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`Atty Dkt No. 406855
`Filed Via EFS— Web
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`Remarks
`
`The Examiner’s Office action mailed January 27, 2011, which rejected claims 6-35
`
`and 41-76 has been reviewed. Claims 6, 11, 19, 20, 27, 31, 41, 45-46, 48, 54-56, 67, 71, 74,
`
`and 76 have been amended, while new claims 77 and 78 have been added. Applicants
`
`appreciate and thank the Examiner for acknowledging that Applicants’ amendment to
`
`previously submitted claim 6 has overcome the rejection of claims 6-21 and 24-35 under 35
`
`USC § 101.1 In view of the following remarks, Applicants respectfully submit that the
`
`application is in condition for allowance.
`
`Claim Objections
`
`Claim 6 is objected to because the prior amendment to the third limitation deleted the
`
`semicolon which separates it from the fourth limitation. In response, Applicants have
`
`amended claim 6 to include the semicolon between the third and fourth limitations.
`
`Claim Rejections Under 35 USC. § 112
`
`Claim 74 is rejected under 35 USC. § 112, second paragraph, as being indefinite for
`
`failing to particularly point out and distinctly claim the subject matter which Applicants
`
`regard as the invention. In particular, previously submitted claim 74 recites the limitation
`
`“the system of claim 6” in the preamble of the claim. For examination purposes, the
`
`Examiner assumed that the Applicants intended to refer to the system of claim 41. In
`
`response, Applicants have amended claim 74 and confirm that claim 74 does depend from
`
`independent claim 41.
`
`Claim Rejections Under 35 USC. § 101
`
`The Examiner has rejected claims 41-70 and 74-76 as being directed to non-statutory
`
`subject matter. Applicants respectfully disagree.
`
`In the previously submitted response, Applicants amended claim 41 to claim a switch
`
`management system device. The same amendment was also made to previously submitted
`
`claim 6. As presented above, the Examiner acknowledged that the addition of the switch
`
`1 See Office action, page 2.
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`Atty Dkt No. 406855
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`management system to claim 6 was sufficient to overcome the rejection of claim 6 under 35
`
`USC § 101. Applicants have fiarther amended claims 6 and 41 to claim a “switch
`
`management system device.” As such, independent claim 41 that claims a switch
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`management system device is patentable under 35 USC. § 101.
`
`Applicants again submit that the application describes the Real Time Switch
`
`Management System (RTSMS) as a communication device. A “device” is known to be
`
`hardware by one skilled in the art. 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.”2 Clearly, from this passage alone, the real
`
`time switch management system (RTSMS) is a device. The present application also discloses,
`
`“One or more RTSMS devices may exist in the streaming system 102.”3 Accordingly, the
`
`recitation of a switch management system device in claim 41 provides sufficient structure to
`
`satisfy the machine prong of the machine-or-transformation test.
`
`The Interim Guidelines for “Determining Subject Matter Eligibility for Process
`
`Claims in View of Bilski v. Kappos,” as provided by the USPTO recite:
`
`“Factors To Be Considered in an Abstract Idea
`
`Determination of a Method Claim: A. Whether the method
`
`involves or is executed by a particular machine or apparatus. If so,
`the claims are less likely to be drawn to an abstract idea; if not,
`they are more likely to be so drawn. Where a machine or apparatus
`is recited or inherent in a patent claim, the following factors are
`relevant: (1) The particularity or generality of the elements of the
`machine or apparatus; i.e., the degree to which the machine in the
`claim can be specifically identified (not any and all machines).
`Incorporation of a particular machine or apparatus into the claimed
`method steps weighs toward eligibility. (2) Whether the machine
`or apparatus implements the steps of the method. Integral use of a
`machine or apparatus to achieve performance of the method
`weighs toward eligibility, as compared to where the machine or
`apparatus is merely an object on which the method operates, which
`weighs against eligibility.”4
`
`2 See Application, paragraph 130.
`3 See Application, paragraph 104.
`4 Fed Reg. Vol. 75, No. 143 p. 43925 (July 27, 2010).
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`Patent
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`Atty Dkt No. 406855
`Filed Via EFS— Web
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`Applicants submit that in addition to satisfying the machine-prong of the machine-or-
`
`transformation test, claim 41 is patentable under 35 U.S.C. § 101. In addition, the Federal
`
`Circuit in Research Corporation Technologies v. Microsoft Corporation stated, “inventions
`
`with specific applications or improvements to technologies in the marketplace are not likely to
`5
`
`be so abstract that they override the statutory language and framework of the Patent Act.
