Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 1 of 14 PageID #: 1139
`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 1 of 14 PagelD#: 1139
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`EXHIBIT 6
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`EXHIBIT 6
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`

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`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 2 of 14 PageID #: 1140
`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 2 of 14 PagelD #: 1140
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`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
`
`Appl. No.
`First Inventor
`Applicant
`Filed
`Title
`Group Art Unit
`Examiner
`Atty. Docket No.
`Customer No.
`
`Confirmation No. 6770
`
` 16/917,095
`:
`: David Strober
`:
`Touchstream Technologies, Inc.
`:
`06/30/2020
`:
`PLAY CONTROL OF CONTENT ON A DISPLAY DEVICE
`:
`2173
`: Darrin Hope
`:
`41197.280029
`:
`149550
`
`VIA EFS-WEB - October 28, 2020
`
`Mail Stop Amendment
`Commissionerfor Patents
`P. O. Box 1450
`Alexandria, VA 22313-1450
`
`REQUEST FOR EXTENSION OF TIME & REPLY TO FIRST ACTION INTERVIEW
`PILOT PROGRAM PRE-INTERVIEW COMMUNICATION
`
`Applicant hereby requests a three-month extension of time to respond to the First
`
`Action Interview Pilot Program Pre-Interview Communication mailed September 3, 2020,
`
`extending the period for response to November3, 2020. The present communication is submitted
`
`in response to the outstanding communication.
`
`In response to this communication, please
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`consider the following:
`
`First Action Interview Response: begin on page 2 of this paper.
`
`Listing of the Claims: begin on page 3 of this paper.
`
`Remarks/Arguments: begin on page 9 of this paper.
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`4835-8324-7818
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`Page 1 of 12
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`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 3 of 14 PageID #: 1141
`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 3 of 14 PagelD #: 1141
`
`Application No. 16/917,095
`Response Filed 10/28/2020
`Reply to Office Action of: 09/03/2020
`
`First Action Interview
`
`Attorney Docket No. 41197.280029
`
`Applicants specifically request an interview underthe First Action Interview Pilot
`
`Program. As such, Applicants have electronically filed an Applicant Initiated Interview Request
`
`Form herewith the corresponding proposed amendmentor arguments.
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`4835-8324-7818
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`Page 2 of 12
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`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 4 of 14 PageID #: 1142
`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 4 of 14 PagelD #: 1142
`
`Application No. 16/917,095
`Response Filed 10/28/2020
`Reply to Office Action of: 09/03/2020
`
`Listing of Claims:
`
`This listing of claims is presented for discussion purposes:
`
`Attorney Docket No. 41197.280029
`
`1.
`
`(Original) A non-transitory computer storage medium storing computer-
`
`useable instructions that, when used by a computing device, cause the computing device to
`
`perform operations comprising:
`
`providing a uniqueidentifier of the computing device to another
`
`computing device;
`
`receiving a set of messages from the other computing device based on the
`
`provided unique identifier, the received set of messages referencing a piece of
`
`content associated with a first media playing elementof a plurality of media playing
`
`elements, and including a set of commandsthat correspondsto the first media playing
`
`element;
`
`selecting the first media playing element from the plurality of media
`
`playing elements based at least in part on the received message; and
`
`controlling how the selected first media playing element plays the referenced
`
`piece of content based on at least one commandof the set of commands included in
`
`the received set of messages.
`
`2.
`
`(Original) The medium of claim 1, wherein the set of commandsincluded
`
`in the received set of messagesis recognizable by the first media playing element.
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`4835-8324-7818
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`Page 3 of 12
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`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 5 of 14 PageID #: 1143
`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 5 of 14 PagelD #: 1143
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`Application No. 16/917,095
`Response Filed 10/28/2020
`Reply to Office Action of: 09/03/2020
`
`Attorney Docket No. 41197.280029
`
`3.
`
`(Original) The medium of claim 2, wherein the set of commandsis
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`converted via an API adapter to be recognizable bythe first media playing element, the set of
`
`commands being converted based on a determination thatthe first media playing elementis
`
`associated with the referenced piece of content.
`
`4,
`
`(Original) The medium of claim 1, wherein the set of commandsis
`
`defined in a universal format and converted to a particular format recognizable bythe first media
`
`playing element.
`
`5.
`
`(Original) The medium of claim 1, wherein the unique identifier includes
`
`one of an IP address, a MAC address, a web cookie, a browser cookie, a QR code, a RFID code,
`
`a text, or a synchronization code.
`
`6.
`
`(Original) The medium of claim 1, wherein the received set of commands
`
`includes programming codeassociated with the first media playing element.
