Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 1 of 15 PageID #: 1106
`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 1 of 15 PagelD#: 1106
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`EXHIBIT 4
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`EXHIBIT 4
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`

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`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 2 of 15 PageID #: 1107
`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 2 of 15 PagelD #: 1107
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`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
`
`PATENT
`
`Appl. No.
`First Inventor
`Applicant
`Filed
`Title
`Group Art Unit
`Examiner
`Atty Docket No.
`Customer No.
`
`4059
`
`Confirmation No.
`
` 15/687,249
`:
`: David Strober
`:
`Touchstream Technologies, Inc.
`:
`08/25/2017
`:
`PLAY CONTROL OF CONTENT ON A DISPLAY DEVICE
`:
`2172
`:
` Gaffin, Jeffrey A
`:
` 41179.278581
`:
`149550
`
`VIA _EFS-WEB -— May 9, 2019
`
`Mail Stop Amendment
`Commissionerfor Patents
`P. O. Box 1450
`Alexandria, VA 22313-1450
`
`REQUEST FOR AN EXTENSION OF TIME
`
`It is hereby requested that the time period for responding to Office Action mailed
`
`January 08, 2019, be extended for two (2) monthsor until May 9, 2019. The appropriate extension
`
`fee under 37 C.F.R. § 1.17(a)(2) is submitted herewith by wayof electronic payment.
`
`RESPONSE
`
`In response to the Office Action mailed January 08, 2019, please reconsider the
`
`above-identified application as follows:
`
`Listing of the Claims: begin on page 2 of this paper.
`
`Remarks: begin on page 8 of this paper.
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`4852-2419-9559 v2
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`Page 1 of 14
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`

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`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 3 of 15 PageID #: 1108
`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 3 of 15 PagelD #: 1108
`
`Application No. 15/687,249
`Response Filed: 05/09/2019
`Reply to Office Action of: 01/08/2019
`
`Listing of the Claims:
`
`Attorney Docket No. 41179.278581
`
`This listing of claims will replace all prior versions, andlistings, of claims in the application:
`
`
`
`1. storage medium_storing(Original) A non-transitory computer
`
`
`
`
`
`
`
`computer-useable instructions that, when used by one or more computing devices, cause the one
`
`or more computing devices to perform operations for remotely presenting various types of content,
`
`the operations comprising:
`
`initializing a connection with a remote server device to facilitate an
`
`association with a remote computing device;
`
`receiving, from the remote server device, a first message that includes at
`
`least one commandin a first format, wherein the first message is received based at
`
`least in part on a second messageincludingat least one command in a second format
`
`having been sent from the associated remote computing device;
`
`employing a first media player application operable to loadafirst piece of
`
`content referenced in the received first message; and
`
`controlling a presentation of the first piece of content
`
`loaded in the
`
`employed first media player application based on a first commandin thefirst format
`
`having been includedin the received first message for recognition bythe first media
`
`player application.
`
`2.
`
`(Original)
`
`The non-transitory computer storage medium of claim 1,
`
`wherein a command in the second format is a universal command.
`
`3.
`
`(Original)
`
`The non-transitory computer storage medium of claim 2,
`
`whereinthe first format is different than the second format.
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`4852-2419-9559 v2
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`Page 2 of 14
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`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 4 of 15 PageID #: 1109
`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 4 of 15 PagelD #: 1109
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`Application No. 15/687,249
`Response Filed: 05/09/2019
`Reply to Office Action of: 01/08/2019
`
`Attorney Docket No. 41179.278581
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`4,
`
`(Original)
`
`The non-transitory computer storage medium of claim 1,
`
`wherein the second messageis sent to the remote server device.
`
`5.
`
`(Original)
`
`The non-transitory computer storage medium of claim 1,
`
`wherein the at least one commandin the second format is converted into the at least one command
`
`in the first format based at least in part on the second message including therein a reference to the
`
`first piece of content.
`
`6.
`
`(Original)
`
`The non-transitory computer storage medium of claim 1,
`
`wherein the at least one commandin the second format is converted into the at least one command
`
`in the first format based at least in part on a referenceto the first media player application having
`
`been included in the second message.
`
`7.
`
`(Original)
`
`The non-transitory computer storage medium of claim 1,
`
`wherein the first media player application is employed based at least in part on the received first
`
`message including therein a referenceto the first media player application.
`
`8.
`
`(Original)
`
`The non-transitory computer storage medium of claim 1,
`
`wherein controlling the presentation includes an execution ofthe first command.
`
`9.
