Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 1 of 15 PageID #: 1153
`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 1 of 15 PagelD#: 1153
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`EXHIBIT 7
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`EXHIBIT 7
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`

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`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 2 of 15 PageID #: 1154
`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 2 of 15 PagelD #: 1154
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`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.
`
`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
`
`PATENT
`
`6770
`
`VIA EFS-WEB — March 3", 2021
`
`Mail Stop Amendment
`Commissioner for Patents
`P. O. Box 1450
`Alexandria, VA 22313-1450
`
`RESPONSE TO FIRST ACTION INTERVIEW
`
`It is hereby requested that the time period for responding to the Office Action
`
`mailed December 10, 2020, be extended for one (1) month. The appropriate extension fee of
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`$220.00 under 37 C.F.R. § 1.17(a)(1) is submitted herewith. In response to the Non Final Office
`
`Action, please amend the above-identified application as follows:
`
`Amendments to the Claims: begin on page 2 of this paper.
`
`Summary of Examiner Interview: begins on page 8 of this paper.
`
`Remarks: begin on page 9 ofthis paper.
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`Page 1 of 14
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`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 3 of 15 PageID #: 1155
`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 3 of 15 PagelD #: 1155
`
`Application No. 16/917,095
`Response Filed 03/03/2021
`Reply to Office Action of: 12/10/2020
`
`Attorney Docket No. 41197.280029
`
`AMENDMENTS TO THE CLAIMS:
`
`This listing of claims will replace all prior versions, and listings, of claims in the
`
`application:
`
`Listing of Claims:
`
`1.
`
`(Currently Amended) 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;
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`receiving a set of messages from the other computing device based on the
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`provided unique identifier, the received set of messages referencing a piece of
`
`content associated with a first media playing-element application of a plurality of
`
`media playing-elements applications, and including a set of commandsthat
`
`correspondsto the first media playing-element application;
`
`selecting the first media playing-element application from the plurality of
`
`media playing-elements applications based at least in part on the received
`
`message; and
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`controlling how the selected first media playing-element application plays the
`
`referenced piece of content based on at least one commandof the set of commands
`
`includedin the received set of messages.
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`2.
`
`(Original) The medium of claim 1, wherein the set of commands included
`
`in the received set of messagesis recognizable by the first media playing element.
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`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 4 of 15 PageID #: 1156
`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 4 of 15 PagelD #: 1156
`
`Application No. 16/917,095
`Response Filed 03/03/2021
`Reply to Office Action of: 12/10/2020
`
`Attorney Docket No. 41197.280029
`
`3.
`
`(Currently Amended) The medium of claim 2, wherein the set of
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`commandsis converted via an API adapter to be recognizable by the first media playing element,
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`the set of commandsbeing converted based on a determination that the first media playing
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`element application is associated with the referenced piece of content.
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`4,
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`(Original) The medium of claim 1, wherein the set of commandsis
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`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.
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`7.
`
`(Currently Amended) The medium of claim 1, wherein each media
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`playing-element application of the plurality of media playing-elements applications is operable to
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`play and/or control a corresponding type of media.
`
`8.
`
`(Currently Amended) A computerized system comprising:
`
`a server; and
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`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 5 of 15 PageID #: 1157
`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 5 of15 PagelD #: 1157
`
`Application No. 16/917,095
`Response Filed 03/03/2021
`Reply to Office Action of: 12/10/2020
`
`a media receiver to—
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`Attorney Docket No. 41197.280029
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`provide a unique identifier of the media receiver to a computing device,
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`wherein each of the computing device and the media receiver are in communication
`
`with the server;
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`based on the provided unique identifier, receive a set of messages from the
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`computing device,
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`the received set of messages referencing a piece of content
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`associated with a first media playing-element application of a plurality of media playing
`
`elements applications, 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;
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`select the first media playing—element_application from the plurality of
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`media playing—elements_applications based at least in part on the received
`
`message; and
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`control how the selected first media playing—-element_application plays the
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`referenced piece of content based on at least one command of the converted set of
`
`commandsincludedin the received set of messages.
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`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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`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 6 of 15 PageID #: 1158
`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 6 of 15 PagelD #: 1158
`
`Application No. 16/917,095
`Response Filed 03/03/2021
`Reply to Office Action of: 12/10/2020
`
`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.