`
`7.
`
`(Original) The medium of claim 1, wherein each media playing elementof
`
`the plurality of media playing elements is operable to play and/or control a corresponding type of
`
`media.
`
`8.
`
`(Original) A computerized system comprising:
`
`a server; and
`
`a media receiver to—
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`4835-8324-7818
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`Page 4 of 12
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`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 6 of 14 PageID #: 1144
`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 6 of 14 PagelD #: 1144
`
`Application No. 16/917,095
`Response Filed 10/28/2020
`Reply to Office Action of: 09/03/2020
`
`Attorney Docket No. 41197.280029
`
`provide a unique identifier of the media receiver to a computing device,
`
`wherein each of
`
`the computing device
`
`and the media receiver
`
`are
`
`in
`
`communication with the server;
`
`based on the provided unique identifier, receive a set of messages from the
`
`computing device,
`
`the received set of messages referencing a piece of content
`
`associated with a first media playing element of a plurality of media playing
`
`elements, and including a set of commands converted from a universal format defined
`
`by the computing device to a first format that corresponds to the first media playing
`
`element;
`
`select the first media playing element from the plurality of media playing
`
`elements based at least in part on the received message; and
`
`control how the selected first media playing element plays the referenced
`
`piece of content based on at least one command of the converted set of commands
`
`includedin the received set of messages.
`
`9.
`
`(Original) The computerized system of claim 8, wherein the set of
`
`commandsin the universal formatis included in the set of messages communicated from the
`
`computing device.
`
`10.
`
`(Original) The computerized system of claim 9, wherein the converted set
`
`of commandsin the first format is included in the received set of messages.
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`4835-8324-7818
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`Page 5 of 12
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`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 7 of 14 PageID #: 1145
`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 7 of 14 PagelD #: 1145
`
`Application No. 16/917,095
`Response Filed 10/28/2020
`Reply to Office Action of: 09/03/2020
`
`Attorney Docket No. 41197.280029
`
`11.
`
`(Original) The computerized system of claim 8, wherein the computerized
`
`system is configured to convert the set of commands from the universal formatto the first format
`
`based on the piece of content being associated with the first media playing element.
`
`12.
`
`(Original) The computerized system of claim 8, wherein the unique
`
`identifier includes one of an IP address, a MAC address, a web cookie, a browser cookie, a QR
`
`code, a RFID code,a text, or a unique synchronization code.
`
`13.
`
`(Original) The computerized system of claim 8, wherein the converted set
`
`of commandsincludes programming codeassociated with the first media playing element.
`
`14.
`
`(Original) The computerized system of claim 8, wherein the set of
`
`commands converted to the first format is recognizable to the first media playing element.
`
`15.
`
`(Original) The computerized system of claim 8, wherein each media
`
`playing elementof the plurality of media playing elements is operable to play and/or control a
`
`corresponding type of media.
`
`16.
`
`(Original) The computerized system of claim 8, wherein the set of
`
`messagesis received from the computing device based further on each of the computing device
`
`and the media receiver being in communication with the server.
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`4835-8324-7818
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`Page 6 of 12
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`

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`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 8 of 14 PageID #: 1146
`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 8 of 14 PagelD #: 1146
`
`Application No. 16/917,095
`Response Filed 10/28/2020
`Reply to Office Action of: 09/03/2020
`
`Attorney Docket No. 41197.280029
`
`17.
`
`(Original) A computer-implemented method for controlling playback of
`
`various types of content, comprising:
`
`providing, by a media receiver, a unique identifier of the media receiver to
`
`a computing device in communication with a server system;
`
`based on the provided unique identifier, receiving, by the media receiver via
`
`the server system, a set of messages from the computing device,the received set of
`
`messages referencing a piece of content associated with a first media playing element
`
`of a plurality of media playing elements, and including a set of commands converted
`
`from a universal format defined by the computing device to a first format that
`
`correspondsto the first media playing element;
`
`selecting, by the media receiver, the first media playing element from the
`
`plurality of media playing elements based at least in part on the received
`
`message; and
`
`controlling, by the media receiver, how the selected first media playing
`
`element plays the referenced piece of content based on at least one commandof the
`
`converted set of commands included in the received set of messages.
`
`18.
`
`(Original) The method of claim 17, wherein the media receiver is coupled
`
`to a display, and the media receiver controls how the selected first media playing element plays the
`
`referenced piece of content via the display.
`
`19.
`
`(Original) The method of claim 17, wherein the server system is configured
`
`to convert the set of commandsfrom the universal formatto the first format based on the piece of
`
`content being associated with the first media playing element.
