remote and server and subscri$5 and media :
`and mobile and download$3 and wireless$2_
`
`
`
` ‘digital adj music and drm and cellular and
`remote and server and subscri$5 and media i
`dand mobile and download$3 and wireless$2 :
`
`
`
`
`
`digital adj music and drm andcellular and
`telephone and remote and server and
`
`isubscri$5 and media and mobile and
`
`idownload$3 and wireless$2
`
`
`digital adj music and drm andcellular and
`telephone and remote and server and
`
`usubscri$5 and media and mobile and
`
`file:///C\/Users/aholmes/Documents/e-Red%20Folder/12299505/EASTSearchHistory.12299505_AccessibleVersion.htm[3/5/2012 3:40:45 PM]
`
`TRILLER EXHIBIT 1004-00493
`
`

`

`EAST Search History
`
`‘digital adj music and drm and cellular and
`telephone and remote and server and
`isubscri$5 and media and mobile
`
`‘digital adj music and drm andcellular and
`telephone and remote adj server and
`subscri$5 and media and mobile
`
`digital adj music and drm andcellular adj
`telephone and remote adj server and
`usubscri$5 and media and mobile
`
`‘digital adj music and drm and cellular adj
`telephone and remote adj server and
`usubscri$5 and media
`
`digital adj music and drm and cellular adj
`telephone and remote adj server and
`usubscri$5
`
`1726/26 and digital adj music
`
`1726/26 and digital adj music and drm and
`cellular adj telephone and remote adj server :
`
`1726/26 and digital adj music and drm and
`‘icellular adj telephone
`
`4726/26 and digital adj music and drm
`
`EAST Search History (Interference)
`
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`
`3/5/2012 3:40:42 PM
`C:\ Users\ aholmes\ Documents\ EAST\ Workspaces\ security.wsp
`
`file:///C\/Users/aholmes/Documents/e-Red%20Folder/12299505/EASTSearchHistory.12299505_AccessibleVersion.htm[3/5/2012 3:40:45 PM]
`
`TRILLER EXHIBIT 1004-00494
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`

`

`Application/Control No.
`
`Index of Claims
`
`12299505
`
`Applicant(s)/Patent Under
`Reexamination
`KNIGHT ET AL.
`
`Examiner
`
`Art Unit
`
`ANGELA HOLMES
`
`
`
`v -|CancelledRejected
`
`
`
`
`Restricted =|
`AN] Non-Elected
`Interference
`Allowed
`
`U1 Claims renumberedin the sameorder as presented by applicant
`
`OU CPA
`
`OO T.D.
`
`OL
`
`sR.1.47
`
`CLAIM
`Final
`Original
`
`DATE
`[06/16/2011 [03/05/2012 PT
`po
`
`
`
`=a
`
`=WOOLYMMM]MM]MY[PM]MY]Ph]hy]=/O/0/0O/NIODO]a);R]@]—yO;]O;/aInN|]oDa
`
`
`
`
`
`
`
`
`
`=a/a =
`lfalfa BR
`a/a]/. a
`
`
`
`
`
`
`
`W@W]ao]oBY]oO]Pp
`wo]ow
`
`U.S. Patent and Trademark Office
`
`Part of Paper No. :
`
`
`
`TRILLER EXHIBIT 1004-00495
`
`

`

`Application/Control No.
`
`Index of Claims
`
`12299505
`
`Applicant(s)/Patent Under
`Reexamination
`KNIGHT ET AL.
`
`Examiner
`
`Art Unit
`
`ANGELA HOLMES
`
`
`
`v -|CancelledRejected
`
`
`
`
`Restricted =|
`AN] Non-Elected
`Interference
`Allowed
`
`U1 Claims renumberedin the sameorder as presented by applicant
`
`CLAIM
`
`OU CPA
`
`DATE
`
`OO T.D.
`
`OL
`
`sR.1.47
`
`aOC
`aCC
`aCC
`oyoO
`bh =
`
`
`
`
`
`
`
`
`
`isKR
`
`
`
`aoDID!HA!HA!aiallalalala};aya]a&&AA =
`
`aa
`
`oO
`
`~I
`
`APAPSEA}APAEAAPAPAPAPSPSPATAAPAPAPATS
`
`
`
`ATA]APAPA]STATSPATSESPAPSESPATSTATAPSTATS
`
`xq
`
`4
`
`
`
`p}]a :
`
`
`
`U.S. Patent and Trademark Office
`
`Part of Paper No. :
`
`TRILLER EXHIBIT 1004-00496
`
`