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`15.
`
`(Currently Amended) The computerized system of claim 8, wherein each
`
`media playing-element application of the plurality of media playing-elements applicationsis
`
`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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`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 7 of 15 PageID #: 1159
`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 7 of 15 PagelD #: 1159
`
`Application No. 16/917,095
`Response Filed 03/03/2021
`Reply to Office Action of: 12/10/2020
`
`Attorney Docket No. 41197.280029
`
`17.
`
`(Currently Amended) 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
`
`application of a plurality of media playing-elements applications, 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
`
`application from the plurality of media playing-elements applications based at
`
`least in part on the received message; and
`
`controlling, by the media receiver, how the selected first media playing
`
`element_application plays the referenced piece of content based onat least one
`
`commandof the converted set of commandsincluded in the received set of messages.
`
`18.
`
`(Currently Amended) The method of claim 17, wherein the media receiver
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`is coupled to a display, and the media receiver controls how the selected first media playing
`
`element application 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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`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 8 of 15 PageID #: 1160
`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 8 of 15 PagelD #: 1160
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`Application No. 16/917,095
`Response Filed 03/03/2021
`Reply to Office Action of: 12/10/2020
`
`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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`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 9 of 15 PageID #: 1161
`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 9 of 15 PagelD #: 1161
`
`Application No. 16/917,095
`Response Filed 03/03/2021
`Reply to Office Action of: 12/10/2020
`
`Attorney Docket No. 41197.280029
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`SUMMARY OF EXAMINER INTERVIEW
`
`Applicants would like to thank the Examiner for granting an interview on
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`November 12, 2020. During the interview, Applicant discussed the claimed invention and argued
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`interpretations relating to “media playing element(s).” The Examiner suggested clarification
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`relating to this phrasing, which has been addressed in the subject response. Applicant thanks
`
`examiner for his time.
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`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 10 of 15 PageID #: 1162
`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 10 of 15 PagelD #: 1162
`
`Application No. 16/917,095
`Response Filed 03/03/2021
`Reply to Office Action of: 12/10/2020
`
`Attorney Docket No. 41197.280029
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`REMARKS
`
`The Non-Final Office Action mailed December 10, 2020 has been received and
`
`reviewed. Prior to the present communication, claims were pending and claims stand rejected.
`
`Each of Claim(s) 1, 3, 7-8, 15, and 17-18 has been amended herein. Reconsideration of the subject
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`application is respectfully requested in view of the amendments and the following remarks.
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`Rejections based on 35 U.S.C.§102
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`Claims 1, 5, 8, 12, 15 and 16 were rejected under 35 U.S.C. § 102(a)(2) as
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`ostensibly being anticipated by U.S. Publication No. 2009/0172780 A1 to Sukedaet al. (hereinafter
`
`"Sukeda"). As the asserted reference fails to describe, expressly or inherently, each and every
`
`element recited in the rejected claim(s), Applicant respectfully traverses the rejection, as
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`hereinafter set forth.
`
`Applicant submits that Sukeda fails to describe, among other things, “...the
`
`received set of messages referencing a piece of content associated with a first media playing
`
`application of a plurality of media playing applications, and including a set of commandsthat
`
`corresponds to the first media playing application” and “selecting the first media playing
`
`application from the plurality of media playing applications basedat least in part on the received
`
`message” as similarly recited in amended independentclaims 1, 8, and 15.
`
`In the Office Action mailed December10, 2020, the Office interprets the previously
`
`recited claim language of “media playing element” as “data” (e.g., data 113 as shownin Fig. 3;
`
`paragraph [0050]), which includes “an ID 181 of the display terminal and information such as a
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`displayed state 182, a volume 183, a date and time of update 184, etc., and defines the playback
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`status and volumeof each display terminal.” See Office Action, pp. 3-4. The Office further asserts
`
`that the step of selecting “the first media playing element from the plurality of media playing
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`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 11 of 15 PageID #: 1163
`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 11 of 15 PagelD #: 1163
`
`Application No. 16/917,095
`Response Filed 03/03/2021
`Reply to Office Action of: 12/10/2020
`
`Attorney Docket No. 41197.280029
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`elements” is described in Sudeka by referencing step 318 as shownin Fig. 5 and paragraph [0053],
`
`reciting “...when the Jist of contents is browsed on the operation terminal (317) and an individual
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`content is selected from the list (318), the server updates the latest display contents 112, and
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`displays a thumbnail image, details contents information, or the like on a screen of the operation
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`terminal (319).” See Office Action, p. 4.