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`4835-8324-7818
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`Page 7 of 12
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`

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`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 9 of 14 PageID #: 1147
`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 9 of 14 PagelD #: 1147
`
`Application No. 16/917,095
`Response Filed 10/28/2020
`Reply to Office Action of: 09/03/2020
`
`Attorney Docket No. 41197.280029
`
`20.
`
`(Original) The method of claim 17, wherein the set of commandsin the
`
`universal formatis included in the set of messages communicated from the computing device to
`
`the server system.
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`4835-8324-7818
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`Page 8 of 12
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`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 10 of 14 PageID #: 1148
`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 10 of 14 PagelD #: 1148
`
`Application No. 16/917,095
`Response Filed 10/28/2020
`Reply to Office Action of: 09/03/2020
`
`Attorney Docket No. 41197.280029
`
`REMARKS
`
`Applicant respectfully requests reconsideration of the present application.
`
`Rejections based on 35 U.S.C.§102
`
`Claims 1, 5, 8, 12, 15 and 16 are rejected under 35 U.S.C. § 102(a)(2) as being
`
`anticipated by U.S. Publication No. 2009/0172780 Al to Sukeda, et al., (hereinafter “Sukeda”).
`
`Applicanttraverses the rejection for these reasons:
`
`e The Office cites Sukeda as purportedly describing each and every element of
`
`the claimed invention. Of the several assertions made in the Office Action,
`
`one of the assertions interprets a “first media playing element from a plurality
`
`of media playing elements” from the claimed invention as “an individual
`
`content[] selected from the list,” as described in Sukeda. See Office Action, p.
`
`4,
`
`e However,
`
`the Office changes its interpretation of “first media playing
`
`element” in relation to the last claimed feature of claim 1, specifically
`
`“controlling how the selected first media playing element plays the
`
`referenced piece of content...” Inconsistent with its initial interpretation of
`
`“first media playing element,” the Office now interprets “referenced piece of
`
`content” with its plain meaning, while inconsistently interpreting “first media
`
`playing element” as “the operation terminal.”
`
`e
`
`For at least these reasons, Sukeda does not describe each and every feature
`
`recited in the independentclaims.
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`4835-8324-7818
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`Page 9 of 12
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`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 11 of 14 PageID #: 1149
`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 11 of 14 PagelD #: 1149
`
`Application No. 16/917,095
`Response Filed 10/28/2020
`Reply to Office Action of: 09/03/2020
`
`Attorney Docket No. 41197.280029
`
`Rejections based on 35 U.S.C.§103
`
`Claims 2-4, 6, 7, 9-11, 13, 14 and 17-20 were rejected under 35 U.S.C. § 103(a)
`
`as being unpatentable over U.S. Publication No. 2009/0172780 A1 to Sukeda,et al., (hereinafter
`
`“Sukeda”), in view of U.S. Publication No. 2009/0248802 Al to Mahajan, et al., (hereinafter
`
`“Mahajan’”’).
`
`e Applicant submits that Mahajan fails to cure the deficiencies of Sukeda
`
`because Mahajan fails to teach each and every feature recited in the claims.
`
`e At best, Mahaja notes that “media or media files can be stored according to
`’
`
`different
`
`formats...”
`
`and that “[p]rocessing the media files
`
`can be
`
`accomplished by a media player that employs one or more media platforms
`
`configured to handle the format of the mediafile.” This is not the sameas:
`
`receiving a set of messages from the other computing device
`
`based on the provided unique identifier,
`
`the received set of messages
`
`referencing a piece of content associated with a first media playing element
`
`of a plurality of media playing elements, and including a set of commands
`
`that correspondsto the first media playing element;
`
`selecting the first media playing element from the plurality of
`
`media playing elements basedat least in part on the received message; and
`
`controlling howthe selected first media playing elementplays
`
`the referenced piece of content based on at least one commandofthe set of
`
`commandsincluded in the received set of messages.
`
`e Mahaja also fails to teach selecting the first media playing element from the
`
`plurality of media playing elements based _at least in part on the received
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`Page 10 of 12
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`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 12 of 14 PageID #: 1150
`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 12 of 14 PagelD #: 1150
`
`Application No. 16/917,095
`Response Filed 10/28/2020
`Reply to Office Action of: 09/03/2020
`
`Attorney Docket No. 41197.280029
`
`message, and controlling how the selected first media playing element plays
`
`the referenced piece of content based _on at least one command of the set of
`
`commandsincluded in the received set of messages. At best, Mahaja speaks of
`
`an “abstraction functionality allowing media operations to be effectively
`
`conveyed in a collaboration session between server and client.” See {[0013].
