`
`Atty Dkt No. 406855
`Filed Via EFS-Web
`
`Remarks
`
`The Examiner’s Office action mailed July 7, 2010, which rejected claims 6—35 and 41—
`
`71 has been reviewed. Claims 6 and 41 have been amended, new claims 71 and 72 have been
`
`added, and claim 1—5 and 36—40 have been cancelled. In view of the following remarks,
`
`Applicants respectfully submit that the application is in condition for allowance.
`
`
`Claim Rejections Under 35 U.S.C. § 101
`
`The Examiner has rejected claims 6—21, 24—35, and 41—70 as being directed to non—
`
`statutory subject matter. In the Office action, the Examiner refers to In re Bilski,88 USPQ 2d
`
`1386 and states “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.”1 Applicants point out that in Bilski v. Kappos, the
`
`Supreme Court recently struck down the Federal Circuit’ s "machine—or—transformation test”
`
`as the exclusive test for patentability. In particular, the Supreme Court held that “[T]he
`
`machine—or—transformation test is not the sole test for patent eligibility under § 101.”2
`
`Furthermore, regarding business methods as patentable subject matter, the Supreme
`
`Court stated “the Patent Act leaves open the possibility that there are at least some processes
`
`that can be fairly described as business methods that are within patentable subject matter
`
`under §101.”3 While the Supreme Court did not address in Bilski v. Kappos whether reciting
`
`a computer in a process claim sufficiently ties a process to a machine, on at least one occasion
`
`the Board of Patent Appeals and Interferences (BPAI) has indicated that a processor, memory,
`
`or databases recited in the claims is sufficient. For example, in Ex parte Borenstein, the BPAI
`
`found:
`
`“while the storage of information in independent claim 1 could arguably be done as a
`mental process, the recitation of a structured relationship between multiple stores that
`requires “path information” inherently implies that this information must be stored on
`a computer or database. This “particular” computer or database is sufficient structure
`to meet the machine prong of the machine—or—transformation test of In re Bilski.”
`
`
`1 See Office action, page 3.
`2 Bilski v. Kappos, 561 US. _ (2010).
`3 Id.
`
`4696421
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`12
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`
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`Patent
`
`Atty Dkt No. 406855
`Filed Via EFS-Web
`
`Although the machine—or—transformation test is no longer the sole test for patent
`
`eligibility under § 101, applicants submit that a switch management system in amended claim
`
`6 is a structural component. In particular, applicants submit that the application describes the
`
`Real Time Switch Management System (RTSMS) as a communication device. For example,
`
`the present application provides “The packet networks 114 and 122 each are a communication
`
`network capable of transmitting data, such as signaling or media streaming, to or from a
`
`communication device in the streaming system 102, such as to or from the ESRP 104, the
`
`RTSMS 106, the NRP 110, the MMS 112, the portal 116, and/or the viewers 118 and/or
`
`120.”4 Accordingly, the recitation of a switch management system in claim 6 is sufficient
`
`structure to satisfy the machine prong of the machine—or—transformation test.
`
`Amended claim 41 recites, in part, a switch management system to receive a
`
`communication comprising the request. As described above, the switch management system
`
`is a structural element and, thus, amended claim 41 is directed to patentable subject matter.
`
`Claims 7—21 and 42—70 are dependent claims and incorporate the structural limitations
`
`of the independent claims from which they depend. Accordingly, for the reasons above,
`
`Applicants submit that claims 6—21, 24—35, and 41—70 are directed to statutory subject matter,
`
`and, thus, in compliance with 35 U.S.C. § 101.
`
`
`Claim Rejections Under 35 U.S.C. § 102
`
`The Examiner rejected claims 6, 17—23, 35, 41, 52—58, and 70 under 35 U.S.C. §
`
`102(e) as being anticipated by US. Patent No. 6,385,596 to Wiser et al (“Wiser”). “A claim
`
`is anticipated only if each and every element as set forth in the claim is found, either expressly
`
`or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil C0. of
`
`California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Applicants submit
`
`that Wiser fails to disclose, teach, or suggest each and every element of Applicants’ claims
`
`and, thus, Wiser is not an anticipatory reference under 35 U.S.C. § 102(e).