`
`(Original)
`
`The non-transitory computer storage medium of claim 1, the
`
`operations further comprising:
`
`obtaining the first media player application based on a determination that
`
`the first media player application is not already being employed.
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`4852-2419-9559 v2
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`Page 3 of 14
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`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 5 of 15 PageID #: 1110
`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 5 of 15 PagelD #: 1110
`
`Application No. 15/687,249
`Response Filed: 05/09/2019
`Reply to Office Action of: 01/08/2019
`
`Attorney Docket No. 41179.278581
`
`10.
`
`(Original)
`
`The non-transitory computer storage medium of claim 9,
`
`wherein the first media player application is obtained from a content providerthat corresponds to
`
`the referenced first piece of content.
`
`11.
`
`(Original)
`
`The non-transitory computer storage medium of claim 1,
`
`wherein the connection with the remote server device is maintained, for at least a duration that the
`
`first media player application is being employed,to facilitate a change from the first media player
`
`application to a second media player application operable to load a second piece of content
`
`referenced in a second message received from the remote server device.
`
`12.
`
`(Original)
`
`A computer-implemented method for remotely presenting
`
`various types of content, comprising:
`
`initializing, by a content presentation device, a connection with a remote
`
`server device to facilitate an association between the content presentation device
`
`and a remote computing device;
`
`receiving, by the content presentation device and from the remote server
`
`device, a first message that includesat least one commandinafirst format, wherein
`
`the first message is received based at least in part on a second message including at
`
`least one commandin a second format having been sent from the remote computing
`
`device associated with the content presentation device;
`
`employing, while the connection with the remote server device is
`
`maintained, a first media player application operable to load a first piece of content
`
`based at least in part on the first piece of content being referenced in the received
`
`first message; and
`
`4852-2419-9559 v2
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`Page 4 of 14
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`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 6 of 15 PageID #: 1111
`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 6 of 15 PagelD #: 1111
`
`Application No. 15/687,249
`Response Filed: 05/09/2019
`Reply to Office Action of: 01/08/2019
`
`Attorney Docket No. 41179.278581
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`controlling, by the content presentation device, a presentation of the first
`
`piece of content loaded in the employed first media player application based on a
`
`first commandin thefirst format having been includedin the received first message
`
`for recognition by the first media player application.
`
`13.
`
`(Original)
`
`The computer-implemented methodof claim 12, wherein the
`
`first media player application is employed based at least in part on the received first message
`
`including therein a referenceto the first media player application.
`
`14.
`
`(Original)
`
`The computer-implemented method of claim 12,
`
`the
`
`operations further comprising:
`
`obtaining the first media player application based on a determination that a
`
`second media player application is being employed.
`
`15.
`
`(Original)
`
`The computer-implemented methodof claim 12, wherein the
`
`first media player application obtained by retrieving the first media player application from a
`
`content provider associated with the referenced first piece of content.
`
`16.
`
`(Original)
`
`The computer-implemented methodof claim 12, wherein the
`
`presentation of the first piece of content loaded in the employed first media player application is
`
`controlled based further on the first commandin the first format having been converted, from the
`
`second commandin the second format, for inclusion in the received first message for recognition
`
`by the first media player application.
`
`17.
`
`(Original)
`
`A content presentation device comprising:
`
`a display;
`
`4852-2419-9559 v2
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`Page 5 of 14
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`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 7 of 15 PageID #: 1112
`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 7 of 15 PagelD #: 1112
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`Application No. 15/687,249
`Response Filed: 05/09/2019
`Reply to Office Action of: 01/08/2019
`
`Attorney Docket No. 41179.278581
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`at least one processor; and
`
`at least one computer storage media storing computer-usable instructions
`
`that, when used bythe at least one processor, cause the at least one processorto:
`
`initialize a connection with a remote server device to facilitate an
`
`association between the content presentation device and a remote computing
`
`device, wherein the associated remote computing device is configured to send
`
`messagesthat include at least one commandin a second format;
`
`receive, from the remote server device, a first message that includesat least
`
`one commandinafirst format based on a second messagein the second format sent
`
`from the associated remote computing device;
`
`employ a first media player application operable to load a first piece of
`
`content referenced in the received first message; and
`
`control a presentation of the first piece of content loaded in the employed
`
`first media player application based on a first commandin the first format having
`
`been included in the received first message for recognition bythe first media player
`
`application.
`
`18.
`
`(Original)
`
`The content presentation device of claim 17, wherein a
`
`commandinthefirst format is recognizable by the first media player application.
`
`19.