`

`Application/Control No.
`
`Index of Claims
`
`12299505
`
`Applicant(s)/Patent Under
`Reexamination
`KNIGHT ET AL.
`
`unk
`Examiner
`| il | l
`ll
`
`
`
`mires 'N|Non-Etected|Elected A)Appeal|Cancelled
`
`
`> Allowed B Restricted 1]Interference|0] Objected
`
`ANGELA HOLMES
`
`5438
`
`—
`
`
`
`U1 Claims renumberedin the sameorder as presented by applicant
`
`OU CPA
`
`OO T.D.
`
`OL
`
`sR.1.47
`
`DATE
`CLAIM
`Frat[orignalfessorfoseseniey
`
`U.S. Patent and Trademark Office
`
`Part of Paper No. :
`
`TRILLER EXHIBIT 1004-00497
`
`

`

`
`Application/Control No.
`Applicant(s)/Patent Under
`Reexamination
`KNIGHT ETAL.
`
`Search Notes
`
`12299505
`
`Examiner
`
`Art Unit
`
`
`
`
`
`ANGELA HOLMES
`
`2438
`
`SEARCHED
`
`Pate _|
`
`—Pate_|__Examiner_|6/16/2011
`Inventors search: mark stephen knight, michael ian lamb, robert john eo6/201 1
`at__
`
`SEARCH NOTES
`
`INTERFERENCE SEARCH
`
`lewis, stephen william pocock, philip anthony sant, mark peter sullivan,
`christopher john evans
`726/26 anddigital adj music and download$4 and wireless and drm
`709/219 and digital adj music and download$4 and wireless and drm
`
`drm and download$5 and wireless and music and unlimited adj
`
`6/16/2011
`6/16/2011
`
`reer6/2011
`
`ah
`
`download$5 and subscri$7
`Search terms: cellular mobile phone, drm, downloading, remote, server,
`subscription, media,digital combined with 726/26 and 709/192, 455/3.03-
`
`3.06
`Consulted 101 panel for claims 51 and 74.
`3/12/2012
`Consulted Taghi Arani
`3/16/2012
`
`
`
`/ANGELA HOLMES/
`Examiner.Art Unit 2438
`
`
`
`U.S. Patent and Trademark Office
`
`Part of Paper No.
`
`: 20120305
`
`TRILLER EXHIBIT 1004-00498
`
`

`

`PATENT
`
`Docket No. 357831.00003
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Mark S. KNIGHTetal.
`INVENTORS:
`APPLICATION NO. 12/299,505
`FILED:
`May20, 2009
`
`Confirmation No, 1133
`Examiner: A. Holmes
`Group Art Unit: 2438
`
`TITLE:
`
`METHODOF PROVIDING DIGITAL RIGHTS
`
`MANAGEMENTFOR MUSIC CONTENT BY MEANS OF A
`FLAT-RATE SUBSCRIPTION
`
`FILED ELECTRONICALLY ON December16, 2011
`
`MAIL STOP AMENDMENT
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPLY AND AMENDMENT UNDER37 C.F.R. $1.01
`TO EXAMINER'S ACTION MAILED JUNE 23, 2011
`
`Sir:
`
`This is in response to the Office Action mailed June 23, 2011, having a period for
`
`response set to expire on September 23, 2011. A Petition extending the period for response for
`
`three months, to December 23, 2011, is included herein, along with authorization to charge the
`
`extension fee to Deposit Account No, 50-4364. The following amendments and remarks are
`
`respectfully submitted.
`
`Amendmentsto the claims begin on page 2 of this paper; Remarks begin on page 9 ofthis
`
`paper.
`
`1359410.1 12/16/11
`
`TRILLER EXHIBIT 1004-00499
`
`

