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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONF {MATION NO.
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`11/680,452
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`02/28/2007
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`Chuck Jennings
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`406855
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`5285
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`05/23/2014
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`7590
`27148
`pOLSINELupc
`900 WEST 48TH PLACE
`SUITE 900
`KANSAS CITY, MO 64112-1895
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`BLAIR, DOUGLAS B
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`2442
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`PAPER NUMBER
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`NOT *ICATION DATE
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`DELIVERY MODE
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`05/23/2014
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`uspt @polsinelli.c0m
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`PTOL—90A (Rev. 04/07)
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`Applicant(s)
`Application No.
` 11/680,452 JENNINGS ET AL.
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`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
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`DOUGLAS BLAIR first“ 2442
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX () 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).
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`In no event, however, may a reply be timely filed
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`Status
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`1)IXI Responsive to communication(s) filed on 4/27/2011.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`a)I:| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|: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 Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)|XI Claim(s) 6-35 and 41-78 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`7)IZ| Claim(s) 6-35 and 41- 78 is/are rejected.
`8)I:I Claim(s)_ is/are objected to.
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`9)|:l Claim((s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`
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`://www.usoto. ov/ atents/init events"
`h/index.‘s orsend an inquiry to PRI-Ifeedback{<‘buspto.qov.
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`htt
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
`11)|: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).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`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).
`Certified copies:
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`b)I:I Some” c)I:I None of the:
`a)|:l All
`1.|:| Certified copies of the priority documents have been received.
`2.|:| Certified copies of the priority documents have been received in Application No.
`3.|:I Copies of the certified copies of the priority documents have been received in this National Stage
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`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.
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`Attachment(s)
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`3) D Interview Summary (PT0_413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
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`.
`—
`4) I:I Other'
`2) D InformatIon DIscIosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20140512
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`Application/Control Number: 11/680,452
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`Page 2
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`Art Unit: 2442
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`The present application is being examined under the pre—AIA first to invent provisions.
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`DETAILED ACTION
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`Response to Arguments
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`Applicant's arguments filed 4/27/2011 have been fully considered but they are not
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`persuasive.
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`The applicant’s remarks with respect to the 101 rejection are not persuasive because the
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`applicant’s arguing about issues that pertain to process claims but claim 41 is not a process
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`claim. The applicant’s amendment to specify that the system is a device is not persuasive
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`because the applicant’s invention does not specify any hardware in which the applicant’s
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`invention is embodied and the term device by itself is broad enough to cover hardware or
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`software.
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`The Examiner has changed the interpretation of Wiser to meet the language of the
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`applicant’s claimed amendments. The Examiner points out that the claim terms are not defined
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`with any specific meaning by the applicant’s specification. The applicant’s specification does
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`not appear to be directed towards any new technology for distributing media. Instead the
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`specification describes general arrangements for processing and distributing media.
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`Claim Rejections - 35 USC § 112
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`The following is a quotation of 35 USC. 112(b):
`(b) CONCLUSION.7The specification shall conclude with one or more claims particularly pointing
`out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the
`invention.
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`The following is a quotation of 35 USC. 112 (pre—AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
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`Application/Control Number: 11/680,452
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`Page 3
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`Art Unit: 2442
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`Claims 6—35 and 41—78 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre—AIA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly claim the
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`subject matter which the inventor or a joint inventor, or for pre—AIA the applicant regards as the
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`invention.
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`Claim 6 recites the limitation "the at least one media of the presentation" in fourth
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`limitation of claim 6. There is insufficient antecedent basis for this limitation in the claim. The
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`previous limitation establishes that there is a presentation for the at least one media but it does
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`not establish that the presentation itself features media and therefore it is not clear what “media
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`of the presentation” is supposed to comprise.
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`Claim 19, 20, and 41, feature the same issue with the “the at least one media of the
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`presentation” language as claim 6.
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of pre—AIA 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless ,
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`(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 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.
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`Claims 6, 17—23, 35, 41, 52—58, and 70—78 are rejected under pre—AIA 35 U.S.C. 102(e) as
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`being anticipated by US. Patent Number 6,385,596 to Wiser et al.
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`Application/Control Number: 11/680,452
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`Page 4
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`Art Unit: 2442
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`As to claim 6, Wiser teaches a method for reserving media for a viewer, comprising, at a
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`switch management system device (Music Distribution Center 124), receiving a program (col.
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`10, line 59-col. 11, line 7 and col. 11, lines 20-25, The media data files are the program. The
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`content manager receives the media data files. The content manager is part of the music
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`distribution center so therefore the music distribution center also receives media data files)
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`comprising at least one media reference (col. 11, line 5, agency codes) identifying at least one
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`media of the program and an order comprising at least one order rule (col. 11, line 1, agent
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`codes) associated with the at least one media of the program; receiving a communication at a
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`reservation system (content manager 112) of the switch management system device (As shown
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`in Figure 1B, the Content Manager 112 is “of” the Music Distribution Center 124), the
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`communication identifying the at least one media (col. 16, lines 26-65); using the at least one
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`order rule associated with the at least one media of the program (col. 11, lines 49-62) and the at
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`least one media reference identifying the at least one media of the program to generate a
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`presentation for the at least one media the reservation system (col. 16, line 66-col. 17, line 5); at
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`the reservation system, determining if a system resource is available to stream media of the
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`presentation and if so creating a reservation for the presentation (col. 17, lines 6-12); and
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`assigning a reservation identification to the reservation at the reservation system (col. 17, lines
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`22-35, the voucher ID is the reservation identification).