`
`(Original)
`
`The content presentation device of claim 17, wherein the
`
`second messageis sent to the remote server device.
`
`4852-2419-9559 v2
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`Page 6 of 14
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`

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`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 8 of 15 PageID #: 1113
`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 8 of 15 PagelD #: 1113
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`Application No. 15/687,249
`Response Filed: 05/09/2019
`Reply to Office Action of: 01/08/2019
`
`Attorney Docket No. 41179.278581
`
`20.
`
`(Original)
`
`The content presentation device of claim 18, wherein the
`
`first media player application is employed based at least in part on the received first message
`
`including therein a referenceto the first media player application.
`
`4852-2419-9559 v2
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`Page 7 of 14
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`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 9 of 15 PageID #: 1114
`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 9 of 15 PagelD #: 1114
`
`Application No. 15/687,249
`Response Filed: 05/09/2019
`Reply to Office Action of: 01/08/2019
`
`Attorney Docket No. 41179.278581
`
`REMARKS
`
`The Non-Final/Final Office Action mailed January 08, 2019 has been received and
`
`reviewed. Prior to the present communication, claims 1-20 were pending and claims 1-20 stand
`
`rejected. Reconsideration of the subject application is respectfully requested in view of the
`
`following remarks.
`
`Rejections based on 35 U.S.C.§102
`
`Claims 1 and 4-20 are rejected under 35 U.S.C. § 102 as ostensibly being
`
`anticipated by U.S. Publication No. 2012/0130971 to Morris (hereinafter “Morris”). Applicant
`
`respectfully traverses this rejection. As the asserted reference fails to describe, expressly or
`
`inherently, each and every elementrecited in the rejected claims, Applicant respectfully traverses
`
`the rejection, as hereinafter set forth.
`
`Applicant submits that Morris fails to describe, among other things, “receiving,
`
`from the remote server device, a first message that includes at least one commandina first
`
`format, wherein the first message is received basedat least in part on a second message
`
`including at least one commandina second format having been sentfrom the associated
`
`remote computing device.” The Office asserts that Morris purportedly describes this feature by
`
`citing steps 210 and 212 of FIG. 2 and {{[[0044]-[0045] of Morris.
`
`Specifically, step 210 of FIG. 2 of Morris recites (from a perspective of a portable
`
`computing device):
`
`Receive user input associated with a particular media content item
`of the identified media content, the user input indicating selection of
`a send media option associated with the particular media content
`item.
`
`4852-2419-9559 v2
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`Page 8 of 14
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`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 10 of 15 PageID #: 1115
`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 10 of 15 PagelD #: 1115
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`Application No. 15/687,249
`Response Filed: 05/09/2019
`Reply to Office Action of: 01/08/2019
`
`Attorney Docket No. 41179.278581
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`Moreso, {[0044] of Morris recites (also from the perspective of the portable
`
`computing device):
`
`At 210, user input associated with a particular media content item of
`the identified media content may be received. The portable
`computing device maydisplay a play optionthat is selectable to play
`the particular media content item on the portable computing device.
`The portable computing device may also, or in the alternative,
`display a send media option that is selectable to throw the particular
`media content item to a display device external to the portable
`computing device. When the user selects the play option,
`the
`portable computing device may receive the particular media content
`item from an application server. Alternately, the portable computing
`device may receive at least one commandthat enables the portable
`computing device to access the network address of the particular
`media content item and to play the particular media content item on
`the portable computing device. The portable computing device may
`access the particular media content item directly from the network
`address (i.e., without the application server).
`
`Next, Step 212 of FIG. 2 of Morris recites (once again, from the perspective of the
`
`portable computing device):
`
`Generate a message in responseto the user input, where the message
`includes information identifying a network address at the remote
`computing device corresponding to the particular media content
`item.
`
`Finally, {[0045] of Morris recites (again, from the perspective of the portable
`
`computing device):
`
`Whenthe user provides user input selecting the send media option,
`the portable computing device may generate a message in response
`to the user input, at 212. The message may include information
`identifying a network address at
`the remote computing device
`corresponding to the particular media content item. The network
`address may identify the particular media content in a formatthatis
`playable by the device to receive the particular media content item.
`
`Applicant submits that Morris merely describes (1) that a portable computing
`
`device can generate a message that “may include information identifying a network address ...