`
`Moreover, unless a reference discloses within the four corners of the document not
`
`only all of the limitations claimed but also all of the limitations arranged or combined in the
`
`
`
`4 See Application, paragraph 130.
`
`4696421
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`13
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`
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`Patent
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`Atty Dkt No. 406855
`Filed Via EFS-Web
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`same way as recited in the claim, it cannot be said to prove prior invention of the thing
`
`claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net Moneyln, Inc. v. Verisign,
`
`Inc. US. App. LEXIS 2l827 (Fed Cir. 2008).
`
`The following is claim 6 with underlined portions that are not disclosed, taught, or
`
`suggested by the cited reference.
`
`A method for reserving media for a viewer, comprising:
`6.
`
`at a switch management system, receiving a program comprising at least one media
`
`reference identifying at least one media of the program and an order
`
`comprising at least one order rule associated with the at least one media of the
`program;
`
`receiving a communication at a reservation system of the switch management system,
`the communication identifying the at least one media;
`
`using the at least one order rule associated with the at least one media of the program
`
`and the at least one media reference identifying the at least one media of the
`
`program to generate a presentation for the at least one media at the reservation
`system;
`
`determining if a system resource is available to stream the presentation at the
`reservation system and, if so, creating a reservation for the presentation; and
`assigning a reservation identification to the reservation at the reservation system.
`
`Regarding claim 6, the Examiner asserts that “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 — col. 17,
`
`line 21); and assigning a reservation identification to the reservation (col. 17, lines 22—35).”5
`
`Applicants respectfully submit that Wiser fails to disclose, teach, or suggest each and every
`
`element of amended claim 6.
`
`The present application discloses a system and method for streaming media to a
`
`viewer. The system includes a real time switch management system (RTSMS) that includes a
`
`
`
`5 See Office action, page 4.
`
`4696421
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`14
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`Patent
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`Atty Dkt No. 406855
`Filed Via EFS-Web
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`reservation system.6 The switch management system receives signaling from a viewer. The
`
`initial signaling from the viewer may, for example, be a request for a program or programs.7
`
`It may, for example, also be a request for an individual media or list of media.8
`
`As disclosed in the present application, a program may have a list of media, an order,
`
`and/or other media rules. The program may also have other rules. The media list, the order,
`
`and any other special rules govern the transmission of the media for a program.9
`
`An order is a request for the network owner to provide some sort of streaming or
`
`related service, such as storage. An order can contain one or more order components, such as
`
`one or more service billing rules, storage billing rules, collection rules, viewing rules,
`
`settlement rules, and other fiscally important information.10
`
`For example, the present application discloses the following regarding an order of a
`
`program.
`
`An order may contain collection rules identifying which entity or entities are
`collecting a payment for services rendered. For example, a service rule that designates
`pay—per—view might require an immediate credit card payment by the viewer. The
`collection rule may identify the credit card collection agency, collection account, and
`other vital settlement data for the processing of the viewer’s credit card. In another
`example, the viewer may select pay—per—view and simply be billed the amount on their
`monthly cable bill. Collection rules also apply to the invoicing of charges to corporate
`type accounts, such as how soon payment is due after the invoice is printed.
`Collection rules focus on receiving the payment portion of the transaction. Multiple
`collection rules may be applied to a single order.11
`
`An order may contain viewing rules for the media and/or programs that are
`attached to it. Viewing rules associated with an order allow the publisher to determine
`who sees the media or program based on the viewer’s account status. For example, a
`viewing rule for a subscription based service in which a viewer is 90 days or more
`behind in payments might block the service.12
`
`In another example, if a viewer selects a pay—per—view media item that requires
`a credit card payment, and the credit card collection agency returns a code declaring
`the card is over its limit, the viewing rule might block the service. Order viewing
`rules typically are associated to a credit rating or current collection status of an
`
`
`6 See Application, Figure 1.