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`4835-8324-7818
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`Page 11 of 12
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`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 13 of 14 PageID #: 1151
`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 13 of 14 PagelD #: 1151
`
`Application No. 16/917,095
`Response Filed 10/28/2020
`Reply to Office Action of: 09/03/2020
`
`Attorney Docket No. 41197.280029
`
`CONCLUSION
`
`For at least the reasons stated above, claims 1-20 are now in condition for
`
`allowance. Applicants respectfully request withdrawal of the pending rejections and allowance
`
`of the claims. If any issues remain that would prevent issuance of this application, the Examiner
`
`is urged to contact the undersigned — 816-474-6550 or kbae@shb.com (such communication via
`
`email is herein expressly granted) — to resolve the same. It is believed that all fees due have been
`
`paid, however, the Commissioner is hereby authorized to charge any amountrequired to Deposit
`
`Account No. 19-2112, with reference to Attorney Docket No. 41197.280029.
`
`Respectfully submitted,
`
`/KEITH J. BAE/
`
`Keith J. Bae
`Reg. No. 64,633
`
`KJBY/jc
`SHOOK, HARDY & BACONL.L.P.
`2555 Grand Blvd.
`Kansas City, MO 64108-2613
`816-474-6550 Telephone
`816-421-5547 Fax
`
`4835-8324-7818
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`Page 12 of 12
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`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 14 of 14 PageID #: 1152
`Case 2:23-cv-00059-JRG Document 40-7 Filed 04/18/24 Page 14 of 14 PagelD#5,.1,49¢,.16)
`Doc Code: M865 or FAILREQ INTV
`Approved for use through 11/30/2020. OMB 0651-0031
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`
`Applicant Initiated Interview Request Form
`
`Application No.: 16/917,095
`
`Examiner: Darrin Hope
`
`First Named Applicant: David Strober
`
`Art Unit: 2173
`Status of Application: Pending
`
`Tentative Participants:
`(1) Keith J. Bae
`
`(2) Examiner Hope
`
`(3)CY
`
`Proposed Date of Interview: 10 November2020
`
`Proposed Time: 3:00 EST
`
`(OAM@PM)
`
`Type of Interview Requested:
`
`(1)JTelephonic (2) (7 Personal (3) [J Video Conference
`
`
`
`Exhibit To Be Shown or Demonstrated: [] YES
`If yes, provide brief description:
`
`NO
`
`Issues To Be Discussed
`
`Applicant's/Applicant's Representative's Telephone Number
`
`NOTE: This form should be completed andfiled by applicant in advance of the interview (see MPEP § 713.01). If
`this form is signed by a registered practitioner not of record, the Office will accept this as an indication that he or
`she is authorized to conduct an interview on behalf of the principal (67 CFR 1.32(a)(G)) pursuant to 37 CFR 1.34.
`This is not a powerof attorney to any above named practitioner. See the Instruction Sheet for this form, which is
`incorporated by reference. By signing this form, applicant or practitioneris certifying that he or she has read the
`Instruction Sheet. After the interview is conducted, applicant is advisedtofile a statementof the substance of this
`interview (37 CFR 1.133(b)) as soon as possible. This application will not be delayed from issue because of
`applicant’s failure to submit a written record of this interview.
`
`Issues
`(Rej., Obj., etc)
`
`Claims/
`Fig. #s
`
`Prior
`Art
`
`Discussed
`
`Not Agreed
`
`
`
`(1)102(a)(2)_4,5, 8, 12,15 and 16 Sukeda
`
`
`
`(2)103(a)|2-4, 6, 7, 9-11, 13, 14 a Mahajan
`
`(3)
`
`
`
`C)
`C)
`(4)
`Proposed Amendment or Arguments Attached
`[-] Continuation Sheet Attached
`
`Brief Description of Arguments to be Presented:
`
`
`An interview was conducted on the above-identified application on
`
`/KEITH J. BAE/
`Applicant/Applicant’s Representative Signature
`
`Keith J. Bae
`
`Typed/Printed Name of Applicant or Representative
`64,633
`
`Examiner/SPESignature
`
`816-474-6550
`
`Registration Number,if applicable
`This collection of information is required by 37 CFR 1.133. The information is required to obtain or retain a benefit by the public whichis to file (and by the USPTO
`to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 24 minutes to complete, including
`gathering, preparing, and submitting the completed application form to the USPTO. Timewill vary depending uponthe 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 FORMSTO THIS ADDRESS.
`Ifyou need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`