`

`PATENT
`Application No. 12/299,505
`
`Docket No. 357831.00003
`Page 2
`
`In the Claims
`
`Claims 1 to 50 (Cancelled)
`
`51. (Currently amended)
`
`A cellular mobile telephone pertable-wireless-computinge
`
`device programmed with a software application that enables digital music content to be
`
`downloaded and used on the eempatine device; in which
`
`(a)
`
`the application enables an end-userto directly browse and search music content on
`
`a remote server using a cellular wireless network; and to download music content from that
`
`remote server using the cellular wireless network; and
`
`(b)
`
`the application includes or interacts with a digital rights management program
`
`whose operation can be remotely configured (i) to enable unlimited legal downloadsofdifferent
`
`music tracks to the device whilst a subscription service between the device and the remote server
`
`is valid for the device or user associated with that device and (ii) to enable any of those tracks
`
`stored on the device to be played so long as the subscription service has not terminated.
`
`52. (Previously presented)
`
`The device of Claim 51 in which the application uses a
`
`multithreaded architecture to balance the computational demands of network and/or music track
`
`catalogue access; and the computational demands of one or more of: the user interface of the
`
`application; the DRM program; media operations.
`
`53. (Previously presented)
`
`The device of Claim 52 in which the multithreaded
`
`architecture uses parallel download threadsso that large objects can be downloaded to the device
`
`in parallel as a background process.
`
`1359410.1 12/16/11
`
`TRILLER EXHIBIT 1004-00500
`
`

`

`PATENT
`Application No. 12/299,505
`
`Docket No. 357831.00003
`Page 3
`
`54. (Previously presented)
`
`The device of Claim 51 in which the application is adapted
`
`to handle latency inherent in mobile networks and intermittent connectivity by intelligently
`
`knowing how muchofa file has been downloaded andto ask only for any residualpart of a file
`
`that has not been downloaded.
`
`55. (Previously presented)
`
`The device of Claim 51 in whichthe application includes a
`
`scheduler for requesting different objects and data from the server, with priority being
`
`automatically determined by the application.
`
`56. (Previously presented)
`
`The device of Claim 51 in whichthe application usestrack
`
`meta-data that is formed as a separate meta-data layer and defines attributes of tracks, the meta-
`
`data being external to a music track to enable sharing and browsingoftrack information without
`
`needing to distribute the related music trackfiles.
`
`57. (Previously presented)
`
`The device of Claim 51 in which intelligent memory
`
`management automatically deletes least used tracks to make space for newly downloadedtracks.
`
`58. (Previously presented)
`
`The device of Claim 51 in which the digital rights
`
`management program can be remotely configured such that defined, downloaded music tracks
`
`can still be played even if the subscription service is terminated.
`
`1359410.1 12/16/11
`
`TRILLER EXHIBIT 1004-00501
`
`