`
`a)
`
`In
`
`Research Corp, the court found the claims presented “functional and palpable applications in
`
`the field of computer technology,” and were patentable. Similarly, the present claims present
`
`functional and palpable applications in the field of computer technology. Claim 41 is directed
`
`to a specific application and does not merely claim an abstract idea.
`
`Claims 42-70 and 74-76 are dependent claims and incorporate the structural
`
`limitations of the independent claim 41 from which they depend. Accordingly, for the
`
`reasons above, Applicants submit that claims 41-70 and 74-76 are directed to statutory subject
`
`matter, and are 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 70-76 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 Co. 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 comers of the document not
`
`only all of the limitations claimed but also all of the limitations arranged or combined in the
`
`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 MoneyIn, Inc. v. Verisign,
`
`Inc. US. App. LEXIS 21827 (Fed Cir. 2008).
`
`The following is claim 6 with underlined portions that are not disclosed, taught, or
`
`suggested by the cited reference.
`
`5 Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010).
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`Patent
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`Atty Dkt No. 406855
`Filed Via EFS— Web
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`6.
`
`A method for reserving media for a viewer, comprising:
`
`at a switch management system device, 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
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`program;
`
`receiving a communication at a reservation system of the switch management system
`
`device, 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
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`program to generate a presentation for the at least one media at the reservation
`
`W;
`
`at the reservation system, determining if a system resource is available to stream the at
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`least one media of the presentation and= if so: creating a reservation for the
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`presentation; and
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`assigning a reservation identification to the reservation at the reservation system.
`
`Regarding claim 6, the Examiner asserts that “Wiser teaches a method for reserving
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`media for a viewer, comprising: at a switch management system (content manager 112),
`
`receiving a program comprising at least one media reference identifying at least one media of
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`the program and an order comprising at least one order rule associated with the at least one
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`media of the program (col. 10, line 59-col. 11, line 7 and Figure 1B, the distribution hub
`
`distributes to the content manager. The augmentation qualifies as the claimed “order rule”);
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`receiving a communication at a reservation system (the merchant server 132) of the switch
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`management system, the communication identifying the at least one media (col. 16, lines 26-
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`65); using the at least one order rule associated with the at least one media of the program
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`(col. 11, lines 49-62) and the at least one media reference identifying the at least one media of
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`the program to generate a presentation for the at least one media at the reservation system
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`(col. 16 line 66-col. 17, line 5); determining if a system resource is available to stream the
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`presentation at the reservation system and, if so, creating a reservation for the presentation
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`(col. 17, lines 6-12); and assigning a reservation identification to the reservation at the
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`Patent
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`Atty Dkt No. 406855
`Filed Via EFS— Web
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`reservation system (col. 17, lines 22-35, the voucher ID is the reservation identification).”6
`
`Applicants respectfully disagree and submit that Wiser fails to disclose, teach, or suggest each
`
`and every element of amended claim 6.
`
`Wiser publishes media data files (See Wiser, column 11, line 63). Whereas in the
`
`present claims, a program comprising both a media reference and an order rule for the media
`
`reference is received. Moreover, in the present claims, a presentation is generated based on
`
`applying the program, including both its media reference and its order rule. Whereas in
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`Wiser, any requested media is delivered if it exists. (See Wiser, column 17, lines 6-12). The
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`rights reporting of Wiser uploads u_sage of media, which describes the number of times media
`
`files have been used. (See Wiser, column 11, lines 49-55). The rights reporting process and
`
`its respective rights agents are used after media has been streamed in Wiser. They are not
`
`used to generate a presentation as in the present claims.
`
`The Examiner cites column 10, line 59-column 11, line 7 and Figure 1B of Wiser as
`
`disclosing “a switch management system (content manager 1 12), receiving a program
`
`comprising at least one media reference identifying at least one media of the program and an
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`order comprising at least one order rule associated with the at least one media of the
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`”7
`
`program.” The Examiner asserts that the augmentation qualifies as the claimed “order rule.
