Case 6:21-cv-00569-ADA Document 159-4 Filed 01/12/23 Page 1 of 4
`
`Exhibit R
`
`

`

`Case 6:21-cv-00569-ADA Document 159-4 Filed 01/12/23 Page 2 of 4
`
`UNITED STA (cid:9)I ES PA (cid:9) PENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO. (cid:9)
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO. (cid:9)
`
`CONFIRMATION NO.
`
`13/245,001
`
`09/26/2011
`
`David Strober
`
`30160-0002002
`
`4575
`
`06/26/2012
`7590 (cid:9)
`26211 (cid:9)
`FISH & RICHARDSON P.C. (NY)
`P.O. BOX 1022
`MINNEAPOLIS, MN 55440-1022
`
`EXAMINER
`
`HEFFINGTON, JOHN M
`
`ART UNIT
`
`PAPER NUMBER
`
`2172
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/26/2012
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`PATDOCTC@fr.com
`
`PTOL-90A (Rev. 04/07)
`
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`

`

`Case 6:21-cv-00569-ADA Document 159-4 Filed 01/12/23 Page 3 of 4
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`13/245,001
`
`Examiner
`
`STROBER, DAVID
`
`Art Unit
`
`2172
`JOHN HEFFINGTON
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`- (cid:9) Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`- (cid:9) Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`Status
`
`1)0 Responsive to communication(s) filed on 22 February 2012.
`2a)Z This action is FINAL. (cid:9)
`2b)EIThis action is non-final.
`3)0 An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`4)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`Disposition of Claims
`
`5)E1 Claim(s) 1-4 and 6-27 is/are pending in the application.
`5a) Of the above claim(s) (cid:9)
`is/are withdrawn from consideration.
`6)0 Claim(s) (cid:9)
`is/are allowed.
`7)Z Claim(s) 1-4, 6-27 is/are rejected.
`8)0 Claim(s) (cid:9)
`is/are objected to.
`9)0 Claim(s) (cid:9)
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`10)0 The specification is objected to by the Examiner.
`11)0 The drawing(s) filed on (cid:9)
`is/are: a)0 accepted or b)0 objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`12)0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`13)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)0 All b)E1Some * c)0 None of:
`1.0 Certified copies of the priority documents have been received.
`.
`2.0 Certified copies of the priority documents have been received in Application No. (cid:9)
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) Z Notice of References Cited (PTO-892)
`2) q Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) Z Information Disclosure Statement(s) (PTO/SIB/08)
`Paper No(s)/Mail Date 9/26/11, 12/13/11, 2/22/12.
`
`4) q Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`5) q Notice of Informal Patent Application
`6) q Other: (cid:9)
`
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 03-11)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20120527
`
`(cid:9)
`(cid:9)
`

`

`Case 6:21-cv-00569-ADA Document 159-4 Filed 01/12/23 Page 4 of 4
`
`Application/Control Number: 13/245,001 (cid:9)
`Art Unit: 2172
`
`Page 5
`
`content ." (paragraph 0136). It can be seen that from the media destination/rendering
`
`device, the user can request, through the media server, media content via a bookmark.
`
`After the media content is selected, the media server determines the capabilities of the
`
`media destination/rendering device and sends playback commands depending on the
`
`rendering capabilities of the media destination/rendering device. Since any media
`
`destination/rendering device, which can have different rendering capabilities from other
`
`media destinations/rendering devices, can request media content and the
`
`rendering/playback commands will be determined according to the rendering
`
`capabilities of the media destination/rendering device, the request for the media content
`
`via a bookmark acts as a universal playback control. In addition, the applicant seems to
`
`be arguing that the remote personal computing device and the display device are
`
`different; however, there is nothing in the claims that requires that the display device
`
`and the remote personal computing device be separate. In fact, the limitation, "a
`
`message for transmission to or retrieval by the display device," seems to indicate that
`
`the remote personal computing device and the display device are connected to each
`
`other. Therefore, the media destination/rendering device, which can include a display
`
`device, reads on both the personal computing device and the display device.
`
`The applicant argues "Such playback controls are not sent from the target rendering
`
`device (which allegedly corresponds to the claimed 'personal computing device') to the
`
`media server component 100 or any component of the application 10 (which allegedly
`
`corresponds to the claimed "server system").3 Therefore, the media component 100 of
`
`