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`4852-2419-9559 v2
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`Page 9 of 14
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`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 11 of 15 PageID #: 1116
`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 11 of 15 PagelD #: 1116
`
`Application No. 15/687,249
`Response Filed: 05/09/2019
`Reply to Office Action of: 01/08/2019
`
`Attorney Docket No. 41179.278581
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`corresponding to the particular media content item” and (2) that the very same message
`
`generated by the portable computing device can be:
`
`... sent from the portable computing device to an application server
`that provides media content to a set top box device. The
`application server sends information to the set top box device that
`causes the set top box device to automatically play the particular
`media content item in response to the message.
`
`See Morris, {[0046] and step 214 of FIG. 2.
`
`Applicant submits that Morris is completely silent with regard to “receiving, from
`
`the remote server device, a first message that includes at least one commandin_afirst format,
`
`wherein the first message is received basedat least in part on a second messageincluding at
`
`least one command ina second format having been sentfrom the associated remote computing
`
`device.”
`
`In fact, Morris never describes commandsin different formats. At best, the only
`
`reference to a “format” is recited in {[0045] of Morris, which states that a generated message can
`
`include information identifying a network address, and that the “network address may identify
`
`the particular media content in a formatthat is playable by the device to receive the particular
`
`media content item.”
`
`Moreover, even if the Office interprets “user input selecting the send media
`
`option” as a commandin a particular format, Applicant submits that the user inputis not an
`
`equivalent of a generated message. Instead, as described by Morris, a message is generated by a
`
`portable computing device based on the “user input selecting the send media option.” Yet,
`
`Morrisstill fails to describe that another message having a commandin a different formatis
`
`generated.
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`4852-2419-9559 v2
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`Page 10 of 14
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`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 12 of 15 PageID #: 1117
`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 12 of 15 PagelD #: 1117
`
`Application No. 15/687,249
`Response Filed: 05/09/2019
`Reply to Office Action of: 01/08/2019
`
`Attorney Docket No. 41179.278581
`
`Finally, Morris consistently recites that the “message” is generated by a portable
`
`computing device that is “sent from the portable computing device to an application server that
`
`provides media content to a set top box.” See Morris, {{{[0044]-[0046] and FIG. 2. Morrisfails to
`
`describe, amongother things, “receiving, from the remote server device, a first message that
`
`includes at least one commandinafirst format, wherein the first message is received based at
`
`least in part on a second message including at least one commandin a second format having
`
`been sentfrom the associated remote computing device; employing a first media player
`
`application operable to load a first piece of content referenced in the received first message; and
`
`controlling a presentation of the first piece of content loaded in the employedfirst media player
`
`application based on a first commandin the first format having been included in the received
`
`first message for recognition by the first media player application,” as similarly recited in the
`
`independent claims. Applicant notes that there is no mention of multiple messages havingatleast
`
`one commandin different formats.
`
`Applicant submits that no matter how unreasonably broad ofan interpretation that
`
`the Office maytake to read on the claims as presented, Morris further fails to describe that,
`
`particularly in light of the above, that Morris does not describe “controlling a presentation of the
`
`first piece of content loaded in the employedfirst media player application based ona first
`
`commandin the first format having been includedin the receivedfirst message for recognition
`
`by the first media player application.” In other words, evenif a “user input” is considered a
`
`generated message, the user input does not includea first commandin a first format for
`
`recognition by a first media player application. The user input is described as a “send media
`
`option” that causes a portable computing device to generate a message. The “send media option”
`
`itself simply cannot correspondto a first commandin a first format for recognition by a first
`
`4852-2419-9559 v2
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`Page 11 of 14
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`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 13 of 15 PageID #: 1118
`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 13 of 15 PagelD #: 1118
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`Application No. 15/687,249
`Response Filed: 05/09/2019
`Reply to Office Action of: 01/08/2019
`
`Attorney Docket No. 41179.278581
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`media player application. At best, the “send media option” can correspondto a user input that
`
`causes a portable computing device to generate a message, one that is never described as being
`
`communicated between entities in different formats according to Morris.
`
`Forat least the reasons as detailed hereinabove, Morris fails to describe each
`
`element recited in independent claims 1, 12, and 17. Accordingly, withdrawalof the rejections of
`
`these claimsis respectfully requested as well, for at least the above-cited reasons. Claims 1-20
`
`are believed to be in condition for allowance and such favorable action is respectfully requested.
`
`Rejections based on 35 U.S.C.§103
`
`Claims 2 and 3 were rejected under 35 U.S.C.
`
`§ 103 as ostensibly being
`
`unpatentable over U.S. Publication No. 2012/0130971 to Morris (hereinafter “Morris”), in view of
`
`US. Publication No. 2009/0248802 to Mahajan et al. (hereinafter “Mahajan et al.)Applicant
`
`respectfully traverses this rejection. As the cited references, both alone or in combination,fail to
`
`teach or suggestall of the features of the independent claims, Applicant respectfully traverses this
`
`rejection, as hereinafter set forth.