`

`PATENT
`Application No. 12/299,505
`
`Docket No. 357831.00003
`Page 4
`
`59. (Previously presented)
`
`The device of Claim 51 in which a billing infrastructure
`
`for the subscription service is part of the billing infrastructure provided by a network operator
`
`that controls the wireless network.
`
`60. (Previously presented)
`
`The device of Claim 51 in which periodically rolling or
`
`one-off subscription (e.g. daily, weekly or monthly) is achieved by linking the remote
`
`configuration ofthe digital rights managementprogram tothe billing infrastructure provided by
`
`the network operator that controls the wireless network.
`
`61. (Previously presented)|The device of Claim 51 in which the application has been
`
`automatically adapted to parameters associated with the computing device without end-user
`
`input, in which the parameters define one or moreof:
`
`(a)
`
`computing capabilities of the device.
`
`(b)
`
`a set of media files and formats that can be shown via Java, including audio,
`
`pictures, video, and animations on the device.
`
`(c)
`
`memory limitations of the device.
`
`(d)
`
`a set of media files and formats that the device’s operating system can handle.
`
`(e)
`
`how the device handles a network connection.
`
`(f)
`
`networking capabilities and handling ofthe device, including one or more of CSD,
`
`GPRS, 2G, 2.5G, 3G, WAP, SMS, Bluetooth, Infrared, Wi-Fi, WiMAX.
`
`1359410.1 12/16/11
`
`TRILLER EXHIBIT 1004-00502
`
`

`

`PATENT
`Application No. 12/299,505
`
`Docket No. 357831.00003
`Page 5
`
`62. (Previously presented)
`
`‘The device of Claim 51 in which the application records,
`
`and feeds back to a remote server, detailed end-userlistening data.
`
`63. (Previously presented)
`
`The device of Claim62 in which the data includes how
`
`long tracks have beenlistened to.
`
`64. (Previously presented)
`
`The device of Claim 62 in which the data includes what
`
`tracks are skipped through and when.
`
`65. (Previously presented)
`
`‘he device of Claim 62 in which the application displays
`
`targeted newsfiltered according to the end-user’s playback habits.
`
`66. (Previously presented)
`
`The device of Claim62 in whichthe datais locally cached
`
`on the device and then sent back to the server as a piggyback over a communication that happens
`
`anyway.
`
`67. (Previously presented)
`
`The device of Claim 66 in which the device will pre-
`
`emptively send the data back without waiting for the communication expected to happen anyway,
`
`only if the user has not connected for more than a set time.
`
`1359410.1 12/16/11
`
`TRILLER EXHIBIT 1004-00503
`
`

`

`PATENT
`Application No. 12/299,505
`
`Docket No. 357831.00003
`Page 6
`
`68. (Previously presented)
`
`The device of Claim 62 in whichthe data is used to enrich
`
`a music suggestion engine that provides music track suggestions for display on the device.
`
`69. (Previously presented)
`
`The device of Claim 51 in which the application creates,
`
`manages and displays shared playlists.
`
`70. (Previously presented)
`
`The device of any Claim 51 in which the application
`
`displays playlist charts generated by users based on play behaviour.
`
`71. (Previously presented)
`
`The device of Claim 51 in which the application interacts
`
`with music recommendation systems.
`
`72. (Previously presented)
`
`The device of Claim 51 in which multiple such devices can
`
`all be synchronised by wireless or wire via the server to give same view of metadata (e.g.
`
`playlists, friends, favourite artists, albums andtracks etc) irrespective of which device a user
`
`operates.
`
`73. (Previously presented)
`
`The device of Claim 51 in which playlists are stored on the
`
`server as meta-data defining the tracks in the playlist, the meta-data being separate from the
`
`tracks themselves and being capable of being sent more efficiently overthe wireless network than
`
`the tracks themselves.
`
`1359410.1 12/16/11
`
`TRILLER EXHIBIT 1004-00504
`
`