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`As to claim 17, see col. 17, lines 22—35.
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`As to claim 18, see col. 16, line 61—col. 17, line 21.
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`As to claim 19, the delivery server reads on the system resource.
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`As to claims 20 and 21, see col. 14, line 61—col. 15, line 23.
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`Application/Control Number: 11/680,452
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`Page 5
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`Art Unit: 2442
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`As to claim 22, the content manager reads on the routing processor.
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`As to claim 23, see col. 16, lines 67—col. 17, line 35.
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`As to claim 35, see col. 16, lines 44—60.
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`As to claim 41, Wiser teaches a system for reserving media for a viewer comprising: a
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`switch management system device (Music Distribution Center 124) to receive a program (col.
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`10, line 59-col. 11, line 7 and col. 11, lines 20-25, The media data files are the program. The
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`content manager receives the media data files. The content manager is part of the music
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`distribution center so therefore the music distribution center also receives media data files)
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`comprising at least one media reference (col. 11, line 5, agency codes) identifying the at least
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`one media of the program and an order comprising at least one order rule (col. 11, line 1, agent
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`codes) associated with the at least one media of the program and to receive a communication, the
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`communication identifying the at least one media, the switch management system device
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`comprising a reservation system comprising: a presentation creator to use the at least one order
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`rule associated with the at least one media of the program (col. 11, lines 49-62) and the at least
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`one media reference identifying the at least one media of the program to generate a presentation
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`for the at least one media (col. 16, line 66-col. 17, line 5); and a reservation generator to
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`determine if a system resource is available to stream the at least one media of the presentation
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`and, if so, to create a reservation for the presentation (col. 17, lines 6-12) and to assign a
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`reservation identification to the reservation (col. 17, lines 22-35, the voucher ID is the
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`reservation identification).
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`As to claims 52—58, and 70, they are rejected for the same reasoning as claims 17—23, and
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`35.
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`Application/Control Number: 11/680,452
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`Page 6
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`Art Unit: 2442
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`As to claims 71 and 74, see col. 10, line 59—col. 11, line 7 and col. 11, lines 49—62, the
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`information attached to the media regarding payment qualifies as a "service".
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`As to claims 72, 73, 75, and 76, the cited portion qualifies as a server rule identifying
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`how a media viewing should be paid and the claimed collection rule thereby satisfying the "at
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`least one" limitation. If the applicant is trying to claim a system and method capable of
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`processing all of the claimed rules, then such a system should be explicitly claimed.
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`As to claims 77 and 78, see col. 11, lines 1 and 2, the agent code identifies the rights
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`agent and therefore identifies “how a collection is divided among participating entities".
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 USC. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(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.
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`Claims 7—16, 24—34, 42—51, and 59—69 are rejected under 35 USC. 103(a) as being
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`unpatentable over US. Patent Number 6,385,596 to Wiser et al. in view of US. Patent
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`Application Publication Number 2002/0078444 by Krewin et al.
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`As to claim 7, Wiser teaches the method of claim 6; however Wiser does not explicitly
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`teach the use of a viewer profile used to select other media as claimed in claim 7.
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`Krewin shows that the concept of using a viewer profile to dynamically select another
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`media for presentation to viewers is an obvious concept (paragraphs 27—32).
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`Application/Control Number: 11/680,452
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`Page 7
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`Art Unit: 2442
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`It would have been obvious to one of ordinary skill in the Computer networking art at the
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`time of the invention to combine the teachings of Wiser regarding reserving media with the
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`teachings of Krewin regarding using a viewer profile because such a system would not require
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`any changed in how Wiser operates to be implemented with Wiser and would provide viewers
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`with potentially useful supplemental information.
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`As to claims 8—14, see paragraphs 27—73 of Krewin.
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`As to claims 15 and 16, see paragraphs 27—73 of Krewin.
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`In claims 15, 16, 24, and 28 Wiser and Krewin are combined for the same reasoning as
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`explained in the rejection of claim 7.
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`As to claims 24—36 and 28—34, see paragraphs 27—73 of Krewin.
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`As to claim 27, see col. 14, lines 40—47 of Wiser.
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`As to claims 42—51 and 59—69, they are rejected for the same reasoning as claims 7—16
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`and 24—34.
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`Claim Rejections - 35 USC § 101
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`35 USC. 101 reads as follows:
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`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.
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`Claims 41—70, 74—76 and 78 are rejected under 35 USC. 101 because the claimed
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`invention is directed to non— statutory subject matter.
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`Claims 41—62 are directed towards a system comprising a presentation creator and a
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`reservation generator. Claims 63—69 further comprise a service order system. Claim 70 further
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`comprises a financial screener. None of these elements which comprise the claimed system are
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`Application/Control Number: 11/680,452
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`Page 8
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`Art Unit: 2442
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`explicitly disclosed as being hardware elements. Therefore claims 41—70, 74—76 and 78 are
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`broad enough to cover software per se. Software per se does not fit into any of the statutory
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`categories of invention.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to DOUGLAS BLAIR whose telephone number is (571)272—3893.
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`The examiner can normally be reached on 9:00am—5:30pm.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Glen Burgess can be reached on (571) 272—3949. The fax phone number for the
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`organization where this application or proceeding is assigned is 571—273—8300.
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
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`/DOUGLAS BLAIR/
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`Primary Examiner, Art Unit 2442
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