`
`As noted above, Morris fails to describe or teach each and every feature of the
`
`independent claims. Applicant submits that Mahajan is similarly deficient in this regard. The
`
`Office concedes on page 9 of the Office action that Morris “does not expressly disclose ‘wherein
`
`a command in the second format is a universal command.’” The Office cites Mahajan as
`
`purportedly teaching “translating a platform specific media playback commandinto a generic or
`
`universal media playback command for transmission to a client.”
`
`First, Applicant submits that Mahajan does not teach a remote server device, a
`
`remote computing device, and the one or more computing devices associated with the remote
`
`computing device and performing the operations described in independentclaim 1, as similarly
`
`4852-2419-9559 v2
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`Page 12 of 14
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`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 14 of 15 PageID #: 1119
`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 14 of 15 PagelD #: 1119
`
`Application No. 15/687,249
`Response Filed: 05/09/2019
`Reply to Office Action of: 01/08/2019
`
`Attorney Docket No. 41179.278581
`
`described in independentclaims 12 and 17. Instead, Mahajanrecites “[c]ollaboration sessions can
`
`provide a remoting experience between a client computer (hereinafter, “client’”) and @ server
`
`computer (hereinafter, “server’)’ and that “[c]ollaboration can involve representing a portion, or
`
`all, of the server's graphical user-interface (GUI) on the client.” See Mahajan, {[0011]. As such,
`
`by virtue of the described embodiments of Mahajan, Mahajan simply cannot teach one or more
`
`computing devices that perform operations including, among other things, receiving, from the
`
`remote server device, a first message that includesat least one commandinafirst format, wherein
`
`the first message is received based at least in part on a second message including at least one
`
`commandin a second format having been sent from the associated remote computing device.”
`
`As noted above, Mahajan does not cure the deficiencies of Morris as described
`
`abovein relation to “receiving, from the remote server device, a first message that includesat least
`
`one commandinafirst format, wherein the first message is received based at least in part on a
`
`second message including at least one commandin_a second format having been sent from the
`’
`associated remote computing device,” as the claims clearly require a remote server device, a
`
`remote computing device, and the one or more computing devices associated with the remote
`
`computing device performing the claimed operations.
`
`Asthe applied references, both alone and in combination, do not teach or suggest
`
`all features of independentclaims 1, 12, and 17, Applicant respectfully requests that the 35 U.S.C.
`
`§ 103(a) rejection be withdrawn. As claims 2-11, 13-16, and 18-20 depend directly or indirectly
`
`from independentclaims 1, 12, and 17, respectively, Applicant respectfully requests that the 35
`
`U.S.C. § 103(a) rejection to claims 2-11, 13-16, and 18-20 be withdrawnfor the samereasonsas
`
`the independent claims from which they depend, and for the additional features recited therein.
`
`4852-2419-9559 v2
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`Page 13 of 14
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`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 15 of 15 PageID #: 1120
`Case 2:23-cv-00059-JRG Document 40-5 Filed 04/18/24 Page 15 of 15 PagelD #: 1120
`
`Application No. 15/687,249
`Response Filed: 05/09/2019
`Reply to Office Action of: 01/08/2019
`
`Attorney Docket No. 41179.278581
`
`CONCLUSION
`
`For at least the reasons stated above, the pending claims are believed to be in
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`condition for allowance. Applicant respectfully requests withdrawal of the pending rejections and
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`allowance of the claims. If any issues remain that would prevent issuance of this application, the
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`Examiner is urged to contact
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`the undersigned — 816-474-6550 or kbae@shb.com (such
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`communication via email is herein expressly granted) — to resolve the same. The fee for a two-
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`month extension of time is submitted herewith by way of electronic payment.
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`It is believed that
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`no additional fee is due, however, the Commissioner is hereby authorized to charge any amount
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`required to Deposit Account No. 19-2112 with reference to Attorney Matter No.. 41179.278581.
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`Respectfully submitted,
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`/ KEITHBAE/
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`Keith Bae
`Reg. No. 64,633
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`KIJBY/sw
`SHOOK, HARDY & BACONL.L.P.
`2555 Grand Blvd.
`Kansas City, MO 64108-2613
`816-474-6550 Telephone
`816-421-5547 Fax
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`4852-2419-9559 v2
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`Page 14 of 14
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