`

`PATENT
`Application No. 12/299,505
`
`Docket No. 357831.00003
`Page 7
`
`74, (Currently amended)
`
`A software application for a cellular mobile telephone
`
`portable-witeless-computing device and that enables digital music content to be downloaded and
`
`used on the computing device; in which:
`
`(a)
`
`the application enables an end-userto directly browse and search music content on
`
`a remote server using a cellular wireless network; and to download music content from that
`
`remote server using the wireless network; and
`
`(b)
`
`the application includes or interacts with a digital rights management program
`
`whose operation can be remotely configured (i) to enable unlimited legal downloads of
`
`different music tracks to the device whilst a subscription service between the device and the
`
`remote serveris valid for the device or user associated with that device and(ii) to enable any
`
`of those tracks stored on the device to be played so long as the subscription service has not
`
`terminated.
`
`75. (New) A music distribution system comprising:
`
`(a)
`
`(b)
`
`a remote server for storing music content;
`
`multiple mobile telephones each adapted to enable digital music content to be
`
`downloadedover a cellular wircless nctwork from the server and used on cach mobile
`
`telephone, each mobile telephone including a software application, the application having
`
`been automatically adapted to parameters associated with the mobile telephone without end-
`
`user input; and the application adapted to enable an end-user to browse and search music
`
`content on the remote server using the cellular wireless network, to download music content
`
`from that remote server using the cellular wireless network and to playback and managethat
`
`downloaded music content; the application adapted to includeadigital rights management
`
`system that enables unlimited legal downloads of different music tracks to the device and also
`
`1359410.1 12/16/11
`
`TRILLER EXHIBIT 1004-00505
`
`

`

`PATENT
`Application No. 12/299,505
`
`Docket No. 357831.00003
`Page 8
`
`enables any of those tracks stored on the device to be played so long as a subscription service
`
`has not terminated.
`
`1359410.1 12/16/11
`
`TRILLER EXHIBIT 1004-00506
`
`

`

`PATENT
`Application No. 12/299,505
`
`Docket No. 357831.00003
`Page 9
`
`REMARKS
`
`Petition for Extension of Time Under 37 CFR 1.136(a)
`
`It is hereby requested that the term to respond to the Examiner’s Action
`of June 23, 2011 be extended three months, from September 23, 2011 to
`December 23, 2011.
`
`The Commissioneris hereby authorized to charge the extension fee, and
`any additional fees associated with this communication to Deposit Account No.
`50-4364.
`
`In the Office Action, the Office indicated that claims 51 through 74 are pending in the
`
`application and the Office rejected all of the claims.
`
`New claim 75 has been added, which claim recites the invention in slightly different
`
`format.
`
`Rejections under 35 U.S.C. $103
`
`On page 3 of the Office Action, the Office rejected claims 51-54, 56, 58, and 61-74
`
`under 35 U.S.C. §103(a) as being unpatentable over U.S. Patent Application Publication No.
`
`2006/0008256 to Khedouri in view of U.S. Patent Application Publication No. 2002/0198846
`
`to Lao. On page 14 of the Office Action, the Office rejected claims 55 and 59-60 under 35
`
`U.S.C. §103(a) as being unpatentable over Khedouri and Lao, in view of U.S. Patent
`
`Application Publication No. 2006/0056324 to Hyppa. On page 16 of the Office Action, the
`
`Office rejected claim 57 under 35 U.S.C. $103(a) as being unpatentable over Khedouri and
`
`Lao, in view of U.S. Patent Application Publication No. 2007/0073728 to Klein.
`
`1359410.1 12/16/11
`
`TRILLER EXHIBIT 1004-00507
`
`

`

`PATENT
`Application No. 12/299,505
`
`Docket No. 357831.00003
`Page 10
`
`A Prima Facie Case of Obviousness Has Not Been Established
`
`KSR (KSR International Co. v. Teleflex Inc., 1278. Ct. 1727, 82 USPQ2d 1385 (2007)
`
`requires that the Office provide “some articulated reasoning with somerationale underpinning to
`
`support the legal conclusion of obviousness.” Further, the Office must “identify a reason that
`
`would have prompted a person of ordinary skill in the relevantfield to combine the elements in
`
`the way the claimed new invention does,” In addition, the Office must make “explicit” this
`
`rationale of “the apparent reason to combine the known elements in the fashion claimed,”
`
`including a detailed explanation of “the effects of demands knownto the design communityor
`
`present in the marketplace” and “the background knowledge possessed by a person having
`
`ordinaryskill in the art.”
`
`The Examiner cites Khedouri (US 2006/0008256 ) in view of Lao (US 2002/0198846).
`
`Amended Claim 1 differs from Khedouri for a number of reasons,
`
`including the
`
`following:
`
`1.
`
`Khedouri discloses a device that connects using the Internet with a local area
`
`network, such as WiFi, to a local basestation or hotspot.
`
`“The wireless link is preferably implemented in accordance with the WiFi
`protocol, which allows connectivity to the Internet...” Abstract
`
`Amended Claim 1 requires that the connection be over a cellular wireless network.
`
`Nothing in Khedouri discloses or suggests the use of a cellular wireless network. It would not be
`
`obvious to modify the Khedouri system from WiFi to cellular wireless because the whole
`
`architecture (including the important multi-player ‘beaming’ of data between near by devices)
`
`1359410.1 12/16/11
`
`TRILLER EXHIBIT 1004-00508
`
`