`7 See Application, paragraph 87.
`8 See Application, paragraphs 87 and 169.
`9 See Application, paragraph 52.
`10 See Application, paragraph 61.
`11 See Application, paragraph 64.
`12 See Applications, paragraph 65.
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`4696421
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`15
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`
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`Patent
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`Atty Dkt No. 406855
`Filed Via EFS-Web
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`account for the person requesting to view the media or the publisher wishing to make
`the media available for distribution.13
`
`An order can contain settlement rules for determining how collections are
`divided and which entities participate in the settlement. For example, a program may
`be created by a publisher in which advertisers agree to pay the publisher and the
`network owner for targeting their advertising to a specific set of viewers. The viewer
`is allowed to view the program free of charge, except the viewer will receive
`advertisements. The settlement rules would describe the agreed upon advertising rates
`that will be applied on a per viewer basis, the percentage or fixed fee being supplied to
`the network owner for each viewer, and other settlement data.14
`
`The switch management system accepts programs and their respective orders from a
`
`service routing processor when the programs are published.15 After a program is published, a
`
`presentation may be generated based on the program. For example, a presentation can be
`
`generated from applying a viewer profile to a program, including the program’s order and any
`
`other media rules, at the time a reservation is made for the program by the viewer.16
`
`The application also describes that the reservation system receives a communication
`
`identifying requested media, creates a presentation for the viewer based on the program that
`
`identifies the requested media, including any associated order rules, and builds a reservation
`
`for the presentation.17
`
`Amended claim 6 recites, in part, “at a switch management system, receiving a
`
`program comprising at least one media reference identifying at least one media of the
`
`program and an order comprising at least one order rule associated with the at least one media
`
`of the program” and “using the at least one order rule associated with the at least one media of
`
`the program and the at least one media reference identifying the at least one media of the
`
`program to generate a presentation for the at least one media at the reservation system”
`
`The cited portions of Wiser do not disclose, teach, or suggest receiving a program
`
`comprising a media reference identifying media and an order rule associated with the media.
`
`In particular, Wiser does not teach an order rule that is part of a program, including where that
`
`program also has the identification of the media.
`
`13 See Applications, paragraph 66.
`14 See Applications, paragraph 67.
`15 See Application, paragraph 82.
`16 See Application, paragraph 71.
`17 See Application, paragraphs 87-88, 138, 143—144, and 180-189.
`
`4696421
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`16
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`
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`Patent
`
`Atty Dkt No. 406855
`Filed Via EFS-Web
`
`The Examiner cites column 17, lines 36—52 of Wiser as disclosing “an order having at
`77
`
`least one order component.
`
`1 This cited portion of Wiser discloses:
`
`“The content manager 112 updates the transaction database 130 to include a
`new entry with the data from the voucher packet. This data will be used subsequently
`to authenticate a download request from the media player 116 against a validated
`purchase. More particularly, the content manager 112 maintains three sets of data
`regarding reserved and available for retrieval media files:
`
`i) Pending purchases. These are media data files 200 that are reserved but not
`yet authorized for delivery;
`
`ii) Purchased and not delivered. These are media data files 200 that have been
`
`authorized for delivery and for which a receipt token has been issued but not
`yet redeemed; and
`
`iii) Purchased and delivered. These are media data files 200 for which a
`
`receipt token has been issued, validated, and redeemed by delivery of the file
`to the requesting media player 116.”19
`
`Thus, the above cited portion of Wiser describes storing data in a transaction table that
`
`merely indicates whether a particular media file is pending purchase, purchased and not
`
`delivered, or purchase and delivered. It does not teach the claimed order rule or receiving a
`
`program comprising at least one media reference identifying at least one media of the
`
`program and an order comprising at least one order rule associated with the at least one media
`
`of the program.