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`As amended, for instance, independent claim | recites
`
`“...the received set of
`
`“ce
`
`messages referencing a piece of content associated with a first media playing application of a
`
`plurality of media playing applications, and including a set of commandsthat correspondsto the
`
`first media playing application.” Amended independent claim 1 further recites “selecting the first
`
`media playing application from the plurality of media playing applications basedatleast in part
`
`on the received message.” Sudeka does not describe these features. At best, Sudeka describes
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`“data” that includes “information, such as a display mode 161 whetherto display a single content
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`or a list display, an ID 162 of the display terminal, an ID (or arrangement) 163 of the contents to
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`be displayed, a search condition and keyword 164 inputted from the operation terminal (when
`
`needed), and a date and time of update 165.” Sudeka further references “metadata” that can include
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`“a reference 175 to a content body 177 and variety of information related to the content.” See
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`Office Action, p. 3. Applicant submits that, among these definitions of “data” included in Sudeka,
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`none of a display mode, ID of terminal, ID of content(s), search condition, keyword, or date and
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`time, describe “a first media playing application of a plurality of media playing applications.”
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`Applicant also submits that, among the definitions of “metadata” according to Sudeka, none of a
`
`reference to a content body or information related to the content” describes “a first media playing
`
`application of a plurality of media playing applications.” Moreover, even if somehow the Office
`
`wereto interpret the inequivalent language of Sudekato describe “‘a first media playing application
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`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 12 of 15 PageID #: 1164
`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 12 of 15 PagelD #: 1164
`
`Application No. 16/917,095
`Response Filed 03/03/2021
`Reply to Office Action of: 12/10/2020
`
`Attorney Docket No. 41197.280029
`
`of a plurality of media playing applications,” Applicant submits that Sudeka does not describe
`
`“selecting the first media playing application from the plurality of media playing applications
`
`basedat least in part on the received message.” Instead, the Office asserts that Sudeka purportedly
`
`describes a selection of “an individual content” froma“list of contents ... browsed on the operation
`
`terminal (317),” which causes a server update to “the latest display contents” and “display a
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`thumbnail image, detailed contents information, or the like on a screen of the operation terminal.”
`
`Applicatn submits that Sudeka’s selection is clearly not “selecting the first media playing
`
`application from the plurality of media playing applications based at least in part on the received
`
`message.”
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`Forat least the reasons as detailed hereinabovefor the similar features of amended
`
`independent claim(s) 1, 8, and 15, Applicant respectfully requests that the rejection to the
`
`independent claims be withdrawn. As claims 5, 12, and 16 dependdirectly or indirectly from the
`
`amended independent claims, Applicant respectfully requests that the rejection to dependent
`
`claims 5, 12, and 16 be withdrawn for the same reasons as the amended independentclaims from
`
`which they depend,and for the additional features recited therein. Accordingly, withdrawalof the
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`rejections of claims 5, 12, and 16 is respectfully requested as well, for at least the above-cited
`
`reasons. Claims 1, 5, 8, 12, 15 and 16 are believed to be in condition for allowance and such
`
`favorable action is respectfully requested.
`
`Rejections based on 35 U.S.C.§103
`
`Claims 2-4, 6, 7, 9-11, 13, 14 and 17-20 were rejected under 35 U.S.C. § 103 as
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`ostensibly being unpatentable over U.S. Publication No. 2009/0172780 A1 to Sukeda et al.
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`(hereinafter "Sukeda"), in view of U.S. Publication No. 2009/0248802 Al to Mahajan et al.
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`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 13 of 15 PageID #: 1165
`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 13 of 15 PagelD #: 1165
`
`Application No. 16/917,095
`Response Filed 03/03/2021
`Reply to Office Action of: 12/10/2020
`
`Attorney Docket No. 41197.280029
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`(hereinafter "Mahajan"). As the cited references, both alone or in combination, fail to teach or
`
`suggest all of the features of the independent claim(s) as amended, Applicant respectfully traverses
`
`this rejection, as hereinafter set forth.