`

`PATENT
`Application No. 12/299,505
`
`Docket No. 357831.00003
`Page 11
`
`requires the device to use WiFi. Cellular wireless would be fundamentally incompatible with the
`
`design and purpose of the Khedouri system.
`
`2,
`
`Khedouri requires there to be a dedicated player with WiFi capability.
`
`“the devices are(1) dedicated to and optimised for searching for,
`receiving and playing audio and/or videofiles..[0019]
`
`Kehdouri discusses alternative forms, and mentions an “off the shelf PDA” or “hard disc
`
`as part of the controller 101” para [0050], but nothingelse.
`
`Amended Claim 1 requires that the device is a mobile telephone. Nothing in Khedouri
`
`discloses or suggests the use of a mobile telephone.
`
`It would not be obvious to modify the
`
`Khedouri system to a mobile telephone based system for the same reasons it would not be
`
`obvious to modify it from WiFito cellular wireless
`
`3.
`
`Khedouri requires that all browsing and searching of music contentis done on the
`
`dedicated device and not on the remote server.
`
`In Khedouri, indexed lists of music are sent to
`
`and stored on the device and it is those indexedlists, stored on the device, that are browsed and
`
`searched:
`
`1359410.1 12/16/11
`
`“As shownin Fig 5, the software and data on the portable device 311
`minimally includes indexed databases 504 including available artists and
`titles, which are updated as necessary...” para [0082]
`
`“The deviceinitially receives a complete copy of the available catalog
`that is stored on the local storage media ofthe device..” para [0126]
`
`“An indexedfile is created.. the index allows for fast lookup on the
`device..” para [0128]
`
`“The indexed lists are sent down to the device in small chunks...”
`para [0130]
`
`TRILLER EXHIBIT 1004-00509
`
`

`

`PATENT
`Application No. 12/299,505
`
`Docket No. 357831.00003
`Page 12
`
`Amended Claim 1 requires:
`
`“the application adapted to enable an end-userto directly browse
`and search music content on a remote server..”
`
`This is not done in Khedouri — browse and search is instead on a local index stored on
`
`the device itself. It would not be cbvious to modify Khedouri to enable direct browsing and
`
`search of the music content on a remote server since the local storage of the index list is a
`
`fundamental part of the Khedouri architecture.
`
`Even if Khedouri were combined with Lao, the elements of amended Claim 1 would not
`
`be present. Lao is relied on for an alleged teaching of interaction with a digital rights
`
`management program to control the use of valid and invalid downloads. Whether or not Lao
`
`contains such a teaching, Lao neither teaches nor suggests the elements described abovethat are
`
`also missing from Khedouri. Thus, Khedouri and Lao, taken alone or in combination, neither
`
`teach nor suggest the claimed invention and do not render the claimed invention obvious.
`
`Accordingly, the Office is respectfully requested to reconsider and withdraw the rejection
`
`of claims 51-74 under 35 USC §103.
`
`Conclusion
`
`The present invention is not taught or suggested by the prior art. Accordingly, the Office
`
`is respectfully requested to reconsider and withdraw the rejection of the claims. An early Notice
`
`of Allowanceis earnestly solicited.
`
`1359410.1 12/16/11
`
`TRILLER EXHIBIT 1004-00510
`
`

