`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONF {MATION NO.
`
`11/680,452
`
`02/28/2007
`
`Chuck Jennings
`
`406855
`
`5285
`
`07/07/2010
`7590
`27148
`POLSINELLI SHUGHART PC
`700 W. 47TH STREET
`SUITE 1000
`KANSAS CITY, MO 64112-1802
`
`EXAMINER
`
`BLAIR, DOUGLAS B
`
`ART UNIT
`
`2442
`
`MAIL DATE
`
`07/07/2010
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`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.
`
`PTOL—90A (Rev. 04/07)
`
`
`
`
`
`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`11/680,452
`
`JENNINGS ET AL.
`
`Examiner
`
`DOUGLAS B. BLAIR
`
`Art Unit
`
`2442 -
`
`-- The MAILING DA TE 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
`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.
`-
`- 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)IXI Responsive to communication(s) filed on 04 June 2010.
`
`2a)I:I This action is FINAL.
`
`2b)IZI This action is non-final.
`
`3)I:I 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 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)IZI Claim(s) 1-70 is/are pending in the application.
`
`4a) Of the above claim(s) 1-5 and 36-40 is/are withdrawn from consideration.
`
`
`5)I:I Claim(s)
`
`is/are allowed.
`
`6)IXI Claim(s) 6-35 and 41-70 is/are rejected.
`
`7)I:I Claim(s) _ is/are objected to.
`
`8)I:I Claim(s) _ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)I:I The specification is objected to by the Examiner.
`
`
`10)I:I The drawing(s) filed on
`
`is/are: a)I:I accepted or b)I:I 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).
`
`11)I:I 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
`
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`
`a)I:I All
`
`b)I:I Some * c)I:I None of:
`
`1.I:I Certified copies of the priority documents have been received.
`
`2.I:I Certified copies of the priority documents have been received in Application No.
`
`
`
`3.I:I 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)
`
`4) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date. _
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`5) I:I Notice of Informal Patent Application
`3) IZI Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date 4/5/07 and 2/14/08. 6) D Other:
`
`U.S. Patent and Trademark Office
`
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20100630
`
`
`
`Application/Control Number: 11/680,452
`
`Page 2
`
`Art Unit: 2442
`
`DETAILED ACTION
`
`Election/Restrictions
`
`Applicant's election with traverse of claims 6-35 and 41-70 in the reply filed on 6/4/2010
`
`is acknowledged. The traversal is on the ground(s) that there is no burden on the examiner. This
`
`is not found persuasive because the applicant's traversal fails to address the substance of the
`
`claims themselves. Subclass searches are only one of many factors in a complete search and
`
`examination and the number of claims is totally irrelevant as it only takes one claim to define an
`
`entirely different invention.
`
`The requirement is still deemed proper and is therefore made FINAL.
`
`Claims 1-5 and 36-40 are withdrawn from filrther consideration pursuant to 37 CFR
`
`l.l42(b), as being drawn to a nonelected inventions, there being no allowable generic or linking
`
`claim. Applicant timely traversed the restriction (election) requirement in the reply filed on
`
`6/4/2010.
`
`Claim Rejections - 35 USC § 1 01
`
`35 USC. 101 reads as follows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or
`any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and
`requirements of this title.
`
`Claims 6-21, 24-35, and 41-70 are rejected under 35 USC. 101 because the claimed
`
`invention is directed to non-statutory subject matter.
`
`Claims 6-2l and 24-35 are rejected under 35 USC. 101 as not falling within one of the
`
`four statutory categories of invention. While the claims recite a series of steps or acts to be
`
`performed, a statutory “process” under 35 USC. 101 must (1) be tied to particular machine, or
`
`
`
`Application/Control Number: 11/680,452
`
`Page 3
`
`Art Unit: 2442
`
`(2) transform underlying subject matter (such as an article or material) to a different state or
`
`thing. See page 10 of In Re Bilski 88 USPQ2d 1385. The instant claims are neither positively
`
`tied to a particular machine that accomplishes the claimed method steps nor transform
`
`underlying subject matter, and therefore do not qualify as a statutory process. The claimed
`
`method including steps of generating, determining, assigning is broad enough that the claim
`
`could be completely performed mentally, verbally or without a machine nor is any
`
`transformation apparent. For example, a person could perform all of these steps without any
`
`machine by a person at a video store manually checking if DVD's are physically available and
`
`able to be reserved. Claims 22 and 23 were not included because a transmission would require
`
`some sort of machine in order to be carried out.