`
`Column 10, line 59-column 11, line 7 of Wiser recites:
`
`“Distribution Hub
`
`While an artist can upload a master media file directly to the content
`manager 112 from the authoring tool 102, the artist may instead forward a
`master media file to a distribution hub 104 for augmentation. A distribution
`hub may be a computer system managed by a recording agency or record
`label, or other agency, which manages or otherwise participates with the artist
`in the creation and promotion of the artist’s works. The distribution hub 104
`may be used to add agent codes which identify the rights agent responsible for
`receiving purchase and usage information from the content manager 112,
`along with agency identification codes which identify the artist and the media
`data created by the artist to the agency. For example, agency codes may by the
`product code or SKU code used by the agency to track each artists’ works.”
`
`6 See Office action, page 4-5.
`7 See Office action at page 4.
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`Patent
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`Atty Dkt No. 406855
`Filed Via EFS— Web
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`The cited portion of Wiser generally describes a distribution hub, where an artist can
`
`upload media to be “augmented” with agent codes and agency identification codes. Wiser
`
`teaches that agent codes identify the rights agent responsible for receiving purchase and usage
`
`information from the content manager. Similarly, an agency identification code identifies the
`
`artist and the media data created by the artist to the agency. As an example, Wiser teaches
`
`that agency codes may be the product code or SKU code used by the agency to track each
`
`artists’ works.
`
`Uploading a media file to the content manager, as taught by Wiser is not a program
`
`order comprising an order rule as suggested by the Examiner. The present application
`
`discloses, “An order is a request by a paying or collecting entity for the network owner to
`
`provide some sort of streaming or related service, such as storage.” MPEP 2111.01 requires
`
`the Examiner to interpret the claims as broadly as is reasonable and consistent with the
`
`specification. Under a broadest reasonable interpretation, words of the claim must be given
`
`their plain meaning, unless such meaning is inconsistent with the specification. Where an
`
`explicit definition is provided by the applicant for a term, that definition will control
`
`interpretation of the term as it is used in the claim. MPEP 2111.01 (citing Toro Co. v. White
`
`Consolidated Industries Inc., 199 F.3d 1295, 1301, 53 USPQ2d 1065, 1069 (Fed. Cir. 1999)).
`
`As such, an augmentation performed by the distribution hub by adding an agency code or an
`
`agency identification code to master a media file is not a request for the network owner to
`
`provide a streaming or related service.
`
`Moreover, claim 6 requires receiving a program comprising both at least one media
`
`reference identifying at least one media of the program and an order comprising an order rule
`
`associated with the at least one media of the program. Thus, the program comprises two
`
`items. There is no indication by the Examiner that Wiser teaches receiving a program that has
`
`two items - namely the at least one media reference of the program and the order rule of the
`
`program. Even the augmentation cited by the Examiner is not comprised in the program, nor
`
`does Wiser indicate how the media file is augmented.
`
`The Examiner cites column 11, lines 49-62 as disclosing “using the at least one order
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`rule associated with the at least one media of the program” and column 16, line 66 - column
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`17, line 5 as disclosing “and the at least one media reference identifying the at least one media
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`Patent
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`Atty Dkt No. 406855
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`of the program to generate a presentation for the at least one media at the reservation
`
`system.”8 Applicants respectfully disagree with the rejection.
`
`Claim 6 requires that both the order rule and the media reference be used to generate
`
`the presentation. Yet, the Examiner has divided the limitation into separate parts in which
`
`only the media reference is used to generate a presentation. Thus, the Examiner has not found
`
`that the claimed limitation has been found in the cited reference. Both the order rule and the
`
`media reference must be used to generate the presentation in order to meet this claim
`
`limitation, which the Examiner has not found. Thus, a prima facie case of anticipation has not
`
`been made. Moreover, Wiser does not use both an order rule and a media reference to
`
`generate a presentation.
`
`Column 11, lines 49-62 of Wiser recites:
`
`“Rights Reporting: The rights reporting process provides a tamper-
`proof mechanism to securely track electronic music distribution. This process
`securely uploads usage (purchases, previews and so forth) of media from the
`content manager 112 to various rights agents 108. This uploaded information
`describes the number of times various media data files have been used to
`
`allow for accurate reporting of such usage for the purpose of royalty payments
`and other fees to the artists, owners, record labels and so forth. These
`mechanisms allow music industry participants to protect their copyrights and
`could be used by rights reporting agencies to bill distributors for royalties
`associated with the volume of electronic distribution of the media data files.”