`

`PATENT
`Application No. 12/299,505
`
`Docket No. 357831.00003
`Page 13
`
`The Commissioneris hereby authorized to charge the extension fee, and any additional
`
`fees associated with this communication to applicant’s Deposit Account No. 50-4364.
`
`Respectfully submitted
`
`/Mark D. Simpson/
`Mark D. Simpson, Esquire
`Registration No. 32,942
`
` December 16, 2011
`Date
`
`SAUL EWING LLP
`Centre Square West
`1500 Market Street, 38" Floor
`Philadelphia, PA 19102-2189
`Telephone: 215 972 7880
`Facsimile: 215 972 4169
`Email: MSimpson @saul.com
`
`1359410.1 12/16/11
`
`TRILLER EXHIBIT 1004-00511
`
`

`

`Electronic Patent Application Fee Transmittal
`
`Filing Date:
`
`20-May-2009
`
`Title of Invention:
`
`MethodofProviding Digital Rights Management for Music Content by Means
`of a Flat-Rate Subscription
`
`First Named Inventor/Applicant Name:
`
`Mark Stephen Knight
`
`Attorney Docket Number:
`
`357831.00003
`
`Filed as Large Entity
`
`U.S. National Stage under 35 USC 371 Filing Fees
`
`Extension-of-Time:
`
`eee
`
`Basic Filing:
`
`Pages:
`
`Claims in excess of 20
`
`
`Miscellaneous-Filing:
`
`Patent-Appeals-and-Interference:
`
`Post-Allowance-and-Post-Issuance:
`
`TRILLER EXHIBIT 1004-00512
`
`

`

`ar
`
`Sub-Total in
`
`1330
`
`Total in USD (S$)
`
`TRILLER EXHIBIT 1004-00513
`
`

`

`Electronic AcknowledgementReceipt
`
`a
`
`Title of Invention:
`
`Method of Providing Digital Rights Management for Music Content by Means
`of a Flat-Rate Subscription
`
`ee
`
`U.S. National Stage under 35 USC 371
`
`First Named Inventor/Applicant Name:
`
`Mark Stephen Knight
`
`Customer Number:
`
`78905
`
`Mark D. Simpson/Lynn White
`Filer:
`
`
`Filer Authorized By:
`
`Mark D. Simpson
`
`Filing Date:
`
`20-MAY-2009
`
`16:53:35
`Time Stamp:
`
`
`Application Type:
`
`Paymentinformation:
`
`Submitted with Payment
`
`yes
`
`
`
`Payment Type Deposit Account
`
`Payment was successfully received in RAM
`
`RAM confirmation Number
`
`Deposit Account
`
`$1330
`
`4102
`
`504364
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.19 (Documentsupply fees)
`
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpaymentas follows:
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.17 (Patent application and reexamination processing fees)
`
`TRILLER EXHIBIT 1004-00514
`
`

`

`Charge any Additional Fees required under 37 C.F.R. Section 1.21 (Miscellaneous fees and charges)
`
`Pages
`Multi
`File Size(Bytes)/
`Document Description
`Document
`
`
`
`Number Message Digest|Part/.zip|P (if appl.)
`132350
`
`12299505_ReplytoOA.pdf
`
`651 94deaflc2d300e3d2dbe95 1e2743bbq]
`257at
`
`Multipart Description/PDF files in .zip description
`
`the application.
`
`New International Application Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and ofthe International Filing Date (Form PCT/RO/105)will be issued in due course, subject to prescriptions concerning
`national security, and the date shownon this AcknowledgementReceiptwill establish the international filing date of
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`Amendment/Req. Reconsideration-After Non-Final Reject
`
`eeee
`
`Applicant Arguments/Remarks Made in an Amendment
`
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`Warnings:
`
`Information:
`
`Fee Worksheet (SB06)
`
`fee-info.pdf
`
`356883a43¢82a025515591d9a736e533955|
`53d1d
`
`Information:
`
`Total Files Size (in bytes)
`
`164373
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTOof the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary componentsfor a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receiptwill establish the filing date of the application.
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`National Stage of an International Application under 35 U.S.C. 371
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`U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application asa
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`TRILLER EXHIBIT 1004-00515
`
`