`
`Any order in Wiser is not a rule that is part of the claimed program, not associated
`
`with the media in the claimed program, and not used to generate the presentation. The order
`
`as described in Wiser is an action performed by the user, such as ordering the media, or the
`
`result of that ordering process.
`
`In addition, Wiser does not teach or suggest using an order rule associated with the
`
`media of the program and the media reference identifying the media of the program to
`
`generate a presentation for the media. Again, the combination of an order rule and a media
`
`
`
`18 See Office action at page 4.
`19 See Wiser, column 17, lines 36-52.
`
`4696421
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`17
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`
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`Patent
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`Atty Dkt No. 406855
`Filed Via EFS-Web
`
`reference in a program is not taught, nor is using the combination in order to generate a
`
`presentation.
`
`If the Examiner believes otherwise, Applicants request the Examiner to identify the
`
`specific column and line numbers where this limitation is disclosed in compliance with MPEP
`
`707 and 37 CPR. l.lO4(c)(2).
`
`For the reasons discussed above, Applicants submit that Wiser not only fails to teach,
`
`or suggest each and every element of claim 6, but the cited references clearly do not disclose
`
`all of the limitations arranged or combined in the same way as recited in claim 6. Thus,
`
`independent claim 6 is not anticipated by the Wiser reference.
`
`Amended independent claim 41 is patentable over Wiser under 35 U.S.C. § 102(e)
`
`because the underlined portions of independent claim 19 below are not disclosed, taught, or
`
`suggested by the cited references.
`
`A system for reserving media for a viewer comprising:
`41.
`a switch management system to receive a program comprising at least one media
`reference identifying the at least one media of the program and an order
`comprising at least one order rule associated with the at least one media of the
`program and to receive a communication, the communication identifying the at
`least one media, the switch management system comprising a reservation
`system comprising:
`a presentation creator to use the at least one order rule associated with the at
`least one media of the program and the at least one media reference
`identifying the at least one media of the program to generate a
`presentation for the at least one; and
`a reservation generator to determine if a system resource is available to stream
`the presentation and, if so, to create a reservation for the presentation
`and to assign a reservation identification to the reservation.
`
`The remarks made above with respect to claim 6 and the disclosures of Wiser
`
`similarly apply to claim 41. With respect to claim 41, Wiser fails to teach, disclose, or
`
`suggest a switch management system to receive a program comprising at least one media
`
`reference identifying the at least one media of the program and an order comprising at least
`
`one order rule associated with the at least one media of the program. The cited reference also
`
`fails to teach, disclose, or suggest a presentation creator to use the at least one order rule
`
`associated with the at least one media of the program and the at least one media reference
`
`4696421
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`18
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`
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`Patent
`
`Atty Dkt No. 406855
`Filed Via EFS-Web
`
`identifying the at least one media of the program to generate a presentation for the at least
`
`0116.
`
`
`Claims Rejections 35 U.S.C. §lO3
`
`The Examiner rejected claims 7—16, 24—34, 42—51, and 59—69 under 35 U.S.C. § 103(a)
`
`as being unpatentable over Wiser in view of US. Patent Application No. 2001/0078444 to
`
`Krewin et al (“Krewin”) Applicants respectfully submit that whether considered alone or in
`
`combination, Wiser and Krewin fail to disclose, teach, or suggest all the features of the
`
`claimed invention. Thus, primafacie obviousness cannot be established.
`
`(See MPEP 2142
`
`and 2143.)
`
`Regarding claim 7—16, 24—34, 42—51, and 59—69, the Examiner acknowledges that
`
`Wiser does not teach the use of a viewer profile to select other media as claimed in claim 7.
`
`(See Office action at page 5.) However, the Examiner relies on Krewin to remedy this
`
`deficiency. Without admitting agreement with the Examiner’s interpretation of Krewin as
`
`teaching a viewing profile to dynamically select another media or presentation select,
`
`Applicants point out that Krewin fails to remedy all of the deficiencies of Wiser with respect
`
`to amended claims 6 and 41.