`
`The cited portion of Wiser generally relates to a process of uploading usage
`
`information to various rights agents. Wiser teaches that this raw data is “used to allow for
`
`accurate reporting of such usage ... and could be used by rights reporting agencies to bill
`
`distributors for royalties associated with the volume of electronic distribution of the media
`
`data files.”9 Thus, usage information exists after the media is used, not before, and cannot be
`
`used to generate the presentation.
`
`Column 16 line 66 - column 17, line 5 of Wiser discloses:
`
`“The merchant server 132 requests 916 a reservation for the requested
`media data file 200 from the content manager 112, passing in the media ID of
`the requested media data file 200, a requested quality level (bit rate and
`number of channels in the audio image). The reservation verifies that the
`
`8 See Office action at page 4-5.
`9 See Wiser, column 10, lines 53-61.
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`Atty Dkt No. 406855
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`requested song at the specified quality level actually exists in the master media
`files 120 and is available for purchase.”
`
`The cited portion of Wiser generally describes how the merchant server requests a
`
`reservation for a requested media file. It does not disclose anything about generating a
`
`presentation. The cited portion of Wiser does not teach, suggest, or disclose, using 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.
`
`As presented above, Wiser does not teach or suggest using an order rule associated
`
`with the media of the program to generate a presentation. Therefore, Wiser cannot teach
`
`using a combination of 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 Examiner cited column 17, lines 6-12 as teaching “determining if a system
`
`resource is available to stream the presentation at the reservation system and, if so, creating a
`
`reservation for the presentation.” However, that portion of Wiser discloses confirming if the
`
`requested song exists. It does not teach determining if a system resource is available to
`
`stream the media. Wiser does not disclose, teach, or suggest at the reservation system,
`
`determining if a system resource is available to stream the at least on media of the
`
`presentation and, if so, creating a reservation for the presentation.
`
`For at least the reasons discussed above, Applicants submit that Wiser not only fails to
`
`disclose, teach, or suggest each and every element of claim 6, but the cited references 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.
`
`The Examiner rejected claim 41 “according to the same embodiments as claim 6.”10
`
`Independent claim 41 is patentable over Wiser under 35 U.S.C. § 102(e) because the
`
`underlined portions of independent claim 41 below are not disclosed, taught, or suggested by
`
`the cited references.
`
`41.
`
`A system for reserving media for a viewer comprising:
`
`10 See Office action, page 5.
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`Patent
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`Atty Dkt No. 406855
`Filed Via EFS— Web
`
`a switch management system device 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 device 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 at least one media of 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 device 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
`
`identifying the at least one media of the program to generate a presentation for the at least
`
`one. The cited reference also fails to teach, disclose, or suggest a reservation generator to
`
`determine if a system resource is available to stream the at least one media of the presentation
`
`and, if so, to create a reservation for the presentation and to assign a reservation identification
`
`to the reservation.
`
`Claims Rejections 35 U.S.C. §103
`
`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. 2002/0078444 to
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`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-l6, 24-34, 42-51, and 59-69, the Examiner acknowledges that
`
`Wiser does not teach the limitations of these claims.11 However, the Examiner relies on
`
`Krewin to remedy this deficiency. Without admitting agreement with the Examiner’s
`
`interpretation of Krewin, Applicants point out that Krewin fails to remedy all of the
`
`deficiencies of Wiser with respect to amended claims 6 and 41, from which these claims
`
`depend.
`
`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 claims 6 and 41.
`
`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.
`
`Specifically with regard to claims 71 and 74, “information” cannot be a “service.”
`
`Thus, the rejection is traversed. Similarly, with regard to claims 72, 73, 75, and 76, it is
`
`unclear what “the cited portion” refers to, and thus the rejection is traversed. A filrther
`
`explanation is requested.
`
`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 filrther 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.
`
`11 See Office action, page 6.
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`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 Applicants’ claims 6-35 and 41-76 are
`
`patentable over the references of record. Issuance of a Notice of Allowance is solicited.
`
`Applicants submit herewith a Request for Continued Examination under 37 CFR
`
`1.114 and requests that the claim amendments set forth herein be entered. 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 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.
`
`Respectfully submitted,
`
`POLSINELLI SHUGART PC
`
`/Elton F. Dean III/
`
`Elton F. Dean 111, Reg. No. 63,316
`100 South Fourth Street, Suite 1000
`
`St. Louis, Missouri 63102
`Tel: (314) 622-6632
`Fax: (314) 231-1776
`Attorney for Applicants
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`4804075
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`
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