`

`PATENT APPLICATION FEE DETERMINATION RECORDJ/rriication or Docket Number Filing Date
`
`Substitute for Form PTO-875
`12/299,505
`05/20/2009
`LC] To be Mailed
`
`APPLICATION AS FILED — PART|
`(Column 1)
`
`(Column 2)
`
`SMALL ENTITY C]
`
`OR
`
`OTHER THAN
`SMALL ENTITY
`
`L] SEARCH FEE
`37 GFR 1.16(k), (i), or (m
`L] EXAMINATIONFee
`(37 GFR 1.16(0},
`(
`TOTAL CLAIMS
`37 CFR 1.16(i
`Or ornMeh
`37 CFR 1.16(h
`
`CJAPPLICATION SIZE FEE
`(37 CFR 1.16(s))
`
`/
`NIA
`N/A
`minus 20 =
`
`N/A
`N/A
`
`minus 3 =
`If the specification and drawings exceed 100
`sheets of paper, the application size fee due
`is $250 ($125 for small entity) for each
`additional 50 sheetsor fraction thereof. See
`35 U.S.C. 41(a)(1)(G) and 37 CFR 1.16(s).
`
`[_] MULTIPLE DEPENDENT CLAIM PRESENT(37CFR1.16(j))
`* If the difference in column1is less than zero, enter “0” in column 2.
`
`PTO/SB/06 (07-06)
`Approved for use through 1/31/2007. OMB 0651-0032
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unlessit displays a valid OMB control number.
`
`
`
`APPLICATION AS AMENDED — PARTII
`
`(Column 1)
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`
`(Column 2)
`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
`
`12/16/2011
`
`Independent
`
`25
`
`*
`
`pwel
`:
`
`2s
`
`‘eee
`
`[_] Application Size Fee (37 CFR 1.16(s))
`
`(Column 3)
`
`PRESENT
`EXTRA
`
`id
`
`OC FIRST PRESENTATION OF MULTIPLE DEPENDENTCLAIM (37 CFR1.16(j))
`
`SMALL ENTITY
`
`ADDITIONAL
`FEE($)
`
`OTHER THAN
`
`SMALL ENTITY
`
`ADDITIONAL
`FEE($)
`
`_
`_
`Pxs=f or fies
`
`(Column 1)
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`
`(Column 2)
`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
`
`(Golumn 3)
`
`ADDITIONAL
`FEE ($)
`
`ADDITIONAL
`FEE ($)
`
`Total (37 CFR
`1.16(i
`Independent
`37 CFR 1.16(h
`
`[_] Application Size Fee (37 CFR 1.16(s))
`
`oO FIRST PRESENTATION OF MULTIPLE DEPENDENTCLAIM (37 CFR1.16(j))
`
`K-
`zZ
`Lu
`
`=aZ
`
`z
`Lu
`
`=<
`
`AMENDMENT
`
`
`If the entry in column1is less than the entry in column 2, write “O” in column 3. Legal Instrument Examiner:
`
`*If the “Highest NumberPreviously Paid For’ IN THIS SPACEis less than 20, enter “20”.
`/PHYLLIS CANTY/
`*”™ If the “Highest Number Previously Paid For’ IN THIS SPACEis less than 3, enter “3”.
`The “Highest NumberPreviously Paid For” (Total or Independent) is the highest numberfound in the appropriate box in column 1.
`This collection of information is required by 37 CFR 1.16. The information is required to obtain or retain a benefit by the public whichisto file (and by the USPTO 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