`
`As noted above, Sukeda fails to describe or teach, among other things, “...the
`
`received set of messages referencing a piece of content associated with a first media playing
`
`application of a plurality of media playing applications, and including a set of commandsthat
`
`corresponds to the first media playing application” and “selecting the first media playing
`
`application from the plurality of media playing applications basedat least in part on the received
`
`message” as similarly recited in amended independent claims 1, 8, and 15. Applicant submits that
`
`Mahajan fails to cure the deficiencies of Sukeda and thus therejection to claims 2-4, 6, 7, 9-11,
`
`13, 14 and 17-20 should be withdrawn for the same reasonsas the independent claims from which
`
`they depend andfor the additional features recited therein. In fact, Mahajan is silent in teaching
`
`“...the received set of messages referencing a piece of content associated with a first media playing
`
`application of a plurality of media playing applications, and including a set of commandsthat
`
`corresponds to the first media playing application” and “selecting the first media playing
`
`application from the plurality of media playing applications basedat least in part on the received
`
`message” as similarly recited in amended independent claims 1, 8, and 15. At best, Mahajan
`
`discusses how “generic media playback commands can be sent to the client” and “client can
`
`convert the generic commands into commands that are specific to a platform supported by the
`
`client.” See Mahajan, {[0014]. Mahajan further discusses how a “collaboration media abstraction
`
`layer 130 can abstract or genericize the media playback commandsspecific to media platform 122”
`
`and thus “the genericized media playback commandscan then betranslated into media playback
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`commands specific to the client's media platform 126.” Applicant submits that Mahajan’s
`
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`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 14 of 15 PagelD #: 1166
`
`Application No. 16/917,095
`Response Filed 03/03/2021
`Reply to Office Action of: 12/10/2020
`
`Attorney Docket No. 41197.280029
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`translations for playback commandsare being performed based on a “client’s media platform” as
`
`opposed to “...the received set of messages referencing a piece of content associated with a first
`
`media playing application of a plurality of media playing applications, and including a set of
`
`commandsthat correspondsto thefirst media playing application” and “selecting the first media
`
`playing application from the plurality ofmedia playing applications basedat least in part on the
`
`received message.” Instead, Mahajan discusses genericizing media playback commands and
`
`translating them “specific to the client’s media platform,” which is not “...the received set of
`
`messages referencing a piece of content associated with a first media playing application of a
`
`plurality of media playing applications, and including a set of commands that correspondsto the
`
`first media playing application” and “selecting the first media playing application from the
`
`plurality of media playing applications basedat least in part on the received message.” Thereis,
`
`in fact, no selection of a media playing application according to Mahajan, but instead a mere
`
`translation of genericized commands to a media platform specific to a client. See Mahajan,
`
`q[0022].
`
`Asthe applied references, both alone and in combination, do not teach or suggest
`
`all features of amended independentclaims 1, 8, and 15, Applicant respectfully requests that the
`
`35 U.S.C. § 103(a) rejection be withdrawn. As claims 2-4, 6, 7, 9-11, 13, 14 and 17-20 depend
`
`directly or indirectly from amended independent claim(s) 1, 8, and 15, respectively, Applicant
`
`respectfully requests that the 35 U.S.C. § 103(a) rejection to claims 2-4, 6, 7, 9-11, 13, 14 and 17-
`
`20 be withdrawn for the same reasons as the amended independent claim(s) from which they
`
`depend, and for the additional features recited therein.
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`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 15 of 15 PageID #: 1167
`Case 2:23-cv-00059-JRG Document 40-8 Filed 04/18/24 Page 15 of 15 PagelD #: 1167
`
`Application No. 16/917,095
`Response Filed 03/03/2021
`Reply to Office Action of: 12/10/2020
`
`Attorney Docket No. 41197.280029
`
`CONCLUSION
`
`For at least the reasons stated above, the pending claims are believed to be in
`
`condition for allowance. Applicant respectfully requests 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
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`fees due have been paid. However,if this belief is in error, the Commissioneris hereby authorized
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`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
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