`
`Claims 7—16 and 24—34 depend from claim 6 and incorporate all the limitations of
`
`claim 6. Regarding claim 6, Krewin fails to teach the deficiencies of Wiser. In particular,
`
`Wiser and Krewin fail to disclose, teach, or suggest at a switch management system, receiving
`
`a program comprising at least one media reference identifying at least one media of the
`
`program and an order comprising at least one order rule associated with the at least one media
`
`of the program. The cited references also fail to disclose, teach, or suggest using the at least
`
`one order rule associated with the at least one media of the program and the at least one media
`
`reference identifying the at least one media of the program to generate a presentation for the
`
`at least one media at the reservation system
`
`Accordingly, it is submitted that Wiser and Krewin whether considered alone or in
`
`combination, fail to disclose, teach, or suggest each and every element of claim 6. Thus,
`
`claims 7—16 and 24—34 are patentable over the combination of Wiser and Krewin.
`
`Similarly, Krewin fails to remedy the deficiencies of Wiser discussed above with
`
`respect claims 42—51, and 59—69. In particular, Wiser and Krewin fail to disclose, teach, or
`
`4696421
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`19
`
`
`
`Patent
`
`Atty Dkt No. 406855
`Filed Via EFS-Web
`
`suggest a switch management system to receive a program comprising at least one media
`
`reference identifying the at least one media of the program and an order comprising at least
`
`one order rule associated with the at least one media of the program. The cited references
`
`also fail to teach, disclose, or suggest a presentation creator to use the at least one order rule
`
`associated with the at least one media of the program and the at least one media reference
`
`identifying the at least one media of the program to generate a presentation for the at least
`
`one.
`
`Claims 7—16, 24—34, 42—51, and 59—69 are patentable for reasons identified above, and
`
`withdrawal of the rejections of those claims is requested. Since the claims depending directly
`
`or indirectly therefrom include all of the limitations of the respective base claims, which are
`
`believed patentable, these claims also are believed to be allowable. Withdrawal of the
`
`rejections of those claims also is requested.
`
`Because the independent claims are believed patentable, it is not necessary to discuss
`
`patentable limitations of claims depending therefrom, the references, or the rejections. The
`
`lack of a discussion of patentable limitations of those dependent claims should not be
`
`construed to mean that there are not patentable limitations in those dependent claims.
`
`All reasons for patentability of the independent and dependent claims have not
`
`necessarily been discussed herein. No implication or construction should be made thereof.
`
`Applicants have no further remarks with regard to any references cited by the
`
`Examiner and made of record, whether or not acted upon by the Examiner in the action’s
`
`rejections, even if specifically identified in the action or any other paper or written or verbal
`
`communication. No implication or construction should be drawn about any review of the
`
`same by Applicants or Applicants’ attorney.
`
`Based on the foregoing, it is submitted that the Applicant’s claims 6—35 and 41—72 are
`
`patentable over the references of record. Issuance of a Notice of Allowance is solicited.
`
`Applicants submit herewith a payment for a two—month extension fee via the
`
`Electronic Filing System. The Applicants believe no other fees or petitions are due with this
`
`filing. However, should any such fees or petitions be required, please consider this a request
`
`therefore and authorization to charge Deposit Account No. 50—1662 as necessary. If the
`
`Examiner should require any additional information or amendment, Applicants’ attorney
`
`4696421
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`20
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`
`
`welcomes the opportunity to discuss the case with the Examiner in the event there are any
`
`questions or comments regarding the response or the application.
`
`.
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`Patent
`
`Atty Dkt No. 406855
`Filed Via EFS-Web
`
`Respectfully submitted,
`
`POLSINELLI SHUGART PC
`
`M/éfé/ég/ef4
`
`
`
`Robert O. Enyard, Jr., Reg. No. 57,780
`100 South Fourth Street, Suite 1000
`
`St. Louis, Missouri 63102
`
`Tel:
`(314) 552-6862/Fax:
`Attorney for Applicant(s)
`
`(314) 231-1776
`
`4696421
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`21
`
`
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