`
`Claims 41-62 are directed towards a system comprising a presentation creator and a
`
`reservation generator. Claims 63-69 further comprise a service order system. Claim 70 fithher
`
`comprises a financial screener. None of these elements which comprise the claimed system are
`
`explicitly disclosed as being hardware elements. Therefore claims 41-70 are broad enough to
`
`cover software per se. Software per se does not fit into any of the statutory categories of
`
`invention.
`
`Claim Rejections - 35 USC § 1 02
`
`The following is a quotation of the appropriate paragraphs of 35 USC. 102 that form the
`
`basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless ,
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`
`
`
`Application/Control Number: 11/680,452
`
`Page 4
`
`Art Unit: 2442
`
`international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this
`subsection of an application filed in the United States only if the international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
`
`Claims 6, 17-23, 35, 41, 52-58, and 70 are rejected under 35 U.S.C. 102(e) as being
`
`anticipated by US. Patent Number 6,385,596 to Wiser et a1.
`
`As to claim 6, Wiser teaches a method for reserving media for a request from a viewer
`
`(col. 16, lines 31-43) comprising: generating a presentation for at least one media based on a
`
`program identifying the at least one media, the program comprising at least one media reference
`
`identifying the at least one media and an order having at least one order component, the at least
`
`one media corresponding to at least a portion of the request (col. 17, lines 36-52); determining if
`
`a system resource is available to stream the presentation and, if so, creating a reservation for the
`
`presentation (col. 16, line 61-001. 17, line 21); and assigning a reservation identification to the
`
`reservation (col. 17, lines 22-35).
`
`As to claim 17, Wiser teaches tracking the reservation identification for the reservation
`
`(col. 17, lines 36-52).
`
`As to claim 18, Wiser teaches processing the presentation and the request to determine if
`
`the system resource is available (col. 16, line 61-col. 17, line 21).
`
`As to claim 19, the delivery server reads on the claimed system resource.
`
`As to claims 20 and 21, see col. 14, line 61-001. 15, line 23.
`
`As to claim 22, the content manager reads on the routing processor.
`
`As to claim 23, See col. 16, line 67-001. 17, line 35.
`
`As to claim 35 See col. 16, lines 44-60.
`
`As to claims 41, 52-58 and 70, they are rejected for the same reasoning as claims 6, 17-23
`
`and 35.
`
`
`
`Application/Control Number: 11/680,452
`
`Page 5
`
`Art Unit: 2442
`
`Claim Rejections - 35 USC § 1 03
`
`The following is a quotation of 35 USC. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`Claims 7-16, 24-34, 42-51, and 59-69 are rejected under 35 USC. 103(a) as being
`
`unpatentable over US. Patent Number 6,385,596 to Wiser et al. in view of US. Patent
`
`Application Publication Number 2002/0078444 by Krewin et al.
`
`As to claim 7, Wiser teaches the method of claim 6; however Wiser does not explicitly
`
`teach the use of a viewer profile used to select other media as claimed in claim 7.
`
`Krewin shows that the concept of using a viewer profile to dynamically select another
`
`media for presentation to viewers is an obvious concept (paragraphs 27-32).
`
`It would have been obvious to one of ordinary skill in the Computer networking art at the
`
`time of the invention to combine the teachings of Wiser regarding reserving media with the
`
`teachings of Krewin regarding using a viewer profile because such a system would not require
`
`any changed in how Wiser operates to be implemented with Wiser and would provide viewers
`
`with potentially useful supplemental information.
`
`As to claims 8-14, see paragraphs 27-73 of Krewin.
`
`As to claims 15 and 16, see paragraphs 27-73 of Krewin.
`
`In claims 15, 16, 24, and 28 Wiser and Krewin are combined for the same reasoning as
`
`explained in the rejection of claim 7.
`
`
`
`Application/Control Number: 11/680,452
`
`Page 6
`
`Art Unit: 2442
`
`As to claims 24-36 and 28-34, see paragraphs 27-73 of Krewin.
`
`As to claim 27, see col. 14, lines 40-47 of Wiser.
`
`As to claims 42-51 and 59-69, they are rejected for the same reasoning as claims 7-16
`
`and 24-34.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to DOUGLAS B. BLAIR Whose telephone number is (571)272-
`
`3893. The examiner can normally be reached on 9:00am-5:30pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Philip Lee can be reached on (571) 272-3967. The fax phone number for the
`
`organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair-direct.uspto. gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would
`
`like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/Douglas B Blair/
`
`
`
`Application/Control Number: 11/680,452
`
`Page 7
`
`Art Unit: 2442
`
`Primary Examiner, Art Unit 2442
`
`